[00:00:29] Speaker 00: Okay. [00:00:30] Speaker 00: The next argued case is number 18. [00:00:34] Speaker 00: That's 1991. [00:00:35] Speaker 00: Auto Drill Incorporated against National Oil Run by Mr. Henry. [00:00:41] Speaker 02: Good morning, Your Honors. [00:00:43] Speaker 02: David Henry on behalf of Auto Drill. [00:00:45] Speaker 02: May it please the court. [00:00:49] Speaker 02: In view of the evidence of record, in view of the clear and convincing evidentiary standard, which is required to be met if the [00:01:00] Speaker 02: claims at issue were to be found invalid on indefiniteness, we would respectfully argue that this case turns on two questions with respect to two of the three elements that were found to be indefinite. [00:01:16] Speaker 02: The question is, does it remain the law that an algorithm for computer-implemented 112f element can be stated in prose as opposed to code or [00:01:30] Speaker 02: some of the other firms. [00:01:32] Speaker 02: Again, in view of the evidence, that really boils down to the question here. [00:01:36] Speaker 02: The second question relating to the third element is, is it still the law that for a 112f element, an algorithm is only required when the corresponding function is to be carried out by a general purpose computer [00:01:54] Speaker 02: And the corresponding function is not something that that general purpose computer could carry out without special programming. [00:02:02] Speaker 02: Now if we might turn to the first two elements in that context. [00:02:05] Speaker 02: Can I just make sure I understand this? [00:02:08] Speaker 04: There are three different terms that the district court found indefinite. [00:02:11] Speaker 04: You have to get us to reverse on all three for you to prevail. [00:02:15] Speaker 04: If we affirm on any of them the patents invalid. [00:02:18] Speaker 02: That is correct. [00:02:22] Speaker 02: The first two elements [00:02:23] Speaker 02: are basically construed as the same. [00:02:27] Speaker 02: They are electronic bit weight comparison means in claim one and computer data and program processing means in claim three. [00:02:35] Speaker 02: Now, the district court's ruling, we respectfully urge, can only be sustained if you essentially ignore virtually all of the evidence of record here. [00:02:51] Speaker 02: And [00:02:52] Speaker 02: My colleague at the Martman hearing at one point, we've cited this in our brief, said, well, experts are something like jukeboxes. [00:02:59] Speaker 02: You put in a coin and you hear the song you want. [00:03:03] Speaker 02: I think in that context, even if we take that as true, if we work on that premise, perhaps it's most persuasive to look at what their expert said, their expert that looked at the very same elements. [00:03:18] Speaker 03: So, Counselor, is it your position that the specific [00:03:21] Speaker 03: dispensification discloses an algorithm for the second step, generating a proportionate signal. [00:03:31] Speaker 02: Our position, Your Honor, is that there is an algorithm for the corresponding function of electronic bit weight comparison. [00:03:38] Speaker 03: Of generating a proportionate signal. [00:03:40] Speaker 02: Yes, Your Honor. [00:03:41] Speaker 02: What is that? [00:03:43] Speaker 02: In the same sections, which are recognized by all of the experts who have opined on this issue, [00:03:50] Speaker 02: in the Ray patent. [00:03:52] Speaker 02: And this was quoted by their expert, Portia, at appendix 6404 through 6406. [00:03:57] Speaker 02: And in turn, he quotes the 172 patent columns 5, 39, through 44, and 6, column 6, lines 6 through 19. [00:04:09] Speaker 02: And Mr. Portia says in this quote, again, at appendix 6404, I have reviewed the term electronic [00:04:18] Speaker 02: bit weight comparison means, and he goes on to recite the corresponding function. [00:04:23] Speaker 02: And then toward the end of this quote, a posita would understand that a PLC with an algorithm that adjusts the output range of the PLC from a subtraction and goes on to recite the function here as disclosed in Ray. [00:04:41] Speaker 02: So he's saying an algorithm that does the corresponding function as disclosed in Ray [00:04:47] Speaker 02: and identifies the passages I just mentioned. [00:04:49] Speaker 03: Are you reading from 6404? [00:04:53] Speaker 02: Yes, your honor. [00:04:55] Speaker 02: Where are you, in the middle of that? [00:04:56] Speaker 02: In the quote by Mr. Portia. [00:05:03] Speaker 02: When he is, it begins, I have reviewed