[00:00:27] Speaker 04:
Next case is PGS Geophysical versus Western Geico, perhaps.

[00:00:36] Speaker 04:
2017-15-82.

[00:00:40] Speaker 04:
First, we want to acknowledge the appreciation of comments from the parties.

[00:00:48] Speaker 04:
We may well and will likely perhaps ask for further comments on SAS

[00:00:56] Speaker 04:
its effect on this case.

[00:00:58] Speaker 04:
But for now, let's direct the director of arguments to the merits.

[00:01:03] Speaker 04:
Ms.

[00:01:03] Speaker 04:
Bernicker.

[00:01:03] Speaker 00:
Thank you, Your Honors.

[00:01:05] Speaker 00:
May it please the Court, Jessamyn Bernicker for Petroleum Geoservices.

[00:01:09] Speaker 00:
The PTAB erred in construing the organizing step of the patent inconsistent with the clear plain language of the entire claim term, inconsistently with the specification, and with the purpose of the invention.

[00:01:21] Speaker 00:
I'd like to turn first to the entire claim language

[00:01:24] Speaker 00:
The claim language of that particular step is organizing the coordinate designated set of traces into a set of bins with regularized number of traces.

[00:01:35] Speaker 00:
And I want to focus specifically on the language set of traces, because that word set has to mean something.

[00:01:41] Speaker 00:
And the way the PTAB construed the term, it encompasses simply ignoring the vast majority of the traces.

[00:01:47] Speaker 00:
But where the language doesn't say organizing some of the traces into bins, it doesn't say organizing

[00:01:54] Speaker 00:
A, or just generally traces into bins, it says organizing the set of traces into a set of bins.

[00:02:01] Speaker 00:
And so when the P tab construed that to mean ignoring, i.e.

[00:02:07] Speaker 00:
decimating or discarding the vast majority of the traces, it's... Why is it that part of organizing?

[00:02:13] Speaker 02:
If you're going to get together a bunch of components and you're going to organize them, doesn't it make sense that an interpretation of organizing would mean to say, well, this one really doesn't belong here.

[00:02:25] Speaker 02:
You get rid of it.

[00:02:27] Speaker 00:
So I think that if you think of the term organizing in isolation, you may be steered that way, although the plain language, the plain definition of organizing that the Patent Office cited still doesn't expressly talk about discarding.

[00:02:38] Speaker 00:
But the question here is not the word organizing by itself.

[00:02:42] Speaker 00:
The words are organizing the coordinate designated set of traces.

[00:02:45] Speaker 00:
And that set of traces was identified in the earlier step.

[00:02:49] Speaker 00:
The assigning step identifies and, quote, defines the set of traces.

[00:02:53] Speaker 00:
So the language says that you have to organize that set of traces into bins.

[00:02:58] Speaker 00:
It doesn't say throwing them away or putting them elsewhere.

[00:03:01] Speaker 00:
And this isn't a situation where just a few traces disappeared.

[00:03:04] Speaker 00:
The vast majority of the traces in Gallagher are discarded or ignored.

[00:03:09] Speaker 00:
And as the board held on A36, they said what happens in Gallagher is that the traces are already in the bins at the end of the assigning step.

[00:03:17] Speaker 00:
They said the assigning step both creates the bins in Gallagher and assigns the traces.

[00:03:23] Speaker 00:
The organizing step merely involves ignoring some of the traces.

[00:03:28] Speaker 00:
And ignoring is not organizing them into bins.

[00:03:31] Speaker 00:
To go back to the closet example that was in our brief, if there's a pile of clothes on the floor and you look at your child and you say, please organize the pile of clothes into the drawers, and you come back and 90% of the clothes are still on the floor and 10% are in drawers,

[00:03:48] Speaker 00:
You wouldn't say, oh, you're done with the job.

[00:03:50] Speaker 00:
You'd say, you still have to finish organizing the pile of clothes into the drawers.

[00:03:56] Speaker 00:
So first of all, the plain claim language requires conclusion that the patent offices and the board's construction was erroneous.

[00:04:06] Speaker 00:
But in addition, you have to look to the specification.

[00:04:08] Speaker 00:
And this is another place where the board erred, because there's no dispute that the only examples in the specification of the patent

[00:04:16] Speaker 00:
Do not discard or ignore any traces whatsoever.

[00:04:21] Speaker 00:
The Patent Office doesn't contend with that fact.

