[00:00:46] Speaker 01:
Okay, our final case this morning is number 172388, Spynology, Inc.

[00:00:51] Speaker 01:
versus Wright Medical Technology, Inc.

[00:00:54] Speaker 01:
Mr. Scarr, is that how you pronounce it?

[00:01:00] Speaker 02:
Good morning.

[00:01:01] Speaker 02:
May I please the court?

[00:01:03] Speaker 02:
I'd like to begin the discussion with the first claim term, manually actuated activation mechanism.

[00:01:11] Speaker 02:
The court found that was a 112.6 means plus function.

[00:01:15] Speaker 02:
format and found it indefinite in claims 15 to 35, but construed it to be a wheel 96 in claim 33.

[00:01:26] Speaker 04:
If we conclude that the board properly construed body in claims 33 and 34, and therefore found non-infringement based on that, would that non-infringement finding and that construction of body apply to all the other claims?

[00:01:44] Speaker 02:
Yes.

[00:01:45] Speaker 02:
I mean, is the body used the same way?

[00:01:49] Speaker 04:
OK, so that issue is an all or nothing issue in terms of your ability to pursue an infringement claim.

[00:01:56] Speaker 01:
Correct, yes.

[00:01:57] Speaker 01:
Under that construction of body, there's no infringement of the other claims either.

[00:02:01] Speaker 02:
That's right.

[00:02:02] Speaker 02:
So if the body includes a barrel, our blades don't open that far, or their blades don't open that far, and there would be no infringement.

[00:02:09] Speaker 02:
That's correct.

[00:02:13] Speaker 02:
So getting back to the actuation mechanism, the first question is whether it really is a 1-12-6 or not.

[00:02:21] Speaker 02:
And Spinelli's position that it is not, that there is sufficient, sufficiently defined structure if you look at the specification.

[00:02:34] Speaker 02:
Specification even calls the knob the blade advance or not.

[00:02:39] Speaker 02:
So if you're parsing manually actuated activation mechanism,

[00:02:44] Speaker 02:
which we've construed to be hand-operated.

[00:02:48] Speaker 04:
You argue that the board didn't apply any kind of presumption, but we've made it clear the presumption isn't an extreme one.

[00:02:57] Speaker 04:
I mean, it's rebuttable, right?

[00:02:59] Speaker 02:
Correct, it's rebuttable.

[00:03:00] Speaker 04:
So you're not contending that you have to have expert testimony to rebut that presumption, are you?

[00:03:08] Speaker 02:
Especially in this case, I don't think you do, no.

[00:03:11] Speaker 02:
Even though there was nothing articulated by the judge.

[00:03:13] Speaker 02:
as to how it was rebutted.

[00:03:15] Speaker 02:
I guess the judge appeared to focus on the term mechanism and say, well, that's been found to be a nonce word.

[00:03:22] Speaker 04:
And therefore, I find... But she did more than just say it's a nonce word.

[00:03:27] Speaker 04:
I mean, the court looked at the intrinsic evidence, right?

[00:03:31] Speaker 04:
She looked at it in the context of the specification.

[00:03:34] Speaker 02:
She did.

[00:03:34] Speaker 02:
But I think she looked... The court seemed to actually have a fairly decent analysis up until she

[00:03:41] Speaker 02:
the court will start to look at the dependent claims and the unasserted dependent claims.

[00:03:46] Speaker 02:
And that is where I think that the court went awry in the analysis because the court became confused over what structure should be imported in and decided they couldn't find that structure.

[00:03:59] Speaker 01:
So in this specification, it seems as though the knob is an activation mechanism, but there's also

[00:04:08] Speaker 01:
for reference to a turn wheel being an activation mechanism.

[00:04:11] Speaker 01:
Is that for the other embodiment?

[00:04:14] Speaker 02:
Yeah, for some reason, they gave a different name to the wheel in each embodiment.

[00:04:19] Speaker 02:
So the first embodiment, I believe it's the knob and the second embodiment is the turn wheel.

[00:04:25] Speaker 02:
But it performs the same functions.

[00:04:26] Speaker 02:
It's manually operated turning.

