[00:00:00] Speaker 02: The first case for argument this morning is 17-2424 Vic Tollick Company v. Youngfield. [00:00:07] Speaker 02: Mr. Collins, whenever you're ready. [00:00:09] Speaker 02: Thank you. [00:00:15] Speaker 00: May I begin? [00:00:17] Speaker 00: May it please the court, I'm Brian Collins on behalf of Vic Tollick and my colleague Mr. Kears. [00:00:22] Speaker 00: This patent relates to pipe coupling, specifically a method of installing pipe couplings, and what we're talking about is really three key features in this method claim. [00:00:30] Speaker 00: The pipe coupling has to have multiple segments, which means they have sort of two almost C-shaped things. [00:00:37] Speaker 00: When you're installing them, they have to be connected end-to-end, meaning the fasteners have to be secured at the end. [00:00:42] Speaker 00: It's kind of called a closed-loop connection. [00:00:45] Speaker 00: And the pipe is actually inserted while the ends are assembled. [00:00:49] Speaker 00: This is marketed and trademarked as what's called an installation-ready coupling. [00:00:53] Speaker 00: The beauty of this design is it's fully assembled. [00:00:55] Speaker 00: It does not need to be disassembled in the field. [00:00:58] Speaker 00: No loose fasteners, no loose bolts. [00:01:00] Speaker 00: You can stab it right on top of the pipe. [00:01:02] Speaker 02: Lewis is your patent as well, right? [00:01:05] Speaker 00: Lewis, are you the... Yes, Lewis actually is a Victaulic patent also. [00:01:09] Speaker 00: And then the dependent claim refers to a step that accommodates this. [00:01:15] Speaker 00: It's called deforming to conforming because basically, [00:01:18] Speaker 00: The real challenge of getting these pipe couplings onto the pipe is the clearance that you have to achieve in order to get the coupling separated and around the pipe. [00:01:27] Speaker 00: One way to do it, it's a preferred embodiment in the client's patent, is deforming it. [00:01:31] Speaker 00: So basically widening those segments out so that you can clear the pipe and then deforming them over the pipe. [00:01:38] Speaker 00: And that's what's in claims 2 and 10. [00:01:41] Speaker 00: So really, the real benefit of this invention is the great thing is there's absolutely no disassembly in the field. [00:01:46] Speaker 00: It goes right on the pipe, extremely easy for the worker to deal with. [00:01:51] Speaker 00: We're dealing with an anticipation rejection against the independent claims 1 and 9, and obviousness rejections against the dependent claims 2 and 10. [00:02:00] Speaker 00: Notably, there's no obviousness rejection at all against the independent claims. [00:02:06] Speaker 00: I'm going to start off with the anticipation rejection. [00:02:08] Speaker 00: What we're dealing with that's cited as the prior art or the disclosed embodiment in the Lewis patent is a Figure 3A, which is really a hybrid Figure 3A. [00:02:19] Speaker 01: Figure 3A doesn't... Just to interrupt you for a minute. [00:02:23] Speaker 01: You talk about Figure 3A, but as I understood the PTAB's position, they weren't relying on Figure 3A so much as the disclosure earlier in the patent about how you could have multiple segments. [00:02:37] Speaker 01: and fastening means at each segment, and that those fastening means could be a nut and bolt at each separation between two segments. [00:02:46] Speaker 00: And that is what the petitioner offered as their explanation to get to what's called a figure 3 embodiment. [00:02:55] Speaker 00: What you have in the patent, really, is you have to look at two distinct embodiments in the detailed disclosure. [00:03:00] Speaker 00: And the points that you are discussing, which are part of the invention summary, so what I was going to say was if you look at the detailed disclosure first, what you have is one embodiment, that's figure three, figures one through three, that satisfies two of the claim limitations in the sense that it has axial insertion. [00:03:18] Speaker 01: It seems to me that the big distinction, the difference between your understanding of the priority and the PTEB's understanding of the priority [00:03:26] Speaker 01: is that it's your view that really those statements, broader statements, in the summary of the invention are simply describing what's depicted in the figures. [00:03:40] Speaker 01: And that those statements shouldn't be understood to mean more than that. [00:03:44] Speaker 00: Absolutely. [00:03:45] Speaker 00: They are a preview of what's coming up in the detailed descriptions. [00:03:50] Speaker 00: No different than a generic claim, for example. [00:03:52] Speaker 00: If a generic