the term electronic bit weight comparison means, and then goes on to, again, to recite it. [00:05:10] Speaker 02: And then says an algorithm, specifically says an algorithm as found in [00:05:17] Speaker 02: the Ray 172 patent and discloses column in line, column 5, 39 through 44, 6, 6 through 19. [00:05:26] Speaker 02: So he says there's an algorithm. [00:05:27] Speaker 02: You know, this is their positive. [00:05:29] Speaker 02: This is their expert. [00:05:31] Speaker 02: As you see in our briefing, Mr. Stewart and Mr. Miller, our experts, auto drills experts, found and recited the same language. [00:05:41] Speaker 02: Now, there was a little bit of variance in the line, but they pointed to the same thing. [00:05:45] Speaker 02: Again, finding that there was an algorithm. [00:05:48] Speaker 02: Turning to the computer data and program. [00:05:51] Speaker 03: Let me get to where at least I have difficulty with your position. [00:05:57] Speaker 03: It seems to me that it could be argued that the specification does disclose in prose an algorithm for the first step, because it describes how the two weight values are to be compared. [00:06:11] Speaker 03: but not for the generating a proportionate single. [00:06:15] Speaker 03: I don't see, and you say that there's an algorithm, but show that to me. [00:06:20] Speaker 03: Where is that? [00:06:21] Speaker 02: In the 172 patent, in the passages, again, Columns 5, 39 through 44, and 6, 6 through 19. [00:06:31] Speaker 03: Column 5? [00:06:32] Speaker 02: I'm sorry. [00:06:33] Speaker 03: Column 5? [00:06:34] Speaker 02: Yes, Your Honor. [00:06:35] Speaker 02: And the other passages as well, six, six through 19. [00:06:39] Speaker 02: What you'll see in there is Mr. Ray sets out... Where in column five? [00:06:43] Speaker 02: What paragraph? [00:06:46] Speaker 02: Well, beginning lines, column, line 39, Your Honor. [00:06:51] Speaker 02: Line 39. [00:06:52] Speaker 02: And through 44, and then again picking up six, column six, six through 19 are the passages cited by Mr. Portia. [00:07:02] Speaker 02: And in those sections, you will see that [00:07:05] Speaker 02: set out or numerical ranges that are compared, that are processed, that talk about this proportional signal that is generated. [00:07:13] Speaker 02: It goes out to generate the breaking signal. [00:07:18] Speaker 02: And so it is a very simple process. [00:07:21] Speaker 02: You have a user set point, what you want. [00:07:25] Speaker 02: You're reading what comes in. [00:07:26] Speaker 02: And out of that, you have a signal that controls the break until those match up, in essence. [00:07:35] Speaker 04: Now, in... What does it say how it does that? [00:07:39] Speaker 04: I mean, to me, all you're saying is really broad functional language, re-describing the function, which isn't sufficient when you have a means plus function. [00:07:49] Speaker 02: Well, Your Honor, if we had said, for example, and this would be along the lines of aristocrat, you know, merely reciting the function, of course, is prohibited functional language. [00:07:58] Speaker 02: If we had said, calculate a signal for the correct brake pressure, well, that certainly would be [00:08:05] Speaker 02: merely functional language. [00:08:06] Speaker 02: But instead we say, you take this information in, what the user is determining the desired weight on bit, you compare it with what the measured from the sensor, what the actual weight on bit is, and you generate a signal that tells the, essentially the brake to go up or down to zero in on that. [00:08:28] Speaker 02: And those are functions. [00:08:29] Speaker 03: How does that happen? [00:08:30] Speaker 03: How do you generate a signal that tells the brake [00:08:32] Speaker 03: to go up and down or that slow down or to go up or to speed up? [00:08:39] Speaker 02: Well, that has to do with the parameters discussed by Ray in the patent when it talks about the output signals. [00:08:45] Speaker 02: Where in the patent? [00:08:47] Speaker 02: In the columns and lines I recited earlier. [00:08:50] Speaker 03: I don't see it, sir. [00:08:50] Speaker 03: You're going to have to be more specific. [00:08:52] Speaker 04: What formula is used to generate that signal and where is it? [00:08:56] Speaker 02: Well, we don't have a formula in there. [00:08:59] Speaker 02: I mean, there are [00:09:01] Speaker 02: there are computations recited in the patent, but in terms of the formula, this is a process, a very simple... It doesn't matter how simple it