[00:04:28] Speaker 02:
It starts the blades going.

[00:04:30] Speaker 02:
So under the media rights case where it says,

[00:04:35] Speaker 02:
that the undertaking, you should look at this back in light of the claim language and see if there's sufficient structure there.

[00:04:43] Speaker 02:
And when the court starts its analysis, it certainly seems like the court found sufficient structure.

[00:04:49] Speaker 02:
And it wasn't until the court went to the unasserted claims that she kind of got off the rail and couldn't decide what structure there.

[00:05:01] Speaker 02:
But this is a simple mechanical device.

[00:05:03] Speaker 02:
Everything is disclosed in the patent.

[00:05:05] Speaker 02:
And it seems to me that, you know.

[00:05:07] Speaker 04:
Well, and the dependent claims have to be narrower than the independent claims.

[00:05:12] Speaker 02:
Correct.

[00:05:13] Speaker 02:
But no one in this case has claimed that they were not.

[00:05:17] Speaker 02:
That wasn't the reason why.

[00:05:17] Speaker 01:
Well, the problem is that dependent claims seem to describe different things as the activation mechanism, right?

[00:05:26] Speaker 02:
Some of the unassertive claims are problematic.

[00:05:28] Speaker 02:
There's no doubt about it.

[00:05:30] Speaker 03:
I mean, don't the dependent claims essentially do what she found

[00:05:35] Speaker 03:
claim 33 did, which is it may be functional, but they actually specify the structure.

[00:05:41] Speaker 03:
So it satisfies 112 at persons, whichever one we're talking about.

[00:05:45] Speaker 02:
Yeah.

[00:05:45] Speaker 02:
So claim 33 is the method claim where the judge construed the claim.

[00:05:49] Speaker 02:
And the only difference between that claim and claim 15 is that claim 15 is basically a laundry list of elements.

[00:05:59] Speaker 02:
And claim 33 puts them all together in a functional package.

[00:06:03] Speaker 02:
And for some reason, the court thought that because it put together a functional package, it was somehow construable.

[00:06:10] Speaker 02:
But when you just have a list of claim elements, it was not construable.

[00:06:15] Speaker 02:
And the law doesn't support that.

[00:06:16] Speaker 02:
The law does not say that you have to show the functional interaction between all the elements.

[00:06:20] Speaker 02:
You can claim them in a laundry list of items.

[00:06:25] Speaker 02:
And that's why I don't think that it's proper to find

[00:06:30] Speaker 02:
any kind of indefiniteness with respect to that claim all of it.

[00:06:35] Speaker 01:
Maybe the result is that she was wrong in invalidating the claims that she did, but instead she should have invalidated some of these dependent claims?

[00:06:43] Speaker 01:
Is that what you're saying?

[00:06:44] Speaker 02:
No, because we didn't assert them.

[00:06:46] Speaker 02:
No, no.

[00:06:47] Speaker 02:
I see what you're saying.

[00:06:48] Speaker 02:
I think there are some 112 issues with some of those, especially with 18 and 20, I think, where 20 says

[00:06:55] Speaker 02:
or the activation mechanism is something.

[00:06:58] Speaker 02:
It was already defined in the one from independent.

[00:07:00] Speaker 02:
That's not right.

[00:07:02] Speaker 02:
So you would say that's indefinite?

[00:07:05] Speaker 02:
I would say that's a problem.

[00:07:07] Speaker 02:
That's a 112 problem.

[00:07:08] Speaker 02:
It could be indefinite.

[00:07:09] Speaker 02:
It's not the way it's supposed to be done.

[00:07:13] Speaker 02:
But I don't think, again, there's a case that says that the dependent claimed tail can't wag the independent claimed dog.

[00:07:20] Speaker 02:
And that's what's happening here.

[00:07:22] Speaker 02:
You can't have this problem with the dependent claims flow up and taint the independent claims.

[00:07:27] Speaker 02:
That's just not the way it works.

[00:07:29] Speaker 02:
And so sure, there may be some problems with those claims, but they weren't asserted by us.

[00:07:34] Speaker 02:
And each claim characterizes a separate invention.