[00:04:23] Speaker 00:
Under BRI, you still have to have a construction that's consistent and not divorced from the specification.

[00:04:32] Speaker 00:
As this Court has found repeatedly in the Microsoft v. Proxycom case cited in our briefs and in the Inray Smith case cited in our briefs, the correct interpretation has to correspond with what's described

[00:04:45] Speaker 00:
in the specification and how the inventor describes their invention.

[00:04:50] Speaker 00:
And that is directly at odds with the construction that was here.

[00:04:54] Speaker 00:
In both of those cases, what this court did was you reviewed the lower court's decision and you said, what happened here is that in the specification, there was really only one way it was described.

[00:05:06] Speaker 00:
And because it was only described that way, a BRI that is vastly broader than that is incorrect.

[00:05:13] Speaker 00:
Here, with respect to the whole point of the invention, the testimony from Dr. Lin, which is undisputed.

[00:05:19] Speaker 00:
This is A, 1739 through 1745.

[00:05:23] Speaker 00:
He talks about the point of this invention was to enable a sub bin by sub bin analysis.

[00:05:30] Speaker 00:
Now, the Gallagher reference has nothing to do with analyzing anything at the sub bin level.

[00:05:36] Speaker 03:
Can I ask a technical question?

[00:05:37] Speaker 03:
I'm not certain I understood from the specification how the patent

[00:05:41] Speaker 03:
performs the organizing step, organizing the coordinate designated set of traces into the bins.

[00:05:48] Speaker 03:
How does it do it?

[00:05:48] Speaker 00:
Certainly.

[00:05:49] Speaker 00:
So to go back for a minute to the assigning step, just to give it some context, the very first thing that happens is that the traces are collected.

[00:05:57] Speaker 00:
They are then assigned coordinates, and that's where you see that spider diagram.

[00:06:01] Speaker 03:
Just let me stop you there.

[00:06:02] Speaker 03:
In that step, are any of the traces discarded?

[00:06:06] Speaker 00:
No.

[00:06:06] Speaker 03:
Are all the traces employed?

[00:06:08] Speaker 00:
all the traces are employed in the assigning step.

[00:06:10] Speaker 00:
They are all assigned coordinates.

[00:06:12] Speaker 00:
The coordinates that you've seen are, for example, in the Cartesian plot in Figure 6.

[00:06:18] Speaker 00:
It's given that line that reflects the distance and also the angle of the trace.

[00:06:22] Speaker 00:
And so they're all assigned those coordinates.

[00:06:24] Speaker 03:
And then you just put on a coordinate grid.

[00:06:26] Speaker 00:
The grid is what's happening in the organizing step.

[00:06:30] Speaker 00:
So what's happening, and part of the brilliance of Star's invention, was to recognize that when you first assign the traces

[00:06:37] Speaker 00:
with that sort of assignment system, you can then overlay a grid.

[00:06:41] Speaker 00:
And there's a decision that goes into that, which sort of grid you're using, how big the boxes are.

[00:06:47] Speaker 00:
But when you overlay that grid, that's you placing the traces, organizing the traces into bins.

[00:06:52] Speaker 03:
But you get the sub bins and have the organizing step, right?

[00:06:55] Speaker 00:
Exactly.

[00:06:57] Speaker 00:
And so Gallagher is distinct from that in the sense.

[00:06:59] Speaker 03:
And in the patent there, you're not discarding or ignoring any of the traces.

[00:07:04] Speaker 00:
None of them.

[00:07:04] Speaker 00:
And it would be countered to the purpose of the invention.

[00:07:07] Speaker 02:
Because what Starr says and what... The assigning step, you're doing this in order to define the coordinate designated set of traces.

[00:07:16] Speaker 02:
It defines.

[00:07:17] Speaker 02:
Assigning step defines the traces that are not... It defines that spider graph you were talking about.

[00:07:24] Speaker 00:
Yeah, it defines the collection of traces that you've given coordinates to that you then have to organize into the bins.

[00:07:30] Speaker 00:
And so the assigning step, and I think that word defining is very important,

[00:07:34] Speaker 00:
Because it defines the set.

[00:07:35] Speaker 00:
It said, OK, this is my universe of traces that I have organized with coordinates.

[00:07:39] Speaker 00:
And then the organizing step refers back to that.

[00:07:41] Speaker 00:
There's no question about the antecedent basis in the organizing step.