is. [00:09:10] Speaker 04: The fact that a skilled artisan can look at this and say, anybody can figure out any number of different ways to do that, isn't enough when it's a means plus function claim. [00:09:20] Speaker 04: If it's a means plus function claim, you have to actually put in specific structure, in this case, algorithms that explain [00:09:28] Speaker 02: the formula you use you can't rely on functional language and say this is simple people can do it isn't that a case of yes your honor but we we would argue that because of the simplicity of this what is the user input what is the signal we want and you're dealing with a computer known in the art to achieve the end result sending out this break control signal and that is precisely what mr portion their expert as well as ours as well found is like we see [00:09:57] Speaker 02: Here is an algorithm. [00:09:59] Speaker 02: This would achieve this function. [00:10:00] Speaker 02: They admit that on the record. [00:10:03] Speaker 02: Their own expert came to that conclusion, as did ours. [00:10:10] Speaker 02: Again, we did not say, nowhere does the claim say or the corresponding function in the specification say, figure this out. [00:10:18] Speaker 02: Well, on what basis? [00:10:20] Speaker 03: At the end of the day, the court disagreed. [00:10:22] Speaker 03: and that's what we're reviewing. [00:10:24] Speaker 03: We're reviewing the course judgment. [00:10:25] Speaker 02: Yes, Your Honor. [00:10:26] Speaker 02: And in a clear and convincing, I can't emphasize this enough, in a clear and convincing evidentiary standard, how can we say, respectfully, that clear and convincing evidence is to the effect that there is no algorithm when every single expert... You can't point to it. [00:10:44] Speaker 03: What is it? [00:10:45] Speaker 02: Well, it's the language we just talked about. [00:10:47] Speaker 02: It says, [00:10:48] Speaker 02: It describes, you take the input signal from the sensor, you take the user input, you generate the signal, and send it out to the brake control, and this is something that these PLCs, and this is also in the record, these PLCs, they're able to do that. [00:11:07] Speaker 02: And so, no, we don't have computer code, we don't have flow charts, but our understanding of the law of this core... I wanted to ask you, because I've long been troubled by [00:11:17] Speaker 00: in fact how much code or whatever needs to be included. [00:11:23] Speaker 00: What in your view would have been and it does look as if based on how our case law has evolved, this is perhaps a colorable compliance, what would have been from the viewpoint of the technology the next step in disclosure? [00:11:43] Speaker 00: Is it the code or the actual code or is there some [00:11:47] Speaker 00: intermediate path that might provide more information to fulfill the purpose of patent switches to teach the technology that you have developed. [00:12:01] Speaker 02: Your honor, I believe, and this is consistent with the testimony that we've quoted in the record, that the next step would have been simply to translate what was described and what was recognized, including by their expert as an algorithm, into code for this PLC, which again is a [00:12:16] Speaker 02: is an industry-used computer, somewhat special purpose, but still programmable. [00:12:21] Speaker 02: Code would be the next step, Your Honor, we would argue. [00:12:26] Speaker 00: That's my sense. [00:12:27] Speaker 00: I have to tell you that's my sense. [00:12:29] Speaker 00: But the code has long ago been set aside as something that a capable programmer, it might take a long time. [00:12:38] Speaker 00: It might take quite a team of programmers. [00:12:41] Speaker 00: But it's straightforward. [00:12:42] Speaker 00: There's no invention in it. [00:12:44] Speaker 00: It's just filling out the code. [00:12:46] Speaker 00: But somehow, without that, it does seem inordinately generalized. [00:12:53] Speaker 02: Well, Your Honor, if the... Here's the question I have. [00:12:58] Speaker 02: Yes, Your Honor. [00:12:59] Speaker 04: You have the comparison stuff. [00:13:01] Speaker 04: That seems fairly simple. [00:13:03] Speaker 04: There's a number. [00:13:04] Speaker 04: You compare it to another number. [00:13:05] Speaker 02: Yes. [00:13:06] Speaker 04: But what do you do with that comparison to generate a signal? [00:13:11] Speaker 02: Well, if the... [00:13:13] Speaker 04: Basically, and this is very straightforward, I guess that's why this seems so simple, but if