claim said something similar, one wouldn't necessarily think that the claim discloses other features also. [00:04:00] Speaker 00: The invention summary is really a preview [00:04:02] Speaker 01: And if you read the invention summary, it starts off... Wouldn't the claim be broad enough to encompass other embodiments, if it's a broad claim in your hypothetical? [00:04:11] Speaker 00: Absolutely, but it doesn't necessarily mean it disclosed the improvements. [00:04:14] Speaker 00: And the improvement here is having all three features. [00:04:16] Speaker 01: Does it matter to a certain extent, when you're talking about disclosure, does it matter to a certain extent the knowledge of one of ordinary skill and the art and what they might understand from these broad statements? [00:04:27] Speaker 00: How someone would interpret a statement is one thing, but what we're dealing with here is we're starting to talk about adding features together, combining features together from the two embodiments disclosed. [00:04:40] Speaker 00: So I think this is really where we get to this dividing line between you have the Kennet Metal case and then you have cases like Net Money Inn and NYDEC that do talk about situations like this. [00:04:49] Speaker 00: Kenna Metal's on the one side where you had five coatings, three binders, or maybe it was five bindings and three coatings. [00:04:56] Speaker 00: And a statement in the specification said that you can use them together. [00:04:59] Speaker 00: And the court said, well, that discloses 15 different possibilities because it has an express disclosure. [00:05:05] Speaker 00: With the NIDAC case, for example, you had a case which we believe is much more like our situation, where the patent had two disclosed embodiments, but no real express disclosure that features of the two embodiments could be combined to collectively arrive at the claim. [00:05:21] Speaker 00: The two embodiments had all the features of the claim collectively, but neither embodiment individually had that. [00:05:28] Speaker 00: And really what Nidek was saying was KenneMetal needs some type of expressed disclosure, some suggestion of combination possibilities that you would take the features of the two mixed embodiments of the two different embodiments and mix and match them together. [00:05:42] Speaker 00: Because the two embodiments, each one of them satisfy at best two of the key features of the claim, but not all three. [00:05:48] Speaker 01: What about where it says, just going, I'm following what you're saying, but what about the part of the specification that says that the fastening means may conveniently comprise appropriate nuts and bolts fitting within boards and lugs adjacent each side of the axial slit. [00:06:07] Speaker 01: I mean, why isn't that enough with some sentence immediately [00:06:13] Speaker 01: it occurs immediately after the statement saying that you could have a plurality of segments. [00:06:19] Speaker 01: Why in this mechanical invention isn't that enough to disclose that you could have two segments or more than two segments with nuts and bolts at each bore where there's a separation between the segments? [00:06:35] Speaker 00: I think the sentence you're citing, I just want to be [00:06:37] Speaker 01: It's a column 5, lines 8 through 11. [00:06:41] Speaker 00: Gotcha. [00:06:41] Speaker 00: I just want to be 100% clear that I'm pulling the right one out. [00:06:45] Speaker 00: But I believe that's the one that ends in the axial slip. [00:06:47] Speaker 00: Is that sentence? [00:06:49] Speaker 00: Right, okay, so it's extremely common on these because you want to apply pressure on what we call the bolt pad, which is the side where they're connected, and that's where you would have one axial slit, the axial slit, to have two nuts and two bolts on each side so that pressure is applied to that. [00:07:08] Speaker 00: That's, in fact, the lane reference that's used in the obvious combination shows having two nuts and two bolts on one axial slit. [00:07:16] Speaker 00: I think the key part of that sentence is that it ends in the word [00:07:20] Speaker 00: nuts and bolts, plural, on the axial slit. [00:07:24] Speaker 01: What they're saying is that you can use... They're saying if they said two axial slits, then it's the plurality or lack of... it's the use of singular here that you're relying on? [00:07:33] Speaker 00: Yeah, I think that sentence is saying that you can use nuts and bolts on one axial slit, which nobody really disputes, that you could use two nuts and two bolts on the axial slit. [00:07:45] Speaker 00: That sentence is talking about the single segment embodiment, [00:07:49] Speaker 