[00:07:45] Speaker 00:
It refers back to that set.

[00:07:46] Speaker 00:
And it said, now I'm going to organize those traces, that set, into bins.

[00:07:51] Speaker 00:
It doesn't ever say, well, you can just take out little pieces of it, which is what Gallagher does.

[00:07:56] Speaker 00:
And to go back to your honor's question, Judge Clevenger, what Gallagher does- What happens if the traces

[00:08:02] Speaker 02:
don't meet that definition that was created in the assigning step.

[00:08:08] Speaker 00:
Traces, as they're collected, will all have the information regarding distance and azimuth.

[00:08:13] Speaker 00:
So I don't think that really materializes it as an option.

[00:08:15] Speaker 02:
I think... Well, why the defining step?

[00:08:18] Speaker 02:
Why do you have to define the traces?

[00:08:21] Speaker 00:
I think the point of the assigning step is simply to correlate the trace with its offset and azimuth, and organ... Not touching things, I won't use the word organized.

[00:08:30] Speaker 00:
but basically place them on that spider plot, for lack of a better term, that shows you, OK, now I've selected this form of coordinate set, because you could do a Cartesian set, a polar set, or some other sort of coordinate.

[00:08:42] Speaker 00:
And so I think the purpose of the word define in that claim term is helpful, but helps you explain that now you've kind of identified a body of traces, and those are the traces.

[00:08:52] Speaker 00:
that you are going to go ahead and organize.

[00:08:55] Speaker 03:
The question for us on this point, to cut to the chase, is whether or not organizing can be satisfied by decimating or discarding.

[00:09:02] Speaker 00:
Right.

[00:09:02] Speaker 03:
Or ignoring is another way they put it.

[00:09:04] Speaker 03:
That's right.

[00:09:05] Speaker 00:
Absolutely.

[00:09:06] Speaker 03:
Absolutely.

[00:09:06] Speaker 03:
And you've got two other arguments you're raising, right?

[00:09:10] Speaker 00:
Sure.

[00:09:11] Speaker 00:
I do.

[00:09:11] Speaker 00:
If I can make one last point on this, however, which is that discarding data and ignoring data is entirely contrary to the purpose of Starr's invention.

[00:09:18] Speaker 00:
In the specification, it's clear that the goal here is to do a sub-bin by sub-bin analysis, which is very different from the prior art.

[00:09:26] Speaker 00:
Gallagher doesn't do any sort of per sub-bin analysis.

[00:09:29] Speaker 00:
So the specification repeatedly talks about this AVO analysis.

[00:09:33] Speaker 00:
And so as Dr. Lin testified at A1802 and A1733 through 34, discarding data is exactly the opposite of the point.

[00:09:43] Speaker 00:
The point, as it describes in the specification, is to increase.

[00:09:46] Speaker 03:
But you're basically arguing that thing.

[00:09:47] Speaker 03:
Inventor here is given a special meaning to organizing in the context of this patent.

[00:09:52] Speaker 03:
Organizing doesn't have the common meaning that we would get from a dictionary.

[00:09:56] Speaker 00:
I don't think you have to go as far as that in order, I don't think you have to find that we were, he was his own lexicographer, because first of all the BRI law says that as a practical matter you have to look at the spec either way.

[00:10:07] Speaker 00:
But putting that aside, it's really the full claim term that you have to look at.

[00:10:10] Speaker 00:
And so pulling out a dictionary, which, by the way, the PTAB didn't rely on that dictionary and its construction.

[00:10:16] Speaker 00:
But pulling out a dictionary for just the word organizing loses the benefit of the words the set of traces organized into bins, which are key text to the limitation.

[00:10:26] Speaker 00:
But turning to claim two, which is one of the other appeal points, the PTAB also aired in connection with

[00:10:34] Speaker 00:
Its construction of claim two, which you may remember, was something they did after a rehearing.

[00:10:38] Speaker 00:
So they originally had a construction that was consistent with PGS's position, and then they flipped over a dissent on rehearing.

[00:10:44] Speaker 00:
Now, the claim two issue, in some ways, only materializes as a result of the erroneous construction of organizing.

[00:10:51] Speaker 00:
Because under the right construction of organizing, you don't have a situation where the number of traces per subbin changes over time.

[00:10:59] Speaker 00:
If you don't permit decimating or ignoring traces,

[00:11:03] Speaker 00:
There's only ever one number of traces per subbit.