the... It may seem simple to you, it doesn't seem simple to me, and I don't see anything in that language that tells me how you get from the comparison to the signal. [00:13:29] Speaker 04: Well, the signal, Your Honor, goes to... What steps do you take to generate the signal based on the comparison? [00:13:34] Speaker 02: Well, it's, at least in this context, relatively simple. [00:13:39] Speaker 02: You have a set point. [00:13:40] Speaker 04: You keep saying that. [00:13:40] Speaker 02: OK. [00:13:41] Speaker 04: Quit saying it's simple and just tell me what the steps are. [00:13:42] Speaker 02: OK. [00:13:43] Speaker 02: The steps are the user inputs, I want 10,000 pounds weight on bit pressure. [00:13:50] Speaker 02: The sensor reads that it's 12,000 pounds. [00:13:54] Speaker 02: Then the PLC sends a signal out that says reduce the weight on bit to where until it reaches 10,000. [00:14:04] Speaker 02: If, on the other hand, the measured is 8,000, send out a signal. [00:14:08] Speaker 02: that takes it back up to 10. [00:14:10] Speaker 02: It's a very simple, are we too high? [00:14:12] Speaker 02: Are we too low? [00:14:14] Speaker 04: Is that in this claim? [00:14:16] Speaker 04: Or I know it's simple, but is it in the claim? [00:14:19] Speaker 04: It sounds like you could have done a simple flow torque that says, if low, increase pressure. [00:14:24] Speaker 04: If high, decrease pressure. [00:14:26] Speaker 04: But I didn't see that in the claim language. [00:14:28] Speaker 04: Or in the specification, where does it say those exact steps? [00:14:32] Speaker 02: Well, when it describes [00:14:34] Speaker 02: in the language quoted that we've quoted before, the columns quoted by Mr. Portia, it describes exactly that. [00:14:43] Speaker 04: And we go on to... Where does it say if the pressure is too high, lower it, and if the pressure is too low, raise it? [00:14:52] Speaker 02: And that has to do with the language where the numeral, the output signal for the braking control, I believe it's like 50-40... [00:15:12] Speaker 02: Your Honor, I apologize that my copy of my patent did not get in here. [00:15:17] Speaker 02: I sincerely apologize. [00:15:19] Speaker 02: Thank you, Your Honor. [00:15:22] Speaker 02: Thank you so much. [00:15:26] Speaker 02: Counselor, you don't have a copy of your patent? [00:15:30] Speaker 02: It didn't come out through the printing service. [00:15:32] Speaker 02: I sincerely apologize, Your Honor. [00:15:36] Speaker 04: This happens over and over again. [00:15:38] Speaker 04: This is the second time that happened to me this week. [00:15:40] Speaker 04: that attorneys don't bring the record with them so that they can answer questions. [00:15:44] Speaker 04: You've been here before. [00:15:45] Speaker 04: I don't understand why you don't have the whole record in front of you, so you can answer our questions. [00:15:51] Speaker 02: I apologize, Your Honor. [00:15:52] Speaker 02: It's column six, beginning at lines 28. [00:16:00] Speaker 02: And here we talk about the examples, just as I gave, or analogous to I gave. [00:16:05] Speaker 02: And it talks about the output, this 4095 output signal. [00:16:11] Speaker 02: And then it goes on to describe, again, more or less along the lines I was just describing, if the weight is too high, you send a signal to correct it. [00:16:19] Speaker 02: If it's too low, you send a signal to correct it. [00:16:21] Speaker 02: And this 4095 is an understood method of signals in this context. [00:16:29] Speaker 02: So it is in that language. [00:16:33] Speaker 02: And actually, even before that, if you look at column six, line 20, [00:16:39] Speaker 02: the precise management of RPM of electric motor 82. [00:16:42] Speaker 02: And it goes on to describe the set points and the signal out. [00:16:47] Speaker 02: And we're describing what people in the art understood to be. [00:16:52] Speaker 02: I'm sorry, the algorithm. [00:16:56] Speaker 02: I have not gotten to my second signal input means. [00:17:01] Speaker 02: Perhaps I should. [00:17:02] Speaker 00: Well, you can look forward and bring it forward in your rebuttal. [00:17:05] Speaker 00: Let's hear from the other side. [00:17:06] Speaker 02: OK, thank you, Your Honor. [00:17:15] Speaker 00: Thank you. [00:17:18] Speaker 01: May it please the court, Your Honors. [00:17:19] Speaker 04: Could you go right to what he just showed us on column 6, I guess, lines roughly 28 to 40, where he's talking about these different numbers and stuff? [00:17:33] Speaker 01: Yes, Your Honor. [00:17:34] Speaker 04: It sounds to me that that's just an example of how this can operate. [00:17:38] Speaker 04: It's not actually an algorithm, but why isn't that enough? [00:17:42] Speaker 04: suggestion that all you do is compare these numbers and go up or down. [00:17:46] Speaker 01: Yes, Your Honor, if I may give you an example. [00:17:48] Speaker 01: In Houston we hate traffic and we always joke around we need a car that can fly over traffic. [00:17:55] Speaker 01: So if you take a car and you want a patent on it and you say well we are going to program this car to fly from 10 feet to 100 feet and it's going to get us all the way to work and we go try to get a patent on it. [00:18:08] Speaker 01: You can't get a patent on that. [00:18:10] Speaker 01: And the reason you can't get a patent on that is because you haven't possessed an invention. [00:18:14] Speaker 01: You actually haven't designed something. [00:18:15] Speaker 01: You can't describe something you want achieved in the real world and have that satisfied. [00:18:22] Speaker 04: And it sounds like you have that example in your pocket. [00:18:25] Speaker 04: What I really want to know is specifically these lines in column six, why that that's not a sufficient algorithm. [00:18:34] Speaker 04: If it really is this simple dimension to say, [00:18:37] Speaker 04: Compare the two numbers and if it's too high, adjust down. [00:18:40] Speaker 04: If it's too low, adjust up. [00:18:43] Speaker 04: Maybe that's what this says. [00:18:44] Speaker 04: I'm not sure that I read it as saying that or am confident to say that, but specifically, can you respond to his point on that? [00:18:53] Speaker 01: Yes, your honor. [00:18:54] Speaker 01: If you go up a little bit on column six, if you go to column six, line 22, 23, it talks about how these certain functionalities they want to achieve. [00:19:04] Speaker 01: will be products of the software or firmware they're using. [00:19:08] Speaker 01: Sure, I get it. [00:19:08] Speaker 04: He pointed us to that. [00:19:09] Speaker 04: That clearly is not enough. [00:19:10] Speaker 04: That's just complete functional claiming. [00:19:13] Speaker 04: We have software that's going to do the desired result without actually putting in an algorithm for the software or some kind of flow chart. [00:19:19] Speaker 04: That's not good enough. [00:19:20] Speaker 04: But again, following that is a specific example of how that software might work. [00:19:24] Speaker 04: Is it not? [00:19:26] Speaker 01: No, it is not, Your Honor. [00:19:27] Speaker 01: Here, in the context of an automatic driller, [00:19:32] Speaker 01: The signal from 0 to 495 that they're talking about, they don't define that signal and they don't tell us how to get to that signal. [00:19:40] Speaker 01: In an automatic driller, you're going to have a 4 to 20 milliamp signal. [00:19:44] Speaker 01: And a milliamp signal is going to be a tiny, tiny little bitty signal. [00:19:48] Speaker 01: And in the end of the system, you have to have a signal that's strong enough in power to turn an electric motor to get it working. [00:19:57] Speaker 01: And we have no idea how this tiny, tiny little bitty milliamp signal [00:20:01] Speaker 01: gets to here and saying describing something happening in the field an automatic driller is drilling at this rate and changes to this rate change at this rate that doesn't tell us give us the step-by-step way to do it on a computer that's one thing and then another thing your honor if you're not supposed to and that's the medical instrument instrumentation case you're not supposed to take the knowledge of a pasita and try to figure it out but if you want to take that step [00:20:30] Speaker 01: and look at this just to get it in context. [00:20:34] Speaker 01: Their automatic driller claims, both their claims, require that it be capable of going both up and down, pulling the drill stem up and down. [00:20:43] Speaker 01: And in this particular portion, all they're talking about is pulling the brake. [00:20:48] Speaker 01: So not only is it not a sufficient example to tell us how to do it on a computer, if we were to try to use our expertise, our posita knowledge, and try to discern what the heck it means [00:21:00] Speaker 01: It is only half the story. [00:21:04] Speaker 00: You really are raising the question. [00:21:07] Speaker 00: I wonder, was there an issue of claim breadth during this litigation, or was it entirely the points we're discussing here? [00:21:17] Speaker 