00: and it's talking about the slit and the singular, that's consistent. [00:07:52] Speaker 00: That's not saying that you can use multiple sets of nuts and bolts on multiple axial slits. [00:07:58] Speaker 00: And I think the plural on nuts and bolts there gave rise to a misunderstanding that they were talking about different locations. [00:08:05] Speaker 01: I'm sorry to interrupt you, but what about the preceding sentence that says you could have a plurality of segments and fastening means? [00:08:13] Speaker 01: That's not singular, that's plural. [00:08:16] Speaker 00: Oh, thank you. [00:08:20] Speaker 00: plurality of segments. [00:08:26] Speaker 00: The preceding slit, this is the one, this is the, actually this is the preview of figures one through three. [00:08:32] Speaker 00: The housing may with joints and couplings of small to moderate size be comprised by a single segment split by a single actually extending slit. [00:08:40] Speaker 00: So that's talking about the first embodiment. [00:08:42] Speaker 00: That's the summary preview. [00:08:43] Speaker 01: How do you know you're talking about the first embodiment and it's not talking more generally? [00:08:47] Speaker 01: because it's talking about a single... It doesn't say that it's talking about the first embodiment, does it? [00:08:53] Speaker 00: Well, it says it's talking about a single axially extending slit. [00:08:56] Speaker 00: Figures 1 through 3 is the only embodiment that has a single axially extending slit. [00:09:03] Speaker 00: If we're on page 5, single axially extending slit is the first embodiment. [00:09:07] Speaker 01: I was looking at the disclosure on page 5, lines 12 through 14, that says for larger sized joints, [00:09:15] Speaker 01: you could have a priority of segments and fascinating. [00:09:19] Speaker 00: Oh, I'm sorry. [00:09:20] Speaker 00: When you said the nuts and bolts, I was looking at lines nine and 10 in the sentence that ends in the actual slick. [00:09:25] Speaker 01: I had moved up. [00:09:26] Speaker 01: I said, why doesn't the sentence that precedes the one at nine through 10, why doesn't that tell you that you could have [00:09:33] Speaker 01: Plural fastening means plural, not singular. [00:09:37] Speaker 00: Okay, since it's false. [00:09:38] Speaker 00: Got it. [00:09:38] Speaker 00: For larger size joints, I think what they're saying is you can use one with multiple segments. [00:09:43] Speaker 00: Now let's go look at the detailed description and see what they show, and they show different types of design. [00:09:48] Speaker 00: I don't think what they're saying, there's no suggestion that they're saying that you can have a single segment embodiment like the one that's in figures one through three, because this is a summary of the invention. [00:09:58] Speaker 00: This is a preview of what's coming up. [00:10:00] Speaker 00: And you have to look at it in context of what did they describe later. [00:10:03] Speaker 00: I'm summarizing in one way then describe in detail because that detail is a critical part of the disclosure. [00:10:09] Speaker 00: In fact, that's the real context of the disclosure that this next sentence [00:10:13] Speaker 00: is just previewing what's coming up in Figures 6 through 10, where they do create a different design that is much larger and opens up much wider to accommodate larger pipes. [00:10:25] Speaker 00: When you look at this in context of the full disclosure, there's nothing about this sentence that comes out and jumps out and expressly commands that you can take the Figure 3 type embodiment and have it continue to behave [00:10:39] Speaker 00: with multiple segments. [00:10:40] Speaker 01: I think it kind of goes back to the initial point that the difference between your interpretation of the reference and the PTAP's interpretation is whether those sentences in the summary of the invention should be read in light of the preferred, you know, the preferred embodiments that are depicted in the figures and therefore limited to just those embodiments. [00:11:02] Speaker 00: Well, I think they should be absolutely right in the context of those embodiments. [00:11:05] Speaker 00: Yes, absolutely. [00:11:05] Speaker 00: Because I think those embodiments are the totality of really what's being disclosed. [00:11:10] Speaker 00: I think there's another point to make there also. [00:11:13] Speaker 00: You can't just take a single segment. [00:11:16] Speaker 01: Would your view change if those sentences were in the written description part compared to being in the summary of the invention? [00:11:24] Speaker 00: I think the view would be more favorable with the