[00:11:06] Speaker 00:
But if you wrongly accept the construction of organizing that the P tab found, that presents this question, is claim two referring to the traces before the decimation or after?

[00:11:17] Speaker 03:
The majority opinion on the second time around, with the descent coming off of the original decision, the majority assigns claim two into the assigning step, correct?

[00:11:29] Speaker 03:
Correct.

[00:11:31] Speaker 03:
Is it your argument that the correct way to do it is to assign claim two to both steps?

[00:11:36] Speaker 00:
No.

[00:11:36] Speaker 03:
And that both steps have to be met?

[00:11:38] Speaker 00:
No.

[00:11:38] Speaker 00:
Our argument is that the term the coordinate designated set of traces has one antecedent basis by its plain language, and you have to pick one.

[00:11:45] Speaker 00:
And the only one you can pick is post organization.

[00:11:48] Speaker 00:
And that's because the examples in the specification tell you exactly how to interpret these claims.

[00:11:53] Speaker 00:
And they tell you they use the exact same language as claim two, and they say that's a post organization

[00:12:00] Speaker 00:
situation.

[00:12:01] Speaker 03:
And under the Thought v. Oracle case that we cited, if you... So the specification serves to override the general rule that the judge could pick whichever one of the two steps in claim one, it wanted to assign claim two to.

[00:12:16] Speaker 00:
I'm not sure that I agree that there's a general rule that kind of gives the judge that discretion.

[00:12:20] Speaker 03:
I think as a matter of... Well, there's no temporal limitations.

[00:12:23] Speaker 00:
Well, what the PTAB actually said was there's no temporal limitation apart from the fact that there's an antecedent basis in the assigning steps.

[00:12:30] Speaker 00:
It's kind of a little circular to say there's no temporal limitation, but then essentially include one.

[00:12:35] Speaker 04:
But I will counsel you well into your rebuttal time.

[00:12:38] Speaker 04:
And you did have a third issue.

[00:12:39] Speaker 04:
Do you want to address that briefly?

[00:12:42] Speaker 00:
I will not address that, but one final point on the Claim 2 issue, which is I noticed that the Patent Office takes a different position from what the PTAP did.

[00:12:49] Speaker 00:
And they take the position that the Claim 2 actually refers to either or both.

[00:12:53] Speaker 00:
of the pre-organization or post-organization, so they don't seem to be in a position to defend what the PTAB actually did here.

[00:13:00] Speaker 00:
Thank you, Your Honor.

[00:13:03] Speaker 04:
Mr. Krauss.

[00:13:10] Speaker 01:
Could it please the Court?

[00:13:12] Speaker 01:
Let me just start with the assigning step, because I think there might have been a misimpression left by opposing counsel's discussion of that.

[00:13:20] Speaker 01:
When I read the claim language here,

[00:13:23] Speaker 01:
at the, the, the number of, the traces that can end up in the various bins are, can very well be a subset of the initial fold.

[00:13:38] Speaker 01:
In other words, in some respects, that's the only way this can work out.

[00:13:41] Speaker 01:
If you look at the specification, it does not explain, as you suggested Judge Clevender, how the organization actually takes place.

[00:13:47] Speaker 01:
The only reason it turned out perfectly in that

[00:13:50] Speaker 01:
specification, I believe, is because the geometry was perfect to begin with.

[00:13:54] Speaker 01:
If you have a different geometry, the claim allows you to select a subset of the traces that would give you a regularized set of traces into the sub bins.

[00:14:02] Speaker 01:
I think that assigning is an important component.

[00:14:06] Speaker 01:
At the assigning step and the gathering step, there are two steps here where you can actually get a subset of the initial survey results.

[00:14:14] Speaker 01:
The gathering steps as gathering from the data of plurality of traces.

[00:14:17] Speaker 01:
In other words, in that

[00:14:19] Speaker 01:
You're not using all the traces.

[00:14:21] Speaker 01:
And the next step is assigning a coordinate set to a plurality of traces in the common reference point bin.

[00:14:27] Speaker 01:
So again, you're not necessarily assigning the coordinate step to all of the traces in the bin.

[00:14:32] Speaker 03:
Well, the gathering is just collecting the traces, right?

[00:14:35] Speaker 01:
Well, it says gathering from the data.

[00:14:37] Speaker 01:
The data is presumably the entire data set of traces.

