[00:00:00] Speaker 01:
Okay, the next case before the court is Shroller Blackman versus Churchill Drilling on appeal from the Southern District of Texas.

[00:00:11] Speaker 01:
Case number 172137.

[00:00:39] Speaker 01:
Mr. Cabello, you want five minutes for rebuttal?

[00:00:42] Speaker 02:
Yes, Your Honor.

[00:00:43] Speaker 02:
Okay.

[00:00:44] Speaker 02:
Your Honor, we do have some demonstratives before we get started.

[00:00:48] Speaker 02:
We have some hard copies for the court.

[00:00:50] Speaker 02:
If we may, we'd like to pass those to you.

[00:00:53] Speaker 02:
Up to you.

[00:00:54] Speaker 02:
Are you okay with that?

[00:00:57] Speaker 01:
Okay.

[00:01:22] Speaker 02:
Okay.

[00:01:26] Speaker 02:
Good morning, Your Honor.

[00:01:28] Speaker 02:
May it please the Court.

[00:01:29] Speaker 02:
Churchill submits that the District Court abused its discretion and made several reversible errors, both in clearly erroneous assessment of critical evidence and reaching erroneous legal conclusions.

[00:01:41] Speaker 02:
Both either together or separately require reversal by this Court.

[00:01:46] Speaker 02:
Octane Fitness required the District Court to consider the totality of circumstances

[00:01:51] Speaker 02:
in determining whether the case was exceptional.

[00:01:54] Speaker 02:
The trial court examined issues in isolation rather than using the totality test.

[00:02:00] Speaker 01:
You point to a lot of things that you think that the trial court didn't consider.

[00:02:05] Speaker 01:
But the trial court says that the only thing you focused on was your complaints about Dr. Hofstadter's testimony.

[00:02:13] Speaker 01:
And interestingly, when you go to the appendix, that's the only portion of your motion that you include in the appendix.

[00:02:21] Speaker 01:
Should we assume that the trial court is correct that other than that focus, there was no development of these issues below?

[00:02:32] Speaker 02:
No, Your Honor.

[00:02:33] Speaker 02:
The issues were quite well developed.

[00:02:35] Speaker 02:
First of all, with respect to Mr. Lee's testimony, he's the inventor of the 397 patent.

[00:02:41] Speaker 02:
He testified at a deposition.

[00:02:45] Speaker 02:
He directly read the asserted claim 13 directly onto his own prior art.

[00:02:49] Speaker 02:
That's the Lee prior art with the 255 pack.

[00:02:52] Speaker 02:
That was fully developed.

[00:02:53] Speaker 02:
It was briefed to the court.

[00:02:55] Speaker 02:
And we believe that that was a point in time when Schroeder-Blackman should have dismissed its case.

[00:03:02] Speaker 02:
There's correspondence in the record that shows that at each inflection point in this case, when it became apparent that Schroeder's case had turned south, we were asking them to dismiss the case.

[00:03:15] Speaker 01:
Right, but I'm still trying to get to the question of what did you really develop for the trial court below in terms of the issues on which you wanted the trial court to focus.

[00:03:25] Speaker 01:
And the trial court said that you didn't really develop anything below.

[00:03:29] Speaker 01:
And then you've got a motion for fees filed under seal, and you don't submit the entirety of the motion in your record.

[00:03:37] Speaker 01:
So how am I supposed to figure out what you argued to the district court and didn't argue to the district court?

[00:03:43] Speaker 02:
The fee motion is that Appendix 2343 through 2391.

[00:03:47] Speaker 01:
But not in its entirety.

[00:04:02] Speaker 02:
There's substantial part of that fee motion

[00:04:08] Speaker 02:
I believe that it is, certainly parts of it are redacted, but a good part of it is there.

[00:04:14] Speaker 02:
What is redacted are the fees that each party charged their respective clients.

[00:04:21] Speaker 02:
But by and large, the fee motion is in the record.

[00:04:30] Speaker 00:
So you started by saying something about how, this is Judge Atlas.

[00:04:35] Speaker 02:
Yes, Your Honor.

[00:04:36] Speaker 00:
Judge Atlas, you said.

[00:04:38] Speaker 00:
looked at each of the items in isolation, items being grievances that you've raised, but not the totality of the circumstances.

[00:04:49] Speaker 00:
I'm not quite sure what you think the difference is.

[00:04:53] Speaker 00:
I thought she went through each of them and said, this really wasn't exceptional, this wasn't exceptional, this wasn't exceptional.