Patent Office if it said in this embodiment of figures one through three, you can also have an additional slit and additional nut and bolts and things like that. [00:11:37] Speaker 00: I mean, if it was talking about that specific embodiment, but when you read this, what it's not telling you, it's not like Kenna Metal where it says you can use [00:11:45] Speaker 00: these three things and these five things together, when you look at the summary and then you go read what comes in detail, you do see two separate things with nothing saying that you could use features of them together. [00:11:56] Speaker 00: And I think another thing that comes out of this that's missing, that's really fundamental, is how would you pull it off? [00:12:03] Speaker 00: They don't give you really any details of how you create the minimum distance, and this is the claim construction issue, that's really required to get these pipe segments to clear enough for the pipe. [00:12:14] Speaker 00: They don't actually move just a little because there's a lot of clearance and a lot of features that you have to do. [00:12:20] Speaker 00: For example, the Victaulic patent itself has a number of means for doing it. [00:12:25] Speaker 00: It widens it out. [00:12:26] Speaker 00: That's a deform to conform feature. [00:12:28] Speaker 00: It puts some springs on the bolts. [00:12:30] Speaker 00: It creates longer bolts. [00:12:31] Speaker 00: And it does things like that. [00:12:33] Speaker 00: And this patent doesn't tell you how you would achieve the distance required for axial insertion. [00:12:39] Speaker 00: And in fact, when we challenged the petitioner on this issue, [00:12:44] Speaker 00: What they came back with in appendix page 3098 was an actual new design for this. [00:12:50] Speaker 00: They came up with a new design where they added longer, different bolts than what they showed in their original figure 3A, and what they said was the disclosure of Lewis. [00:13:00] Speaker 00: They actually had to come up with a new design and a reply brief that would work when that point was challenged. [00:13:06] Speaker 00: That's a modification. [00:13:07] Speaker 00: And if they had to make a modification to make it actually become actually insertable, that's a question of obviousness. [00:13:13] Speaker 00: You have to start getting into why would you make the modification? [00:13:17] Speaker 00: Would that be a choosable or advisable modification? [00:13:20] Speaker 00: Level of ordinary skill in the art. [00:13:21] Speaker 00: But those things is once you talk about changing what's disclosed in the reference, you start talking about obviousness. [00:13:27] Speaker 00: And that wasn't instituted in this case because they didn't put an obviousness case on. [00:13:34] Speaker 02: Why don't we, you're into your rebuttals. [00:13:36] Speaker 00: Okay, thank you. [00:13:45] Speaker 03: May it please the court. [00:13:46] Speaker 03: Substantial evidence and the case law supports the board's reading of the Lewis patent. [00:13:52] Speaker 02: Just to go back to your friend's very final point, and I can't remember on the record. [00:13:56] Speaker 02: Did the petition allege, with respect to these claims, both anticipation and obviousness, and did the board just end up instituting on anticipation? [00:14:09] Speaker 03: That is correct. [00:14:10] Speaker 03: The petition had a Lewis obviousness ground that was not instituted on. [00:14:18] Speaker 02: And is the PTAB just as an aside? [00:14:21] Speaker 02: Is SAS playing into what the board is doing with that? [00:14:27] Speaker 02: At least if cases are pending now, this case was probably out the door, right? [00:14:31] Speaker 03: Right. [00:14:32] Speaker 03: Yeah. [00:14:32] Speaker 03: So this case, the board isn't dealing with cases that are already gone. [00:14:37] Speaker 03: I believe, I'm not 100% sure, but the pending cases where there are grounds that weren't instituted on, I believe the board is re-looking at those cases. [00:14:50] Speaker 03: So the board had substantial evidence for relying on its reading of the Lewis patent. [00:15:00] Speaker 03: It relied on a number of disclosures in Lewis itself where it talks about using the plurality of segments for larger joints. [00:15:10] Speaker 03: There's no statement in Lewis that says you cannot use the larger joints or plurality of segments for the axillary insertion. [00:15:21] Speaker 02: Yeah, but that's not required and that doesn't get true to anticipation just because it doesn't preclude something. [00:15:28] Speaker 02: The question is whether or not there's a sufficient disclosure. [00:15:31] Speaker 01: Right, that's