[00:14:41] Speaker 01:
And gathering from that data could well be a subset.

[00:14:44] Speaker 01:
It just has a plurality.

[00:14:45] Speaker 01:
It could be just picking two traces out of the entire

[00:14:48] Speaker 01:
survey of thousands of traces.

[00:14:50] Speaker 01:
So the claim language I think refutes what opposing counsel just said about the necessary assignment step.

[00:14:57] Speaker 01:
It could well be that the specification used all the data in that very stylized example that it used, but that was just dumb luck and Gallagher could have had that as well.

[00:15:07] Speaker 01:
If Gallagher had a pre-existing perfect geometry, it could have ended up very well with one trace

[00:15:12] Speaker 03:
burped in with no need to discard or decimate.

[00:15:15] Speaker 03:
In the context of the claim language in the organizing limitation, as well as in the context of the specification, why can organizing be read to include decimating or discarding?

[00:15:28] Speaker 01:
Organizing, as the board found, is a very broad term.

[00:15:32] Speaker 03:
I understand.

[00:15:33] Speaker 03:
The way I phrased my question, in essence, put aside the common meaning.

[00:15:38] Speaker 03:
I said, in the light of the claim language,

[00:15:41] Speaker 01:
Right.

[00:15:42] Speaker 01:
And the opposing counsel said you can look at it together.

[00:15:44] Speaker 03:
For example, if the claim language said organizing, comma, but not decimating, you would know what you mean.

[00:15:50] Speaker 03:
But your adversary's argument here is that organizing the traces into a step of bins tells us something about what organizing means and what it doesn't mean.

[00:16:06] Speaker 01:
Yes, it does.

[00:16:07] Speaker 03:
And then they direct us to the specification?

[00:16:12] Speaker 01:
But again, the specification doesn't explain how you would organize any set of data except for the one that they had in front of them, in which case, using that coordinate set, it turned out that every single trace fell into a bin.

[00:16:28] Speaker 01:
And so there's no explanation of how you would do it with any kind of an irregularly formed

[00:16:32] Speaker 01:
I don't think it's possible since the coordinates.

[00:16:35] Speaker 03:
Technically, technically, technically, is it possible in the patent, given the specification, to organize literally under the step and in the process discard or overlook some traces?

[00:16:51] Speaker 03:
In the specifications?

[00:16:54] Speaker 03:
The spec doesn't tell us exactly how they organized, right?

[00:16:58] Speaker 01:
I think that's correct.

[00:16:59] Speaker 03:
And isn't it possible in science to perform the step of organizing and throw out some of the traces?

[00:17:09] Speaker 03:
To ignore them?

[00:17:10] Speaker 01:
I think that's certainly possible.

[00:17:13] Speaker 01:
I'm not sure if you're helping me.

[00:17:15] Speaker 03:
I'm trying to understand from the way in which the art works.

[00:17:18] Speaker 03:
And they go out and they shoot the traces and whatnot.

[00:17:20] Speaker 03:
And then they put them on the xy grid.

[00:17:23] Speaker 03:
And from the xy grid, they pick a few more out.

[00:17:26] Speaker 03:
And they're trying to reduce down to a subset of traces, right?

[00:17:30] Speaker 01:
That's my understanding of Gallagher, as well as my understanding of how STAR works, except in the special case where you have a perfect geometry.

[00:17:39] Speaker 01:
And there, the organizing step appears later in the claim.

[00:17:43] Speaker 01:
The assigning step and the gathering step essentially perform the function of discarding whatever traces are not going to give you the regularized set of traces in the bins.

[00:17:54] Speaker 01:
May I answer your question?

[00:17:56] Speaker 03:
So when I asked Ms.

[00:17:57] Speaker 03:
Bernicker, are all of the traces, I mean, assuming that you may have thrown a few out at the gathering step to put into a plurality.

[00:18:07] Speaker 03:
But once you get past your plurality of traces in the gathering step, she asserted to me that the invention never discards or ignores any trace.

[00:18:16] Speaker 03:
All of them are accounted for.

[00:18:18] Speaker 01:
Yeah, I understood her to say that you don't even discard any in the gathering or assigning steps, which I think is

[00:18:23] Speaker 01:
probably incorrect in most cases.

[00:18:24] Speaker 03:
No, I meant in the organizing step as well.

[00:18:26] Speaker 03:
If I wasn't clear to her, she can respond when she gets back up.