[00:05:01] Speaker 00:
What is it that she didn't do to say that a whole lot of

[00:05:07] Speaker 00:
non-exceptional things could together add up to something exceptional?

[00:05:11] Speaker 02:
I think giving the lower court's opinion a fair reading, she came to the conclusion twice that this case was not exceptional and that Schiller-Blackman could continue to press its case because of the presumption of validity and because the lead prior art was cited on the face of the patent.

[00:05:32] Speaker 00:
Suppose I do not read.

[00:05:34] Speaker 00:
the opinion to place that kind of reliance on the presumption coming out, but rather on the assessment of each of the things that you recited, namely whether the claim construction position and the relevant passage on whatever the column is in the patent and the specification about the key term, while they ended up being wrong about it, it really wasn't an unreasonable construction.

[00:06:03] Speaker 00:
something somewhat similar about exactly what Mr. or Dr. Lee testified?

[00:06:12] Speaker 02:
Well, I think we have to look at the record and look at the facts.

[00:06:16] Speaker 02:
And to that end, Your Honor, I would say that her assessment of the evidence was then clearly erroneous.

[00:06:23] Speaker 02:
I mean, Mr. Lee's testimony was unequivocal.

[00:06:26] Speaker 02:
We went element by element of the asserted claim 13 and read it right onto the Lee

[00:06:32] Speaker 02:
There's no ambiguity.

[00:06:33] Speaker 02:
There's no dispute about that.

[00:06:35] Speaker 02:
Now he got wrapped around later about whether a deformable ball was a deformable activator.

[00:06:40] Speaker 02:
He said no.

[00:06:42] Speaker 02:
And Judge Atlas then seized on that and said, well gee whiz, a deformable activator can't be a ball.

[00:06:49] Speaker 02:
That was not the center of the dispute, Your Honor.

[00:06:51] Speaker 02:
The center of the dispute was whether the ball dart caught in the 397 patent read directly onto the prior arc.

[00:06:59] Speaker 02:
And if I may, Your Honor, turn to the first

[00:07:02] Speaker 02:
demonstrated, which is the ball dart passage, we'll see right here that the 397 pattern says the ball dart combination is, in essence, a ball and a dart.

[00:07:15] Speaker 02:
We took the prior art, the 255 pattern, and we said, well, that's a ball and a dart.

[00:07:20] Speaker 02:
And then if you look at the teachings of the 255 pattern, that is the least prior art,

[00:07:29] Speaker 02:
That teaching says the assembly comprises a large deformable ball.

[00:07:34] Speaker 02:
That's the blue.

[00:07:36] Speaker 02:
A weight attached to the ball.

[00:07:38] Speaker 02:
The weight is operative to assist the movement of the assembly.

[00:07:42] Speaker 02:
And in essence, we have the teachings in 397 pattern read directly onto the 255 pattern.

[00:07:49] Speaker 00:
Because your position... And then when you look at... I think once I start talking, you need to... Yes, Your Honor.

[00:07:54] Speaker 00:
My apologies.

[00:07:56] Speaker 00:
Does your position on the claim construction come down to the proposition that it is not just wrong, but unreasonable to read the phrase ball-like portion, not to, in fact, encompass a ball?

[00:08:12] Speaker 02:
Your Honor, I believe that that was settled once before, before this court.

[00:08:17] Speaker 00:
Well, what we settled there was whether that was correct or not.

[00:08:22] Speaker 00:
Yes, Your Honor.

[00:08:24] Speaker 00:
We didn't get to settle, because it wasn't before us, whether the contention was actually objectively unreasonable that ball-like would not include a ball sitting on top of a dart, as opposed to something with a portion of a surface that is somewhat spherical.

[00:08:45] Speaker 02:
Your Honor, I believe that that reading would be objectively unreasonable.

[00:08:49] Speaker 02:
I mean, if you have a description of a ball-like that clearly is

[00:08:53] Speaker 02:
a genus or a genus of the species, the ball.

[00:08:57] Speaker 02:
And in fact, when you look at the claims of the 397 pattern, claim 13 claims a deformable activator, and claim 17 then goes on to define that deformable activator as a ball dart combination.

[00:09:10] Speaker 02:
And so if claim 13 is broader than claim 17, it must, by definition, encompass that ball dart in the description of the genus, ball-like.