[00:07:40] Speaker 02:
And so as an upshot of this, obviously, you've got invalid claims.

[00:07:48] Speaker 02:
And I don't think it's appropriate.

[00:07:50] Speaker 02:
And even the analysis under 112.6, I think, was wrong, because we agreed about the function, and the function being is to expand the blades.

[00:08:00] Speaker 02:
But again, the structure that does that, we're looking at the manually actuated activation mechanism.

[00:08:07] Speaker 02:
There's only one thing you touch with your hands, manually touch with your hands to expand the blades, and that's the knob or the wheel.

[00:08:13] Speaker 02:
And she got it right in N33, and the court got it wrong, and the other one.

[00:08:21] Speaker 02:
I'll move on to body now.

[00:08:26] Speaker 02:
Unless you have any more questions about that one.

[00:08:30] Speaker 02:
So in the case of the body, if we read the specification broadly and read it thoroughly, the size of the barrel is never discussed.

[00:08:42] Speaker 02:
It's not an issue anywhere.

[00:08:45] Speaker 02:
And yet we end up with a situation where now the barrel is

[00:08:50] Speaker 02:
we have to determine the size of the barrel because the blades need to expand.

[00:08:53] Speaker 01:
You know, the dependent claims make clear, don't they, that the body includes the barrel?

[00:09:01] Speaker 02:
I don't see any... The only place barrel is ever claimed is in claim 13.

[00:09:05] Speaker 02:
Again, a non-assertive claim.

[00:09:07] Speaker 01:
There is no... No, they talk about other features being part of the body, which are not limited to the shaft.

[00:09:15] Speaker 02:
Yeah, if you're going to... If you are going to import

[00:09:19] Speaker 02:
some of those things in from our preferred embodiment, as in claims 16 and 17, where it says that the body includes a viewport.

[00:09:29] Speaker 02:
There is a viewport in the barrel.

[00:09:31] Speaker 02:
There's also a viewport in the shaft.

[00:09:34] Speaker 02:
And claim 17, let's see, what do they say on that one?

[00:09:39] Speaker 02:
I guess that's not the one.

[00:09:42] Speaker 02:
But there's a viewport, there's a indicator, and it says that the knob is constrained.

[00:09:47] Speaker 02:
the proximal end of the body, I think is where it says that.

[00:09:51] Speaker 01:
Well, it talks about the blade control knob constrained within the proximal end of the body in joint 20.

[00:10:00] Speaker 02:
Yeah, so if you look at, say, figure... So if you look at figure 13,

[00:10:17] Speaker 02:
You can see the threads that are not in the body.

[00:10:20] Speaker 02:
They're on the end of the blade carrier.

[00:10:23] Speaker 02:
And the knob is constrained by those threads.

[00:10:27] Speaker 02:
So the body is not specifically claimed.

[00:10:33] Speaker 02:
Only attributes that you could argue are on the body that you can also argue that are on the shaft.

[00:10:38] Speaker 02:
And again, that's unasserted claim.

[00:10:41] Speaker 01:
We can still use unasserted claims with the screw body.

[00:10:47] Speaker 02:
Well, the only reason that I know of is you look at unasserted claims, or dependent claims, is to find out whether there's a scope problem with the dependent claim.

[00:10:59] Speaker 01:
We can't use the dependent claims that clarify what body means to construe body?

[00:11:05] Speaker 02:
Well, there was a case.

[00:11:09] Speaker 02:
The case was power integrations, where the district court refused to use unasserted claims to construe

[00:11:15] Speaker 02:
the claim terms in this course affirm that decision.

[00:11:19] Speaker 02:
And I think that that's right.

[00:11:23] Speaker 02:
If you have claim terms that are in unasserted claims, again, that's a different invention.

[00:11:29] Speaker 02:
And unless you're looking for claim differentiation issues, there's no reason to look at them.

[00:11:34] Speaker 04:
Well, but even if you ignore the other claims, the trial court pointed to several parts of the specification where

[00:11:44] Speaker 04:
to recognize that the only embodiments shown in the specification have viewports on the barrel, right?

[00:11:54] Speaker 02:
Well, she did that.