01: Your Honor, we went through a comprehensive Martman hearing and construed, don't quote me on this, I think eight or nine different terms, but only the indefinite terms are part of [00:21:30] Speaker 01: this appeal. [00:21:31] Speaker 01: Did I answer your question correctly? [00:21:33] Speaker 00: Well, it answers the question I asked you. [00:21:36] Speaker 00: The question which comes to mind is in fact the broader question that if having computerized a system that was in the past done manually and through experience and instinct and all of the other decades and generations that have gone into [00:21:59] Speaker 00: these procedures and now we have the computer that automatically tells us when the bit's too heavy and tells us some other things that were previously discerned by experience. [00:22:17] Speaker 00: It seems to me that on the one hand this is a significant contribution but on the other hand how broad is one fairly entitled to [00:22:30] Speaker 00: claim the breadth of the contribution. [00:22:33] Speaker 00: And in looking at it, those thoughts kept arising. [00:22:39] Speaker 00: It looked to me as if it is a broad statement of let's do by computer what we've been doing for centuries. [00:22:48] Speaker 00: At the same time, that's not easy to do. [00:22:52] Speaker 00: We know it's not easy, and it also comes [00:22:58] Speaker 00: clearly through that there were significant contributions of expertise. [00:23:04] Speaker 00: Where can we draw a reasonable and fair line? [00:23:09] Speaker 00: Because it does seem as if they've made an important contribution. [00:23:14] Speaker 01: Yes, Your Honor. [00:23:14] Speaker 01: And there was a big Supreme Court case on this. [00:23:17] Speaker 01: I cannot think of it off the top of my head. [00:23:20] Speaker 01: But things have been done mechanically for so many years. [00:23:24] Speaker 01: And when the computer technology revolution hit, all these people came in and said, hey, we want a patent on the way it used to be done mechanically. [00:23:31] Speaker 01: We want to now do it computer. [00:23:33] Speaker 01: And we want a patent on it that way. [00:23:35] Speaker 01: We'll use the means language. [00:23:36] Speaker 01: And that's sort of where this algorithm requirement came out. [00:23:40] Speaker 01: And it's a very strict one, because it's too easy to say, I want to take what's been done, and I just want to add a computer element to it. [00:23:49] Speaker 01: That's too easy to do. [00:23:50] Speaker 01: You don't deserve patent protection. [00:23:52] Speaker 01: The reason of 112. [00:23:54] Speaker 01: is to show you possess an invention. [00:23:56] Speaker 01: You actually came up with it. [00:23:58] Speaker 01: So when it comes to the algorithm requirement, you have to be able to read. [00:24:03] Speaker 01: You have to have a step-by-step guide on how to achieve what they want done on a computer. [00:24:08] Speaker 01: You have to be able to achieve that on a computer. [00:24:11] Speaker 01: You can't describe functional language. [00:24:15] Speaker 01: But it doesn't have to be code, right? [00:24:17] Speaker 01: It can be pros. [00:24:19] Speaker 01: It can be pros, your honor. [00:24:20] Speaker 01: It can definitely be pros. [00:24:21] Speaker 01: It can be flow charts. [00:24:22] Speaker 01: It can be mathematical formula. [00:24:24] Speaker 01: But that process has to be pretty dang specific. [00:24:26] Speaker 01: It needs to get us from the beginning to the end and have step by step way where we can sit down on a computer and design it. [00:24:35] Speaker 01: And you guys and gals are well familiar that that is the trade off for getting a patent. [00:24:42] Speaker 01: You have to tell everyone else what you've discovered. [00:24:45] Speaker 01: And here it's very obvious that they did not have a way to get this done on a computer. [00:24:50] Speaker 01: So they sort of use this functional language [00:24:53] Speaker 01: of what they wanted to achieve, and that's not sufficient on the law. [00:24:58] Speaker 00: They say what they want to achieve. [00:25:00] Speaker 00: I do have trouble finding some intermediate pros description short of code. [00:25:08] Speaker 01: I agree with you, Your Honor. [00:25:09] Speaker 01: The pros, the NOAA systems case says you can use pros, but there is very little case law out there that's found pros as sufficient. [00:25:19] Speaker 01: And if it is, if I were writing the patent, [00:25:22] Speaker 01: My prose would be in the form of an executable