[00:09:25] Speaker 01:
With respect to... I mean, Judge Torano's correct.

[00:09:28] Speaker 01:
Your arguments, and even now looking back at what you included, I think it was correct that you virtually said nothing about any validity position other than objecting to this claim construction or saying that your claim construction is so reasonable that theirs is necessarily objectively unreasonable.

[00:09:45] Speaker 01:
But that's the whole focus of your motion.

[00:09:48] Speaker 02:
Your Honor, I would disagree.

[00:09:50] Speaker 02:
There were a lot more items covered in our briefing and certainly in our motion for fees.

[00:09:55] Speaker 01:
One was the continued... In a paragraph or two, but not anything meaningful.

[00:09:59] Speaker 01:
Your whole attack is on Dr. Hofstadter.

[00:10:02] Speaker 02:
Your Honor, again, I would respectfully disagree.

[00:10:04] Speaker 02:
Yes, we did attack Dr. Hofstadter's and the lower court's findings with respect to Dr. Hofstadter.

[00:10:12] Speaker 02:
Dr. Hofstadter took some very circular, very tenuous positions with respect to a deformable activator.

[00:10:19] Speaker 02:
There was a lot of circular reasoning.

[00:10:21] Speaker 02:
He put forward a sworn expert report where he said, I looked at the file history and I looked at the prior art.

[00:10:31] Speaker 02:
When I took his deposition, he said he hadn't looked at the file history and he had not looked at the prior art.

[00:10:37] Speaker 02:
And yet the court went out of its way to give Dr. Hofstadter the benefit of a doubt.

[00:10:42] Speaker 02:
I asked him very specifically, do you have any doubt in your mind that you failed to look at the prior art?

[00:10:47] Speaker 02:
He says, no doubt in my mind.

[00:10:49] Speaker 02:
So there was no basis at all for the court to give Dr. Hofstadter the benefit of a doubt when he had testified clearly.

[00:10:57] Speaker 01:
But what you're worrying about is what the claim construction is, right?

[00:11:01] Speaker 01:
Not whether or not the prior art reads on this particular figure.

[00:11:07] Speaker 02:
Yes, Your Honor.

[00:11:07] Speaker 02:
And if I may, I will turn to the claim construction.

[00:11:09] Speaker 02:
But part of the argument here is that this case should be exceptional because the inventor read the assertive claim directly on the prior art.

[00:11:19] Speaker 02:
And Schroeder-Blackman, we wrote to him and said, please dismiss your case.

[00:11:23] Speaker 02:
And yet they decided to press on with their case.

[00:11:26] Speaker 02:
We don't believe that the trial court understood the significance of Mr. Lee's testimony with respect.

[00:11:33] Speaker 01:
Let me ask you, you said that every step of the way you gave them a chance to back out.

[00:11:37] Speaker 01:
But one of the things I was shocked at was the letter that you sent saying, you can settle this if you pay our fees for the IPR.

[00:11:47] Speaker 01:
those are not reversible fees.

[00:11:49] Speaker 01:
So why should they be required to pay the fees for something that you chose to institute?

[00:11:55] Speaker 02:
Your Honor, we have taken the position.

[00:11:57] Speaker 02:
Well, first of all, Your Honor, letters such as that are always an invitation to negotiate.

[00:12:02] Speaker 02:
We receive no response.

[00:12:03] Speaker 02:
But secondly, Your Honor, we believe that we took the case to the PTAB because it was a more convenient, more efficient way to resolve a dispute.

[00:12:13] Speaker 01:
Right, an easier way to get something invalidated because their standards are fundamentally different.

[00:12:17] Speaker 02:
Your Honor, I agree that the standards are different, but it was much more expeditious and certainly a lot more economical.

[00:12:25] Speaker 02:
My client spent $500,000 at the trial court level, and we just barely got through claim construction.

[00:12:31] Speaker 02:
We spent $300,000 at the PTAP and got the patent invalidated.

[00:12:35] Speaker 01:
But a lot of the money you spent at the trial court level was in connection with the fee motion, right?

[00:12:39] Speaker 02:
No, Your Honor.

[00:12:41] Speaker 02:
Those numbers were totaled before the fee motion.

[00:12:44] Speaker 02:
Those were leading up to the fee motion and did not include the fee motion.

[00:12:48] Speaker 00:
Did a lot of that involve your somewhat, if I think I'm remembering right, extensive claim construction submission, which eventually withdrew nearly the entire deal?