[00:11:54] Speaker 02:
That's an error, of course, because if you look at figure one, there's a viewport right down the middle of that shaft.

[00:12:03] Speaker 02:
And you can tell it's a viewport.

[00:12:06] Speaker 02:
But if you look at figures two, you can see these striations in the viewport in figure one.

[00:12:13] Speaker 02:
And they're not there in figure two because the blade guides have been taken out.

[00:12:17] Speaker 01:
Did you make that argument in your opening brief that there are new ports on the shaft?

[00:12:26] Speaker 02:
I think it was just in the rebuttal brief.

[00:12:29] Speaker 02:
I made it to the court.

[00:12:42] Speaker 01:
You want to reserve your time?

[00:12:44] Speaker 01:
Yes, Your Honor.

[00:12:45] Speaker 01:
Thank you.

[00:12:48] Speaker 01:
Okay, Mr. Fitzpatrick.

[00:12:58] Speaker 04:
Before you get too into the merits, I want to understand your point that you say that the validity issues

[00:13:08] Speaker 04:
don't need to be addressed if we affirm on infringement.

[00:13:11] Speaker 04:
Is that because you would be willing to dismiss your counterclaim of invalidity?

[00:13:19] Speaker 00:
I may please the Court, Your Honor.

[00:13:20] Speaker 00:
The claim construction of body and the consequent non-infringement determination is applicable

[00:13:32] Speaker 00:
and determinative with respect to all of the asserted claims.

[00:13:36] Speaker 01:
Well, that's for infringement, but not as to invalidate.

[00:13:39] Speaker 00:
That's correct, Your Honor.

[00:13:41] Speaker 00:
And so what we would submit is that were the court to affirm the claim construction on body, that addresses the entire set of asserted claims.

[00:13:53] Speaker 04:
So I guess my question is, if you win on infringement, are you saying you'd be willing to dismiss

[00:14:01] Speaker 04:
your counterclaim of invalidity?

[00:14:04] Speaker 00:
I believe we would, yes.

[00:14:06] Speaker 01:
And how about should we vacate the finding of indefinite?

[00:14:12] Speaker 00:
I don't believe that it's even necessary really to reach it.

[00:14:18] Speaker 01:
Well, it would stand.

[00:14:19] Speaker 01:
If we just affirmed on the ground that you're right about body and there's no infringement and didn't say anything about the invalidity issues, the invalidity finding would stand.

[00:14:29] Speaker 01:
Wouldn't we have to vacate it?

[00:14:31] Speaker 00:
I think, again, we would be content were it to be vacated or simply declared moot, whatever the appropriate procedural... Well, it's not.

[00:14:41] Speaker 03:
It may be moot, but we have to vacate it if we don't want it to stand.

[00:14:46] Speaker 03:
I mean, your friend on the other side has to be happy with just affirmance on claim construction because they still have an invalid patent.

[00:14:55] Speaker 03:
Understood, and that's... I think I'm asking you the same question for the third or fourth time, but if we agree with you on the claim construction and that it applies across the boards, you would agree to vacating the validity finding and just affirming on the non-inference?

[00:15:13] Speaker 00:
Yes, I believe we would, Your Honor.

[00:15:14] Speaker 00:
Yes, yes.

[00:15:16] Speaker 00:
I think that would be fine.

[00:15:21] Speaker 00:
I would like to address a couple of the points that

[00:15:24] Speaker 00:
that counsel made regarding this issue of the body and in particular the arguments regarding the viewport, this notion that certain components that are required by the dependent claims are in fact can be found on the shaft as distinct from the barrel.

[00:15:45] Speaker 00:
And the problem with that is that that is really contrary to what the specification teaches.

[00:15:54] Speaker 00:
referred to, I think, figure one or figure two as depicting what is purportedly a viewport on the shaft.

[00:16:04] Speaker 00:
But the issue is, that's not what the specification says.

[00:16:08] Speaker 00:
The specification does not say that there's a viewport on the shaft.

[00:16:13] Speaker 00:
The specification in column three, this is at appendix 67, refers to a guide member 182.

[00:16:23] Speaker 00:
having a threaded shaft 190 and a pin 212.