[00:18:29] Speaker 01:
Right.

[00:18:30] Speaker 01:
But perhaps if you have created a data set that's perfect, such that it can now be organized, especially if you've got a regularized set of traces per bin, then that step of organization would not involve any discarding.

[00:18:43] Speaker 01:
Same could be said of Gallagher.

[00:18:45] Speaker 01:
Gallagher started with a perfect geometry, or at the assigning step only,

[00:18:52] Speaker 01:
selected a subset that would result in a regularized set of traces, then you'd get to the same result without any discarding in the organization.

[00:18:59] Speaker 03:
So how do we count on the claim to issue?

[00:19:02] Speaker 03:
How do we account for what happened to the board?

[00:19:04] Speaker 03:
You originally had a unanimous opinion favorable to the patentee.

[00:19:09] Speaker 03:
And then we have on a reconsideration a change of view.

[00:19:15] Speaker 03:
What was wrong with the original view of the patentee?

[00:19:19] Speaker 03:
of the board.

[00:19:20] Speaker 01:
The majority of the board on further contemplation decided that they had got it wrong the first part.

[00:19:27] Speaker 01:
And I think it's pretty clear, if you just look at claim two, all it really does is add a where in step.

[00:19:38] Speaker 01:
It doesn't say anything about where that would occur.

[00:19:43] Speaker 01:
And I'm looking at claim two.

[00:19:45] Speaker 01:
I assume you've got it as well.

[00:19:47] Speaker 01:
The process hasn't claimed one.

[00:19:48] Speaker 01:
wherein a plurality of the designated set of traces have the same coordinates.

[00:19:54] Speaker 01:
And if you go back to where the coordinate set of, where the coordinate designated set of traces is created, that's before the so-called organizing step.

[00:20:04] Speaker 01:
And yes, in Gallagher, you look at those shells, they've got more than one.

[00:20:07] Speaker 03:
Gallagher clearly has a plurality at that step.

[00:20:11] Speaker 03:
They get rid of it at the organizing step.

[00:20:14] Speaker 01:
Correct.

[00:20:15] Speaker 03:
Right.

[00:20:15] Speaker 03:
So I mean, you have a process, as in claim one,

[00:20:19] Speaker 03:
And then you have a wherein.

[00:20:20] Speaker 03:
So you're going to take the wherein and if you rewrote the claims, right?

[00:20:25] Speaker 03:
If you rewrote this claim entirely, wouldn't you attach a plurality of the coordinated designated set of traces to both the assigning and the organizing step?

[00:20:37] Speaker 03:
Assume we rewrote the patents so everybody would really understand what claim two is.

[00:20:41] Speaker 03:
It's a dependent claim.

[00:20:43] Speaker 03:
It incorporates every limitation of claim one, right?

[00:20:46] Speaker 01:
That's correct.

[00:20:47] Speaker 03:
So wouldn't you stick the language, a plurality of the coordinated designated set of traces onto both the assigning and the organizing steps since both of them talk about the coordinate set of plurality?

[00:21:00] Speaker 01:
I think it would be sufficient if there was a plurality in simply the

[00:21:06] Speaker 01:
assigning step.

[00:21:08] Speaker 03:
I'm just talking about a simple minded person who's looking at a dependent claim and trying to understand what it covers.

[00:21:19] Speaker 03:
Since the words, the coordinate designated set of traces exists in both the assigning clause and in the organizing clause, correct?

[00:21:31] Speaker 01:
That's correct.

[00:21:32] Speaker 03:
So why wouldn't you attach the language from claim two, both to the assigning step and to the organizing step, as a matter of claim construction?

[00:21:45] Speaker 01:
I think it's fair and reasonable and certainly out of the broadest.

[00:21:53] Speaker 03:
Do you take the patent out into the real world and you begin to assert it against people?

[00:21:58] Speaker 01:
That's the danger.

[00:21:59] Speaker 03:
Isn't the danger that you would need to take claim two and hive all of claim one onto claim two?

[00:22:11] Speaker 01:
I don't think so.

[00:22:12] Speaker 01:
I would say a much clearer way of writing claim two would have been to say a process

[00:22:18] Speaker 03:
And there might have been a clearer way to write.

[00:22:20] Speaker 03:
I mean, we're stuck with what we got here.

[00:22:22] Speaker 01:
I'm just saying the fact that they didn't choose the clearest possible way when they could have suggests that they may have been looking for broader coverage and that the claim may, in fact, cover more.