[00:13:02] Speaker 02:
Your Honor, we did have an extensive claim construction proceeding, but it was because Schoeller kept changing.

[00:13:09] Speaker 02:
its proposed claim construction.

[00:13:11] Speaker 02:
And if I may, I'd like to turn to that reason.

[00:13:12] Speaker 01:
You didn't argue that that was objectively unreasonable and that that was a basis for finding an exceptional case?

[00:13:21] Speaker 02:
Your Honor, the position that we took is that the proffered claim construction was subjectively unreasonable in light of the specification because it didn't give the specification its full breadth.

[00:13:33] Speaker 02:
It attempted to limit the claim and the claim construction

[00:13:39] Speaker 02:
solely to figures 8, 9, 9A, and 9B.

[00:13:44] Speaker 02:
That is, a very specific form of a deformable activator rather than what was taught in the Baldar passage, which we just showed the court.

[00:13:54] Speaker 02:
And that is, you have to give the specifications full breadth.

[00:13:58] Speaker 02:
And you're attempting to read into the claim construction limitations that it's unfair to read into it.

[00:14:06] Speaker 02:
This court has been very clear that you cannot take limitations

[00:14:09] Speaker 02:
in the specification and read them into the claim, turn to the claim construction.

[00:14:14] Speaker 02:
Okay.

[00:14:15] Speaker 01:
You're down to two minutes.

[00:14:16] Speaker 01:
Do you want to save any of it?

[00:14:17] Speaker 02:
Just very briefly, Your Honor.

[00:14:18] Speaker 02:
Okay.

[00:14:20] Speaker 02:
First of all, Your Honor, with respect to the construction, this term unitary device came out of nowhere.

[00:14:28] Speaker 02:
We don't know where exactly it came from.

[00:14:30] Speaker 02:
It's certainly not in the specification.

[00:14:32] Speaker 02:
Never is unitary device mentioned in the specification.

[00:14:35] Speaker 02:
And yet we continue to see it.

[00:14:36] Speaker 02:
We continue to see

[00:14:38] Speaker 02:
changes to the proposed construction.

[00:14:40] Speaker 02:
We believe that those are unreasonable.

[00:14:42] Speaker 02:
We cited those in our reply brief.

[00:14:44] Speaker 02:
We've asked numerous times what a unitary device is.

[00:14:48] Speaker 02:
Unitary device reads right on the 255 back.

[00:14:50] Speaker 02:
That is a unitary device.

[00:14:52] Speaker 02:
It's one device.

[00:14:53] Speaker 02:
And yet, we still kept talking in circles.

[00:14:56] Speaker 02:
So I'm optimistic that Mr. Nolan, at some point, will clarify this issue.

[00:15:00] Speaker 02:
Perhaps he'll enlighten this court.

[00:15:02] Speaker 00:
Can I ask you this question?

[00:15:04] Speaker 00:
Are you aware of any

[00:15:08] Speaker 00:
case law involving patents and their use of the word unitary?

[00:15:13] Speaker 02:
No, Your Honor, I'm not.

[00:15:15] Speaker 02:
I'll reserve the remainder of my time.

[00:15:17] Speaker 01:
I'll give you a minute and a half.

[00:15:18] Speaker 01:
Thank you, Your Honor.

[00:15:22] Speaker 03:
Good morning, Your Honors.

[00:15:23] Speaker 03:
If it please the Court, the District Court did an in-depth review of the evidence.

[00:15:30] Speaker 03:
What we are hearing here is a request for this Court to undertake a de novo review.

[00:15:34] Speaker 03:
The District Court looked at

[00:15:36] Speaker 03:
all of the arguments that Churchill presented below.

[00:15:40] Speaker 03:
In her opinion, Judge Atlas explained that not only did she look at it separately, but she specifically says these matters separately or collectively established that this was not an exceptional case, warranting fees.

[00:15:55] Speaker 03:
And that's at appendix seven through eight.

[00:15:58] Speaker 03:
In addition, when you read the case, when you read the opinion, Judge Atlas makes clear

[00:16:04] Speaker 03:
that not only did she consider all the evidence that was presented in the motion for fees, but she went back and she read all of the claim construction papers to support these positions and concluded the positions that were taken by Shola Blackman.

[00:16:22] Speaker 03:
were not unreasonable.

[00:16:24] Speaker 00:
OK, so just focus on that one in particular.

[00:16:27] Speaker 00:
Not that chart, but the, what is it, the ball dark passage?