[00:16:29] Speaker 00:
And those components are, the specification teaches, inserted into the barrel.

[00:16:37] Speaker 00:
And this pin 212 then becomes visible through a indicator door 214.

[00:16:51] Speaker 00:
And so

[00:16:52] Speaker 00:
There's no depiction, no description in the specification of a viewport in the first embodiment that is on the shaft.

[00:17:07] Speaker 00:
Similarly, counsel referred for the very first time during argument this morning to figure 13 and talked about the element that I believe is depicted as number 128.

[00:17:23] Speaker 00:
in that figure, but that is inserted into, again, it's in the barrel.

[00:17:28] Speaker 00:
That is a separate component.

[00:17:29] Speaker 00:
It's not the shaft.

[00:17:31] Speaker 00:
It's a separate component, and it goes into the barrel.

[00:17:36] Speaker 00:
And this is really where the dependent claims are so instructive and really fatal to the plaintiff's and the appellant's position.

[00:17:51] Speaker 00:
We have three

[00:17:53] Speaker 00:
dependent claims that require that the body includes a viewport, three further dependent claims that require that the body includes indicators, and then three more dependent claims that say that the body constrains a blade control knob within its proximal ends.

[00:18:12] Speaker 00:
We have nine dependent claims out of 29 that were added during reissue prosecution that

[00:18:19] Speaker 00:
require these extra, these additional elements as part of, that the body must be capable of having or capable of accommodating.

[00:18:29] Speaker 00:
All of those are located on the barrel.

[00:18:34] Speaker 00:
And that's consistent with what the specification teaches.

[00:18:37] Speaker 00:
The specification describes the narrow shaft and the enlarged barrel as a combined structure, having all of the features required for body.

[00:18:49] Speaker 00:
And more specifically, in the first and second embodiments, these components, the viewport indicator and blade control number wheel, are all described expressly as being located on the barrel.

[00:19:01] Speaker 00:
Council tried to get away from the unasserted dependent claims and say, well, it's really inappropriate to look at them.

[00:19:12] Speaker 00:
And he pointed to the power integrations case.

[00:19:14] Speaker 00:
The power integrations case is really a different case.

[00:19:17] Speaker 00:
In that case,

[00:19:19] Speaker 00:
there was an independent claim with a specific term or phrase, and then dependent claims with a similar but not identical claim term.

[00:19:31] Speaker 00:
In this case, we have the same claim term used in both the independent and the dependent claims.

[00:19:38] Speaker 00:
And so the power integrations case we would contend is simply inapplicable.

[00:19:46] Speaker 00:
So their construction is

[00:19:49] Speaker 00:
irreconcilable, we contend, with the intrinsic evidence.

[00:19:58] Speaker 00:
It really cannot be reconciled with the dependent claims.

[00:20:04] Speaker 00:
They also argue that the district court's construction is incorrect because the barrel cannot engage bone.

[00:20:13] Speaker 00:
But the claims don't require that the barrel engage the bone.

[00:20:17] Speaker 00:
They don't require that the device engage with bone along its entire length.

[00:20:22] Speaker 00:
And in fact, in the district court, they argued for a claim construction of the sized and configured to engage bone term to be shaped to be used in bone and related tissue.

[00:20:34] Speaker 00:
And the district court said that's not correct and adopted a broader construction.

[00:20:43] Speaker 00:
So in sum, we would submit, Your Honors,

[00:20:47] Speaker 00:
Spynology's positions with respect to body simply cannot be reconciled with the intrinsic record, or for that matter, the extrinsic record.

[00:20:54] Speaker 00:
It's not necessary to look here at the extrinsic evidence, but we've detailed that in our brief.

[00:21:00] Speaker 00:
And we believe that the district court's construction is entirely consistent with the intrinsic record and should be affirmed.

[00:21:09] Speaker 00:
If I may, I'll turn to the Section 112, paragraph 6 issue in the activation mechanism term.

[00:21:17] Speaker 00:
We contend that the appellant really cannot seriously contend that this is not, that activation mechanism is not a means plus function term.

[00:21:33] Speaker 00:
This court, as noted in the media rights versus Capital One case, has never determined that the word mechanism in and of itself connotes sufficient structure.