certainly true. [00:15:32] Speaker 01: What are you relying on for the disclosure? [00:15:36] Speaker 03: So there's a number of disclosures along with the expert testimony. [00:15:42] Speaker 03: And I would rely on the disclosure that you pointed to earlier regarding the fastening means. [00:15:51] Speaker 03: There's also the disclosures of the at least one slit, which is on page four of Lewis. [00:15:59] Speaker 01: What do you make of the argument that that's just language that's in the summary of the infection, and that it shouldn't be interpreted to expand [00:16:09] Speaker 01: what the exact embodiments are in the written description? [00:16:13] Speaker 03: I have two responses. [00:16:15] Speaker 03: I think substantial evidence standard does, if the board reads it one way, even if that's not the... it could be another way of read, that substantial evidence supports the board's reading of that. [00:16:28] Speaker 01: And the other answer that I would say is that... What's the substantial evidence that supports the board's reading of that? [00:16:35] Speaker 03: The substantial evidence is the expert testimony that said this is how one ordinary skill in the art would read it. [00:16:43] Speaker 03: The disclosure, the explicit disclosure of pre-assembled couplings, of using multiple segments for couplings, of using multiple different fastening means for couplings, and I would also point you to two other points where sort of in the [00:17:05] Speaker 03: Invention summary in the end, you could almost say on 2545, when they're talking about the invention, they're saying that it can be assembled on the pipes without any dismantling. [00:17:15] Speaker 03: So that's on 2545 16 to 21. [00:17:22] Speaker 03: The other side is trying to tie that language to a specific embodiment, but that language is just generally talking about the coupling and joint as described herein permits [00:17:33] Speaker 03: you know, misalignment, and then it says that... What does it say as described herein? [00:17:37] Speaker 01: I'm looking at page 12. [00:17:38] Speaker 03: Oh, on 16, the coupling and joint as, oh, herein described, sorry. [00:17:42] Speaker 01: Okay, on page 16. [00:17:44] Speaker 03: Sorry, no, page 12, but 2545 of the appendix, line 16. [00:17:49] Speaker 01: Okay, thank you. [00:17:49] Speaker 03: So it says the coupling and joint as herein described, and then it says, you know, the coupling may be easily [00:17:55] Speaker 03: and quickly fitted to pipe ends and can be assembled without any dismantling. [00:17:59] Speaker 03: And they try and say that the dismantling has a different meaning, but the clear words say without any dismantling. [00:18:05] Speaker 03: And that's fine. [00:18:06] Speaker 01: And you're relying on the as described herein. [00:18:09] Speaker 01: It's not saying as described in figures 6 through 10 or 1 through 3. [00:18:13] Speaker 01: Correct. [00:18:13] Speaker 01: It says as described herein. [00:18:15] Speaker 03: And then if we look further up on that page on lines 6 through 8, it also talks about the rib [00:18:26] Speaker 03: where it would be making contact with the ribs. [00:18:29] Speaker 03: So that indicates that you would have axillary insertion. [00:18:32] Speaker 03: And that, so the rib disclosure leads one to believe that there is axillary insertion in the couplings that are described in the application. [00:18:51] Speaker 01: And do you also have the view, besides the expert testimony that you're referring to, does the PTO also have the view that the statements in the summary and the invention [00:19:05] Speaker 01: Otherwise, because this is a mechanical invention, that it would be just proper as a legal matter to interpret those sentences as being disclosures themselves, as opposed to interpreting this reference as being limited to the specific embodiments and the figures? [00:19:24] Speaker 03: I would agree that the way that the other side is reading this reference is unnecessarily limiting it. [00:19:31] Speaker 03: There's nothing in that invention disclosure that is limiting it. [00:19:34] Speaker 03: Here you have saying that you can use axle insertion. [00:19:39] Speaker 03: You can use different fastening means. [00:19:41] Speaker 03: You can use two couplings. [00:19:45] Speaker 03: And with the Ken Metal and also the blue Calypso case, both of those cases support the reading that if you have these explicit disclosures of these different features, an anticipation rejection is proper. [00:19:58] Speaker 01: There was also a point being made about [00:20:01] Speaker 01: the minimal distance limitation being met and maybe some modifications to figure 