[00:16:31] Speaker 00:
Is that the language people are using here?

[00:16:33] Speaker 00:
Why is your position at least objectively reasonable, even though I guess we rejected it a couple of years ago?

[00:16:44] Speaker 03:
Well, what I think this court had said when it came to the PTAB, which was under a different standard, but it said it appears that

[00:16:52] Speaker 03:
the ball may be a species of ball-like.

[00:16:55] Speaker 03:
Why our position was not unreasonable from a claim construction perspective is first.

[00:17:00] Speaker 03:
Their expert, which you will see very few discussions of this in any of their papers, their expert, Dr. Bedley, acknowledged that the formable activator doesn't have a customary meaning.

[00:17:10] Speaker 03:
He had never heard of it before he got into this case.

[00:17:12] Speaker 03:
It was in none of its background information.

[00:17:15] Speaker 03:
So under Indicon, the Facebook A24 F3

[00:17:20] Speaker 03:
1352, 1357, this court says you should not construe a claim that doesn't have a customary meaning any broader than the specification.

[00:17:30] Speaker 03:
The specification is clear throughout that it talks about a deformable activator.

[00:17:36] Speaker 03:
It points to the deformable activator of figures eight, nine, nine A and nine B. It talks about ball-like portion.

[00:17:45] Speaker 03:
And when it talks about ball-like portion, it points to item 51.

[00:17:50] Speaker 03:
which is a ring.

[00:17:52] Speaker 03:
You read the specification as a whole.

[00:17:55] Speaker 03:
This is one selection out of the specification.

[00:17:58] Speaker 03:
It uses the term ball-like.

[00:18:00] Speaker 03:
We believe it was reasonable and certainly reasonable for the court to conclude that it was not an unreasonable position to take that ball-like is different than ball.

[00:18:09] Speaker 03:
Later on, it uses quotes around ball, suggesting a departure from its ordinary meaning.

[00:18:15] Speaker 03:
It is discussing the deformable activator as a whole.

[00:18:19] Speaker 03:
And the specification, when you look at it, it is not a ball attached to a weight.

[00:18:25] Speaker 03:
And the council has pointed to apparent admissions by Mr. Lee.

[00:18:30] Speaker 00:
But again, as the district... Can I just ask, I mean, it seems to me everything that you've said has a certain force to it if one is thinking about the term ball-like.

[00:18:42] Speaker 00:
Explain how that has force if you focus on the name given to this thing.

[00:18:47] Speaker 00:
Um, we're not the name, but a ball dart combination.

[00:18:50] Speaker 00:
So forget about ball like for a minute.

[00:18:54] Speaker 00:
Ball dart combination in your view can reasonably be understood to exclude a ball sitting on top of a dart.

[00:19:03] Speaker 03:
Well, I think when what, remember the claim says deformable activator.

[00:19:09] Speaker 03:
That's the, that's the term that we're using.

[00:19:11] Speaker 03:
The claim doesn't, didn't, wasn't talking about, that's what we were attempting to construe.

[00:19:16] Speaker 03:
And so when we looked at the entirety of the specification, we thought the import of those other parts of the ball-like passage that we've been talking about suggested that this is just a consistency in teaching with what was talked about as a deformable activator.

[00:19:35] Speaker 03:
And you can see when it talks about the ball-like and it's describing the deformable activator, it is not a ball.

[00:19:40] Speaker 03:
It is a ring.

[00:19:41] Speaker 03:
It is something different.

[00:19:44] Speaker 03:
Another point the council made is, well, I asked the inventor whether the 255 patent taught each limitation of the claim.

[00:19:57] Speaker 03:
And he pointed to some testimony, but there's also other testimony at appendix 3207, transcript 298 to 300, that the inventor explains

[00:20:09] Speaker 03:
that the ball weight combination of the 255 is different than a deformable activator.

[00:20:15] Speaker 03:
And in fact, it had problems because it breaks apart or has problems.

[00:20:21] Speaker 03:
And if you look at appendix 2520, you'll see that actual issue.

[00:20:26] Speaker 03:
The important thing is Judge Atlas said, I have read the entirety of the inventor's testimony.

[00:20:32] Speaker 03:
And I've looked at this.

[00:20:34] Speaker 03:
And Churchill attempts to take it in isolation

[00:20:38] Speaker 03:
But when you read it as a whole, it doesn't support the conclusion that this case is exceptional.