[00:21:44] Speaker 00:
to avoid the application of section 112 paragraph 6.

[00:21:47] Speaker 04:
But there is still supposed to be a presumption, right?

[00:21:49] Speaker 04:
It's not an irrebuttable presumption.

[00:21:52] Speaker 04:
It's not even a super strong presumption.

[00:21:55] Speaker 04:
But there is not even a reference to the presumption by the district court.

[00:22:01] Speaker 00:
Correct, Your Honor.

[00:22:02] Speaker 00:
But the reality here is mechanism is an acknowledged nonce term.

[00:22:08] Speaker 00:
Activation really doesn't add anything to it.

[00:22:12] Speaker 04:
But we've never said,

[00:22:13] Speaker 04:
the mere use of a nonce term always means it's means plus function.

[00:22:20] Speaker 00:
True, but the specific word mechanism in and of itself has never been determined by this court to connote sufficient structure.

[00:22:29] Speaker 04:
Unless the specification connotes the structure.

[00:22:34] Speaker 00:
And so that's where we run into the problem.

[00:22:36] Speaker 00:
When we look at the specification, we see that when we look at the function, so looking at the function,

[00:22:42] Speaker 00:
In claims 15 and 35, the function is to expand the blades from a fully retracted position to a fully expanded position.

[00:22:54] Speaker 00:
That is essentially every component in the device.

[00:22:56] Speaker 00:
Every component in the device.

[00:22:58] Speaker 01:
I'm not sure that's fair.

[00:22:59] Speaker 01:
I mean, it seems to me as though the specification is describing the knob and the turn wheel as doing that, right?

[00:23:08] Speaker 00:
I would submit not, Your Honor, because I think that

[00:23:13] Speaker 00:
the knob or the turn wheel initiate the movement.

[00:23:18] Speaker 00:
And the district court noted this.

[00:23:20] Speaker 00:
The specification teaches, and this is clear from portions of the specification quoted in my friend's brief.

[00:23:30] Speaker 00:
It teaches that the knob or the wheel initiate the movement, but the movement then is carried forward by the shaft, by the blade carrier,

[00:23:39] Speaker 00:
and eventually leads to the expense.

[00:23:41] Speaker 04:
But that's not what the court said when the court found it to be sufficiently definite for purposes of the other claims.

[00:23:47] Speaker 00:
Because claim 33 has a different function.

[00:23:50] Speaker 00:
Claim 33, Your Honor, has a more specific function recited.

[00:23:59] Speaker 00:
Claim 33 specifically requires a function of linearly moving a blade carrier so as to drive a blade set

[00:24:09] Speaker 00:
pivotally attached to the blade carrier from a first retracted position to a more expanded position.

[00:24:15] Speaker 00:
So in that case, the district court was able to look and say, well, the component, the structure that linearly moves the blade carrier is identifiable.

[00:24:28] Speaker 04:
That... That... Even if you have things down the line that ultimately move, the only part that's manually

[00:24:39] Speaker 04:
activated is the knob, right?

[00:24:43] Speaker 00:
Correct.

[00:24:44] Speaker 00:
The only part that is touched by hand, operated by hand, is the wheel or the knob.

[00:24:49] Speaker 00:
However, again, the function is broader.

[00:24:55] Speaker 00:
And I would submit, even if one is determining whether or not this is a 112 paragraph 6 claim term,

[00:25:01] Speaker 00:
the reality or whether it's sufficiently definite, you have to look at the function.

[00:25:05] Speaker 00:
And the function is broader than simply initiating the movement.

[00:25:08] Speaker 00:
The function is the entire process, the entire movement.

[00:25:12] Speaker 00:
Secondly, we run into this significant problem with these dependent claims.

[00:25:17] Speaker 00:
The dependent claims that say the activation mechanism is a cannulated shaft.

[00:25:24] Speaker 01:
I mean it's possible isn't it that if we were to construe the independent claims as saying the activation mechanism is the knob or the wheel that the dependent claims would then be invalid because they would not include a feature which is in the independent claim.