3A. [00:20:07] Speaker 01: Could you address that, please? [00:20:08] Speaker 03: Sure. [00:20:10] Speaker 03: So the minimum separation distance, if we look at what the claim actually says, it says that the segments are attached to another at both ends, supporting segments in space relation sufficient to permit insertion [00:20:29] Speaker 03: of n portions of said pipe elements into said central space. [00:20:33] Speaker 03: So reading that, if a coupling is allowing for axially insertion, it will have space relations sufficient to permit that axially insertion. [00:20:43] Speaker 03: So it's [00:20:44] Speaker 03: not as narrowing of a limitation as the other side is arguing. [00:20:48] Speaker 03: And that's simply what the board said. [00:20:49] Speaker 03: The board didn't read that space relation out or anything like that. [00:20:52] Speaker 03: They just said that minimum separation distance, and this claim of instruction issue was not before the board. [00:20:59] Speaker 03: They did not ask for construction of these claims or that limitation. [00:21:04] Speaker 03: This was a [00:21:07] Speaker 03: argument that was made in the context of if Lewis teaches it and so the that limitation if you have axial insertion you would have enough distance to have it be allowed and Lewis clearly teaches axial insertion so there is not a minimum separation distance I mean that language is not in the specification at all they don't you know list a specific [00:21:32] Speaker 03: separation distance that is necessary and the board found that that claim was met by the disclosure of the fact that Lewis would loosen the nuts and bolts. [00:21:43] Speaker 01: Is the claim language that they're relying on, just to make sure I'm following, is it the language in space relation sufficient to permit insertion? [00:21:51] Speaker 03: That is what they said requires a minimum separation distance. [00:21:58] Speaker 03: If we look at their specification, they do talk about a variety of ways, like using the angle of the arcuate surfaces and other ways to get there, but that's not in that claim. [00:22:09] Speaker 03: So this argument is really about the Lewis teaching that limitation and not a new claim construction issue. [00:22:20] Speaker 03: Is there any further questions? [00:22:34] Speaker 00: Thank you, Your Honour. [00:22:39] Speaker 00: Real quick, the language my colleague here cited about the coupling and joint described herein and without dismantling, well, that's true for figures one through three that you can insert it in there because it doesn't get dismantled. [00:22:52] Speaker 00: But as our point was, that's a single segment coupling. [00:22:54] Speaker 00: With figure 6 through 10, there is axial insertion if you disassemble the ends and open it up. [00:23:01] Speaker 00: And that's what that rib is there for on figure 11 is for locating it. [00:23:05] Speaker 00: I don't think anyone's disputed that you can put a pipe end into the figure 6 through 10 embodiment when it's opened up. [00:23:13] Speaker 00: And the without any dismantling is because there's a slit in the gasket. [00:23:17] Speaker 00: And it can stay in the segment when you open it up. [00:23:20] Speaker 00: But figure 6 through 10, [00:23:21] Speaker 00: the fasteners have to come off. [00:23:23] Speaker 00: And that's a limitation that's required by my client's claim, that that's not present in that embodiment. [00:23:28] Speaker 00: So that language generalistically describes the embodiments in Lewis, but it doesn't say that you can pull this off while the fasteners are together. [00:23:37] Speaker 00: And that really does get to that minimum separation distance in a sense is really what's missing is if you take a look at pages 37 [00:23:45] Speaker 00: 3,097 and 3,098 of that appendix and when you compare those side by side we challenge that Lewis isn't capable of getting far enough apart while the ends are connected minimum separation distance which is the sufficient language to get the pipe in there they had to change the design and that's an obviousness question and if it's an obviousness question [00:24:08] Speaker 00: That's not something we're able to decide because it's not part of the scope of the proceeding. [00:24:12] Speaker 00: And we would have had different discovery, different arguments, and different presentation at the board below. [00:24:17] Speaker 00: We didn't get to the deep end. [00:24:19] Speaker 00: Well, I guess I'm out of time. [00:24:22] Speaker 00: Thank you very much. [00:24:25] Speaker 00: Great. [00:24:26] Speaker 00: Thank you. [00:24:26] Speaker 02: Thank you. [00:24:27] Speaker 02: The case is submitted.