[00:20:46] Speaker 03:
In every instance, Treacher wants to focus on a few statements by an inventor.

[00:20:51] Speaker 03:
Treacher wants to focus on one part of the specification.

[00:20:56] Speaker 03:
But read as a whole, the court found that what Scholar Bleckman did was reasonable.

[00:21:02] Speaker 03:
And more importantly, there's nothing in the record that shows that the court abused its discretion.

[00:21:09] Speaker 03:
District court is in the best position holistically to look at these issues.

[00:21:14] Speaker 03:
They have the entire record before them.

[00:21:20] Speaker 00:
Everybody who is defending a judgment of a tribunal to which deference is owed can recite generalities about process.

[00:21:31] Speaker 00:
And it's true that if a tribunal just didn't look at anything,

[00:21:35] Speaker 00:
That would be a problem.

[00:21:37] Speaker 00:
But the potential problems don't end there.

[00:21:41] Speaker 00:
You also have to look, as a review in court, on what was done with each of the things that was looked at and make sure that each one of those things falls into a range of reasonableness or discretion.

[00:21:55] Speaker 00:
So the fact that everything was looked at, maybe you're 50% of the way there, but there's a remaining 50%

[00:22:02] Speaker 00:
Why is the claim construction reasonable?

[00:22:04] Speaker 00:
Why is the testimony by Mr. Lee not?

[00:22:10] Speaker 00:
Why is that explainable in a way that favors you?

[00:22:17] Speaker 00:
It's those specifics that are part of what matters here.

[00:22:23] Speaker 03:
Absolutely, Your Honor.

[00:22:24] Speaker 03:
And to those specifics, like I said, we've pointed to Lee's other testimony where he said the 255 is different.

[00:22:31] Speaker 03:
and then a deformable activator.

[00:22:34] Speaker 03:
How is it different?

[00:22:34] Speaker 03:
Because the deformable activator in the 397 has a ring attached to it, so it stays.

[00:22:41] Speaker 03:
One of the issues that became why Unitary became in is because their expert Mr. Medley suggested, well, this could break apart, even the deformable activator of the 397 can even break apart because it used the term the ring can shear through, even though he admitted

[00:22:59] Speaker 03:
That's problematic if it breaks apart.

[00:23:01] Speaker 03:
The deformable activator, like we said, when the term doesn't have a customary meaning, you look at the spec, if you read the spec, the only thing that's ever discussed is the deformable activator is the ring attached to this configuration.

[00:23:15] Speaker 03:
It is a different configuration than what was in the 255 pattern.

[00:23:18] Speaker 00:
Well, the only specific embodiment's shown, but that passage on whatever that's known as starts with deformable activator, preferably.

[00:23:29] Speaker 00:
And the first thing it says is a ball-dart combination.

[00:23:34] Speaker 00:
And then it goes on to say, in which a ball-like thing.

[00:23:38] Speaker 00:
Yes, but your position, I gather, comes down to the proposition that in part because of the ball-like and in part because of the embodiments, that it is reasonable, even if ultimately incorrect, to say that the ball-dart combination language doesn't really include

[00:23:59] Speaker 00:
a ball sitting on top of a dart.

[00:24:01] Speaker 03:
Yes.

[00:24:01] Speaker 03:
And in addition, not only does it include this, but part of the intrinsic record here is the 255 patent itself.

[00:24:10] Speaker 03:
The examiner identified the 255 patent during the first office action.

[00:24:15] Speaker 03:
Claim 15 was pending.

[00:24:16] Speaker 03:
It became claim 13.

[00:24:18] Speaker 03:
The examiner allowed it over the 255, allowed it over this figure that showed a ball attached to a weight.

[00:24:26] Speaker 03:
what art the examiner considers is also part of the intrinsic record.

[00:24:30] Speaker 03:
So when you read the intrinsic record, which includes the specification, includes the descriptions, includes the use of the term ball-like here and then showing that the ball-like is a ring, uses quotes around ball, then you add to that that the examiner had that reference in front of

[00:24:47] Speaker 03:
when it was reviewing it.

[00:24:49] Speaker 01:
That's not necessarily the end of the inquiry, right?

[00:24:52] Speaker 01:
We've often seen references that the examiner had in front of them and we say they don't support the ultimate claim construction or validity determination.

[00:25:02] Speaker 03:
Absolutely.

[00:25:02] Speaker 03:
It may not be the end of the inquiry, but what it comes down to is it shows that the district court had evidence in support to come to the conclusion that it came to.