[00:25:45] Speaker 01:
So maybe the result here would be that the dependent claims are invalid rather than the independent

[00:25:51] Speaker 00:
It's possible, but I would submit, Your Honor, it's a rather remarkable position, I think, that the appellant has taken here, where they've essentially kind of thrown their dependent claims under the bus and said, well, they're of questionable validity.

[00:26:06] Speaker 00:
I mean, these are dependent claims that they wrote and put into their patent.

[00:26:15] Speaker 00:
And I would submit they have to mean something and have to show that there is just

[00:26:19] Speaker 00:
real confusion and lack of clarity about what this activation mechanism term means.

[00:26:25] Speaker 00:
Is it a knob?

[00:26:26] Speaker 00:
Is it a cannulated shaft?

[00:26:28] Speaker 00:
Is it a pair of shafts?

[00:26:29] Speaker 00:
Who can tell?

[00:26:30] Speaker 00:
And it really is a situation of real confusion.

[00:26:39] Speaker 00:
So we would contend, Your Honors, that the district court did properly conclude that the term is a means plus function term

[00:26:49] Speaker 00:
and that it is indefinite, hence that claims 15 and 35, as well as claims 21 through 23, which depend from 15, are invalid for indefiniteness.

[00:27:01] Speaker 00:
Finally, I would like to turn briefly, if I may, to the district court, the appellant's request in its briefing for entry of judgment in its favor as to infringement, direct infringement of claims 33 and 34.

[00:27:18] Speaker 00:
First of all, under the proper construction of body, the appellant concedes that there cannot be any infringement.

[00:27:29] Speaker 00:
But secondly, there's no evidence of direct infringement.

[00:27:33] Speaker 00:
First of all, their own expert, their technical expert, Mr. Allen, agreed that claim 33 requires that there has to be full expansion of the blades.

[00:27:44] Speaker 00:
Their medical expert, Dr. Morgan, said there are

[00:27:48] Speaker 00:
many surgical conditions where it would be inappropriate to fully expand the blades.

[00:27:55] Speaker 00:
And then their position on direct infringement really rests entirely upon the testimony, very brief deposition testimony, of a third-party surgeon, Dr. Brandon Goff.

[00:28:07] Speaker 00:
But Dr. Goff's testimony is at best unclear, certainly not sufficient for any finding of direct infringement.

[00:28:14] Speaker 00:
He testified

[00:28:15] Speaker 00:
that when he was shown a device marked as an exhibit at the deposition, he couldn't recognize whether or not it was the accused device.

[00:28:22] Speaker 00:
He couldn't remember how he had learned to use this device, and he was never asked in his deposition whether or not he had ever fully expanded the blades on the accused device during the course of one of the two.

[00:28:37] Speaker 00:
He had only ever performed two surgical procedures using this particular device.

[00:28:42] Speaker 00:
And he couldn't remember whether or not, or I should say, he was never asked whether or not he had fully expanded the blades.

[00:28:51] Speaker 00:
And that's in the record at appendix 410, 416, and 417.

[00:28:58] Speaker 00:
And so we submit, Your Honors, that there is absolutely a lack of evidence of direct infringement

[00:29:11] Speaker 00:
no basis to grant appellant's request for entry of judgment of direct infringement.

[00:29:17] Speaker 00:
And we submit that their positions with respect to the claim construction issues are at odds with the intrinsic record, the claims, and the specification.

[00:29:29] Speaker 00:
And accordingly, we ask that the district court's decision and judgment be affirmed in all respects.

[00:29:36] Speaker 01:
Thank you, Mr. Fritzman.

[00:29:37] Speaker 01:
Thank you.

[00:29:39] Speaker 01:
Mr. Scar.

[00:29:41] Speaker 01:
You've got three minutes here if you need it.

[00:29:45] Speaker 02:
I just wanted to go back to the figure 13, figure 12 again.

[00:29:54] Speaker 02:
My esteemed colleague here said that this element, number 28, is part of the body, but it's not part of the barrel.

[00:30:02] Speaker 02:
I mean, it's not.

[00:30:03] Speaker 02:
If you look up at figure 12, you can see that the threads go on the end of the blade guide.