[00:22:32] Speaker 01:
They could have simply said, after all the steps of claim one are completed, there remain a plurality of traces in the bin.

[00:22:44] Speaker 01:
And of course, we also have our back-up argument.

[00:22:45] Speaker 03:
What struck me as odd is that what's happening is here that this board is split.

[00:22:49] Speaker 03:
They have one board the first time around decided to assign claim two to the organizing step, in which case there was no anticipation.

[00:23:00] Speaker 03:
And then they have a change of mind.

[00:23:01] Speaker 03:
And two people say, no, I'll assign it to the assigning step, in which case it's the other way around.

[00:23:08] Speaker 03:
And so I'm saying to myself, is this arbitrary or capricious?

[00:23:10] Speaker 03:
What's happening?

[00:23:11] Speaker 03:
Who's getting the right to decide which

[00:23:14] Speaker 03:
of the two limitations assigning or organizing claim two gets assigned to.

[00:23:20] Speaker 03:
What rule of claim construction or what rule said that you've got to choose which one of assigning or organizing you would assign claim two to.

[00:23:34] Speaker 01:
I guess I'm not aware of any rule of claim construction which completely deprives you of that choice.

[00:23:39] Speaker 01:
I think if there's no temporal limitation on a claim and where you've got a wherein clause referring to an element that occurs at one point in the claim, if that element, if that wherein clause can be- The reason I'm asking is in order to anticipate you have to meet every limitation of a claim, every single one of them, right?

[00:23:57] Speaker 01:
Understand.

[00:23:58] Speaker 03:
And so to anticipate claim two,

[00:24:01] Speaker 03:
You have to meet both the signing and organizing step.

[00:24:09] Speaker 03:
To anticipate claim two, you have to anticipate in signing and organizing.

[00:24:14] Speaker 01:
That's correct.

[00:24:14] Speaker 03:
Because otherwise, you don't anticipate.

[00:24:17] Speaker 03:
Correct.

[00:24:17] Speaker 03:
And in this case, it's clear that Gallagher does not anticipate claim organizing the second step.

[00:24:26] Speaker 03:
I'm sorry, I'm just, maybe I haven't, maybe 24 years as a patent judge hadn't been enough to teach me special rules in patent, but I'm just asking you as a history major, just reading this claim.

[00:24:38] Speaker 03:
It can't be infringed unless both those steps are met, right?

[00:24:42] Speaker 01:
I guess, as somebody who's studied English fairly closely, I'm not sure why that is, especially under the broadest reasonable interpretation and the fact that there's no temporal limitation in here.

[00:24:54] Speaker 01:
It's a wherein clause.

[00:24:55] Speaker 01:
which refers to the coordinate designated set.

[00:24:59] Speaker 01:
Which has occurred twice in claim one.

[00:25:02] Speaker 01:
Right.

[00:25:03] Speaker 01:
And the first time, there's no question that.

[00:25:05] Speaker 03:
The first time, there's no question there's that designation.

[00:25:08] Speaker 01:
The second one, there's no question there's not.

[00:25:10] Speaker 01:
Well, we may agree to disagree on that.

[00:25:12] Speaker 01:
But then we also have the backup argument.

[00:25:13] Speaker 01:
Gallagher.

[00:25:14] Speaker 04:
Why don't you move on to your further argument?

[00:25:17] Speaker 01:
Excuse me?

[00:25:18] Speaker 04:
Move on to your further argument.

[00:25:20] Speaker 01:
I mean, I would just say, and the board didn't hold this, but the petitioner made a good argument.

[00:25:24] Speaker 01:
We made it as well in our brief.

[00:25:25] Speaker 01:
that Gallagher itself does not exclude the possibility of two traces appearing in a bin after the organization step.

[00:25:34] Speaker 01:
Gallagher merely says that one trace is preferable.

[00:25:38] Speaker 01:
And that's discussed in our brief.

[00:25:41] Speaker 01:
And opposing counsel didn't say anything about the Fraser combination, but I think it's very clear that a common reference point encompasses both a common midpoint and a common reflection point, and if you have a

[00:25:54] Speaker 01:
uneven surface with a dipping problem, it doesn't make sense to use the common midpoint, so it would make perfect sense for somebody to modify the Gallagher reference to account for the physical reality of the dipping reflector.