[00:25:12] Speaker 03:
that our position on claim construction was reasonable.

[00:25:15] Speaker 00:
Was the 255 specifically a subject of discussion by the examiner or just we know from the listings of references that it was in front of?

[00:25:23] Speaker 03:
The claim 15, which issued his claim 13, was the first office action allowance.

[00:25:28] Speaker 03:
So there was no discussion of any prior on with respect to that.

[00:25:32] Speaker 03:
And that goes to one of the other points where counsel suggested that he had asked

[00:25:39] Speaker 03:
in Dr. Hofstadter's position, he said, I've considered the file history.

[00:25:43] Speaker 03:
And he could consider the file history because he was aware that it was a first-office action allowance, that there was no discussion about claim 13 or 15 during the prosecution, and the fact that the 255 was on the face of the patent.

[00:25:55] Speaker 03:
So as the district court made a factual finding, his testimony was absolutely consistent.

[00:26:00] Speaker 03:
She disagreed with the interpretation that Churchill concluded that Dr. Hofstadter somehow was

[00:26:08] Speaker 03:
telling untruths to the district court or untruths in any of its testimony.

[00:26:12] Speaker 03:
And again, the question is, she had that evidence before her.

[00:26:17] Speaker 03:
Was it abuse of her discretion to find out, find everything that Churchill, excuse me, that Shola Blackman had done either separately or collectively was reasonable.

[00:26:29] Speaker 00:
And again, I can't just- Can I ask you about one other thing?

[00:26:32] Speaker 00:
Sure.

[00:26:32] Speaker 00:
And I'm not going to remember the specifics, but I think one of Churchill's charges

[00:26:37] Speaker 00:
has to do with an asserted inconsistency between what you said in Europe and what you said here.

[00:26:44] Speaker 00:
And it's true that there's a general principle that over the years this court has articulated that says be very, very careful about interpreting statements made in different legal fora outside the United States.

[00:27:00] Speaker 00:
But what is the explanation for why, whatever these two statements are,

[00:27:07] Speaker 00:
aren't just squarely inconsistent?

[00:27:10] Speaker 03:
Well, first of all, if you look at what happened in Europe is they more specifically claimed the deformable activator to describe it more consistently with the disclosure or the figures in the patent.

[00:27:24] Speaker 03:
And then they said, this is different than the deformable activator, say, in the form of a ball, which the patent makes.

[00:27:30] Speaker 03:
If you read the spec, it makes a distinction between that.

[00:27:32] Speaker 03:
Why it's important, why it has to be done that way in Europe is because if you look at appendix

[00:27:37] Speaker 03:
3486 at section 4.2.

[00:27:39] Speaker 03:
The European Patent Office makes you write the claims more specifically because only the claims of the patent are going to be translated into all of the languages in Europe.

[00:27:55] Speaker 03:
And we are here in the US where sometimes if the claim deformable activator doesn't have a customary meaning, we can look to the specification to truly understand that it's more difficult

[00:28:07] Speaker 03:
for that to be done in Europe, because the specification may not be in the language.

[00:28:12] Speaker 03:
So what we thought and what we presented to the district court is, because of the different standards, because of the different requirements, because what this court has said in AIA Engineering, 667 F there at 1264, 1279, that you have to be leery of giving too much weight to those statements.

[00:28:34] Speaker 03:
But what's important here is the district court didn't

[00:28:37] Speaker 03:
ignore that evidence, she addressed Churchill's argument on it, and she came to her own conclusion as to how it supported their position.

[00:28:48] Speaker 03:
And again, there's nothing in the record that says she abused her discretion in coming to that conclusion.

[00:28:56] Speaker 03:
Overall, if you look at this, if you look at the testimony that the district court had from their own expert,

[00:29:06] Speaker 03:
The entirety of the testimony that was there for Mr. Lee, if you look at all of the evidence on Dr. Hofstad, if you look at the disclosure of the specification in a whole, if you look at everything the district court did here, there's nothing to suggest that she abused her discretion.

[00:29:24] Speaker 03:
She wrote a very detailed opinion.

[00:29:26] Speaker 03:
She discussed the presumption of validity, but only to note that she didn't change the standard of

[00:29:33] Speaker 03:
Above clear and convincing, she noted as many cases from this court note that when the reference has been before the patent office, although the burden doesn't change, it may go to the weight of the evidence.