[00:30:08] Speaker 02:
and the knob screws onto the blade guide so it is retained by the blade guide and not by the barrel.

[00:30:19] Speaker 02:
The other issue is that we didn't get to discuss on my opening argument is the court's construction of sizing configured to engage bone, which is not on appeal.

[00:30:31] Speaker 02:
The court said shape to be used to engage bone and related tissue.

[00:30:36] Speaker 02:
So then the question is how does the barrel

[00:30:38] Speaker 02:
if the barrel is going to be part of the body, how is the barrel shaped to be used to engage bone and related tissue?

[00:30:46] Speaker 02:
And there isn't a single sentence in the specification that mentions the barrel somehow engaging bone and related tissue.

[00:30:54] Speaker 02:
And I think that's probably one of the overriding reasons that shows that the claim construction is incorrect.

[00:31:00] Speaker 02:
There's no possible way in the independent claim that if it's shaped to be used to engage bone, that the barrel can be part

[00:31:07] Speaker 04:
Well, doesn't it really just say the distal end is shaped and configured to engage bone?

[00:31:12] Speaker 04:
I think you're grammatically wrong on how you read that.

[00:31:16] Speaker 02:
You're talking about the claim language?

[00:31:18] Speaker 04:
Yeah.

[00:31:19] Speaker 02:
Well, if you look at claim 15, it says an elongated hollow body having a proximal end and a distal end, comma, size and configured to engage bone-related tissue.

[00:31:30] Speaker 02:
There's a comma there.

[00:31:31] Speaker 02:
It's not, as a patent drafter, the way you would draft that, if you wanted it just to be the distal end, you would say, in the elongated hollow body, having a proximal end and a distal end, a distal end size, or the distal end size, and configured to engage bones.

[00:31:47] Speaker 01:
Well, by me, even under your own construction, the entirety of the shaft is not sized and configured to engage bone, right?

[00:31:55] Speaker 01:
Just the end of it.

[00:31:57] Speaker 02:
Well, the shaft has the same diameter all the way up to the barrel.

[00:32:02] Speaker 02:
So if you had to stick it in all the way, you could.

[00:32:04] Speaker 02:
But certainly, in large barrel, there's absolutely no evidence or nothing in the specification that says that size and configured to engage bone.

[00:32:14] Speaker 02:
And again, I do not think there's a proper reading of the claim for only the distal ended size.

[00:32:21] Speaker 04:
Well, claim 35 uses the same language.

[00:32:24] Speaker 04:
It doesn't have the comma, right?

[00:32:26] Speaker 02:
Right.

[00:32:27] Speaker 02:
And claim 33.

[00:32:28] Speaker 02:
Yeah, claim 30, I agree with you.

[00:32:31] Speaker 02:
Claim 35 does not have the comma.

[00:32:32] Speaker 02:
But again, it also does not single out the distal land.

[00:32:37] Speaker 02:
You'd have to attempt to read it that way.

[00:32:41] Speaker 02:
I don't see that.

[00:32:43] Speaker 02:
And claim 33 has such that the, where does it say, the Bowen thing?

[00:32:50] Speaker 02:
I can't find it in there.

[00:32:51] Speaker 02:
I'm not even sure it says there in claim 33.

[00:32:59] Speaker 01:
But again... Were these arguments about the viewport, for example, being on the shaft as alternatively being on the barrel, was that an argument that was made to the District Court?

[00:33:11] Speaker 02:
Yes.

[00:33:11] Speaker 02:
It was briefed by both sides.

[00:33:14] Speaker 01:
That particular argument?

[00:33:15] Speaker 02:
That particular argument.

[00:33:15] Speaker 02:
And the fact that the knob was constrained in the end of the shaft and not necessarily all was in the barrel, and that there's an indicator on the shaft, a little needle sticking out, one of the pictures that could be the depth indicator.

[00:33:28] Speaker 02:
Those were all made.

[00:33:31] Speaker 01:
All right.

[00:33:31] Speaker 01:
I think we're out of time.

[00:33:32] Speaker 01:
Thank you, Mr. Scar.

[00:33:33] Speaker 01:
Thank both counsel.