[00:26:07] Speaker 04:
You've now given her something to rebut.

[00:26:10] Speaker 01:
I welcome that.

[00:26:12] Speaker 03:
Thank you.

[00:26:16] Speaker 03:
misdirected your argument by pushing you on the other issue.

[00:26:19] Speaker 01:
If you have any more questions, I still have a minute and 51 seconds left.

[00:26:24] Speaker 01:
Thank you, Your Honor.

[00:26:25] Speaker 04:
Ms.

[00:26:25] Speaker 04:
Bernica has some little time.

[00:26:28] Speaker 04:
Three minutes.

[00:26:29] Speaker 00:
Thank you, Your Honors.

[00:26:30] Speaker 00:
It is true that at the gathering step, you certainly don't have to gather all the traces, and you don't have to, in the first instance, assign coordinates to all the traces, although the evidence that's undisputed is that it's really expensive to collect this information, and you don't just throw it out for kicks.

[00:26:45] Speaker 00:
That said,

[00:26:46] Speaker 00:
what you ultimately assign coordinates to, which is the output of the assigning step, that data needs to all be organized into bins.

[00:26:57] Speaker 00:
And that's where the argument breaks down for the patent office, because what happens in Gallagher is the full body of traces are assigned coordinates.

[00:27:05] Speaker 00:
And in fact, they're already in bins even before the organizing step.

[00:27:09] Speaker 00:
And so the only thing that's left is ignoring large amounts of data.

[00:27:15] Speaker 00:
One thing, and I should add, that whether or not you can ignore some of the data in the first step, the gathering step, or even at the beginning of the assigning step, doesn't help them in any way because they still have to do something to satisfy the organizing step.

[00:27:28] Speaker 00:
So if ignoring is happening at the front end, ignoring doesn't qualify as organizing.

[00:27:34] Speaker 00:
It is not, however, a matter of dumb luck that STAR had these perfectly organized bins.

[00:27:40] Speaker 00:
That's the key to the invention.

[00:27:42] Speaker 00:
The key of his invention was that he recognized that if you were able to assign coordinates in this fashion to data that previously had been wildly irregular, if you created these spider diagrams and overlaid them into these organized bins, you wouldn't have to change the survey geometry or discard data.

[00:28:02] Speaker 00:
And so the idea that it's just an accident that what happens in figure six evenly falls in the bins and nothing's discarded is frankly inconsistent with the invention.

[00:28:10] Speaker 00:
It is the invention to recognize that you can do it this way and then perform sub-bin by sub-bin analysis.

[00:28:18] Speaker 00:
I should add regarding organizing that on page 20 of their brief, the PTO tries to cite case law suggesting that discarding can be an additional step.

[00:28:27] Speaker 00:
But something has to satisfy the organizing step.

[00:28:31] Speaker 00:
Now, I would urge you to recognize that the Patent Office hasn't pointed to anything

[00:28:36] Speaker 00:
showing that in the STAR patent, any traces are discarded, ever.

[00:28:41] Speaker 00:
So I understand their argument.

[00:28:43] Speaker 00:
They think it's conceptually possible.

[00:28:45] Speaker 00:
But the specification doesn't support the conclusion that STAR is teaching you to discard data.

[00:28:50] Speaker 00:
The conclusion is you put them all into the bins.

[00:28:53] Speaker 00:
With respect to Claim 2, I'm going to reiterate that the patent office's position is not to defend what the board did.

[00:28:59] Speaker 00:
The patent office's position is now that Claim 2 optionally refers to either the assigning step or the post-organization.

[00:29:06] Speaker 00:
That's not a principle of claim construction, as you noted.

[00:29:10] Speaker 00:
It has to either, as Judge Clevenger mentioned, refer to necessarily both of them, or you have to pick one.

[00:29:17] Speaker 00:
And obviously, the PTAB first came out with the organizing step, which is the only one that's consistent with the specification, because column 366 to 47 tracks this language identically and tells you the relationship between claims 2, 3, and 4, all being post-organization.

[00:29:35] Speaker 00:
refer you to our briefs in responding to the other arguments that were raised in the opposition.

[00:29:41] Speaker 00:
Thank you, Your Honors.

[00:29:42] Speaker 04:
Thank you, counsel.

[00:29:43] Speaker 04:
In this court, organizing includes terminating the argument.

[00:29:49] Speaker 04:
We'll take this one under submission.