[00:29:45] Speaker 03:
She was right to rely upon that weight.

[00:29:48] Speaker 03:
She was right to analyze all the other evidence as she did.

[00:29:51] Speaker 03:
And despite what Churchill wants to say, either we're just not accepting what she said because again, she said that she considered these matters separately and collectively.

[00:30:02] Speaker 03:
And they just did not come to the octane fitness standard, which says it's the rare case where that stands out.

[00:30:10] Speaker 03:
And in fact, she cited Western Falcon at District Court case at 12 of the appendix and Hockeyline at 8 through 9.

[00:30:17] Speaker 03:
And we've also cited District Court cases credit acceptance and creative powers, very similar issues where patents were held to be invalid or other issues.

[00:30:26] Speaker 03:
And she found that these cases were more consistent with what was happening here.

[00:30:31] Speaker 03:
And it certainly was not a case that stood out as required by the Octane Fitness Standard.

[00:30:36] Speaker 03:
Thank you.

[00:30:36] Speaker 03:
Unless you have any other questions, I'll sit down.

[00:30:39] Speaker 03:
Thank you, Your Honor.

[00:30:39] Speaker 03:
So we have to sit down.

[00:30:40] Speaker 03:
The time's up.

[00:30:41] Speaker 02:
Your Honor, first of all, if I may, with respect to separately and collectively, to a certain extent, Your Honor, I would submit that that is boilerplate.

[00:30:53] Speaker 02:
We have to look at the opinion and look at the fact that the totality of the circumstances

[00:30:59] Speaker 02:
The facts and the law were not examined under the totality of circumstances.

[00:31:03] Speaker 01:
Is it your position that no single thing has to be objectively unreasonable as long as a whole host of things push the envelope?

[00:31:12] Speaker 02:
Yes, Your Honor.

[00:31:13] Speaker 02:
I think you have to look at each one separately, analyze it, and then look at it collectively and ask yourself, looking at all of these issues, does this case stand out from all others?

[00:31:25] Speaker 02:
We believe this case does.

[00:31:27] Speaker 02:
Your Honor, if I may.

[00:31:28] Speaker 02:
With respect to the allowance at appendix 3345, the examiner merely made the note, the prior art made of record and not relied upon is considered pertinent to the applicant's disclosure.

[00:31:41] Speaker 02:
That was it with respect to lead prior art 255.

[00:31:45] Speaker 02:
With respect to the EPO admission that is found in appendix 2653, it is clear and unequivocal.

[00:31:52] Speaker 02:
The applicant says, compared to a deformable activator in the form of an activation ball,

[00:31:59] Speaker 02:
a deformable ring may improve the characteristics of the deformable activator.

[00:32:05] Speaker 02:
Very clear.

[00:32:06] Speaker 02:
Distinction between the activation ball being, or an admission that the deformable activator is an activation ball.

[00:32:15] Speaker 02:
I'd call the court's attention to the fact that we continue to hear about the importance of a ring.

[00:32:20] Speaker 02:
There is no mention of a ring.

[00:32:23] Speaker 02:
This court, previously, in the PTAB decision, said,

[00:32:27] Speaker 02:
The ring was never claimed.

[00:32:28] Speaker 02:
We agree.

[00:32:29] Speaker 02:
It was never claimed, and yet we continue to hear about a ring.

[00:32:33] Speaker 02:
Let me just turn very briefly to the inventor's testimony, because we've heard all sorts of things about the inventor's testimony.

[00:32:41] Speaker 01:
Slide three.

[00:32:42] Speaker 01:
Give me another 30 seconds.

[00:32:44] Speaker 02:
Testified clearly.

[00:32:45] Speaker 02:
A deformable activator is a mechanism that can be dropped down the drill string to engage a seat to allow the activation of a sleeve and be blown through the seat to deactivate mode.

[00:32:55] Speaker 02:
I asked him very specifically, does Figure 6, is that a performable activator?

[00:33:00] Speaker 02:
Unequivocal, yes.

[00:33:02] Speaker 02:
Thank you, Your Honor.

[00:33:03] Speaker 02:
OK, thank you.

[00:33:03] Speaker 02:
We'd ask that the court reverse and render or reverse for further findings.

[00:33:08] Speaker 01:
Thank you.

[00:33:08] Speaker 01:
The cases will be submitted.

[00:33:25] Speaker 02:
The Honorable Court is adjourned until tomorrow morning at 10am.