computer program. [00:25:25] Speaker 01: I would include the actual program we were using. [00:25:28] Speaker 00: You would have written it the same way, right? [00:25:31] Speaker 01: Yes. [00:25:31] Speaker 01: Yes, your honor. [00:25:34] Speaker 01: Except you would have put code in it. [00:25:36] Speaker 01: Yes, your honor. [00:25:36] Speaker 01: Well, code with written prose English language, it would be written out in the code exam. [00:25:42] Speaker 04: You don't have to write the code. [00:25:44] Speaker 04: If you put every single step that the computer is going to perform in prose, [00:25:49] Speaker 04: That's a sufficient algorithm. [00:25:50] Speaker 01: Your honor, I think that would be sufficient. [00:25:53] Speaker 01: But your honor, I think in this case, we just have the functional language like we talked about. [00:25:57] Speaker 01: So I don't think they're going to get there. [00:25:59] Speaker 01: One point I really wanted to hit home that opposing counsel made during his is he said that the experts agree with him. [00:26:11] Speaker 01: And I disagree with his assertion. [00:26:13] Speaker 01: I think all the experts agreed with us. [00:26:16] Speaker 01: And if you look at page 18, [00:26:19] Speaker 01: on our brief. [00:26:21] Speaker 01: We go through the details. [00:26:36] Speaker 01: Your Honor, 18 of our brief, the first two paragraphs that are indented in, that is actually their expert, Michael Stewart, and he specifically said, [00:26:48] Speaker 01: He would not be able to look at this and see an algorithm. [00:26:52] Speaker 01: He would have to hire someone to develop it for him. [00:26:56] Speaker 00: So page 18 says readily obtained in the field? [00:27:00] Speaker 01: Yes, Your Honor, where that's underlined. [00:27:02] Speaker 01: Here he's saying, I can't read this and figure out from these pages. [00:27:08] Speaker 01: I would have to use my knowledge readily obtained in the field. [00:27:11] Speaker 01: And then if you read the next paragraph from their expert, [00:27:14] Speaker 01: He says, to actually get this invention to work, I would have to develop an algorithm to perform the release of drill string. [00:27:24] Speaker 00: A programmer, a person who, programmers, you just go out and hire a programmer. [00:27:31] Speaker 00: Where is the inventive step? [00:27:36] Speaker 01: Exactly, Your Honor. [00:27:37] Speaker 01: There are experts saying, we don't have anything here that we need. [00:27:41] Speaker 01: We have to go out and hire someone. [00:27:43] Speaker 01: to actually develop the algorithm to perform this thing. [00:27:47] Speaker 00: No, it was just an ordinary programmer. [00:27:51] Speaker 00: It has been the culture of the way this jurisprudence has developed. [00:27:58] Speaker 00: You describe in prose some complex, performing some complex function. [00:28:04] Speaker 00: You turn it over to the programmers who then carry it out. [00:28:09] Speaker 00: Well, Your Honor, not just in this patent, but in hundreds or thousands now are written the same way. [00:28:16] Speaker 01: Well, Your Honor, the way that I read the testimony is that he as the person of ordinary skill in the arts should at least be able to develop the beginning portions of a program or at least a working understanding of how to get from, as we talked about, the four to 20 milliamp signal all the way over here to the power signal. [00:28:36] Speaker 01: and figure out a way to drive the bed up and down and none of those details are there. [00:28:40] Speaker 01: He's saying he would have to hire someone to sort of fill in the blanks and do those details. [00:28:45] Speaker 00: That's long been the law that you can hire someone to conduct routine operations or even to conduct non-routine operations at your instruction as to this is where we want to go. [00:28:59] Speaker 01: Yes, Your Honor, but with what's in this patent right here, there's not [00:29:04] Speaker 01: sufficient enough basis to provide those instructions to someone for them to be able to design an algorithm. [00:29:11] Speaker 00: I know, to say, if you've got too much weight on the bit, reduce it. [00:29:15] Speaker 00: What more do you need? [00:29:16] Speaker 01: Well, the programmer may be able to come up with a program, Your Honor, but that was never included. [00:29:23] Speaker 01: That was never done for this patent. [00:29:25] Speaker 01: And the program that the programmer may come up with, that was never included in this patent. [00:29:31] Speaker 00: Well, if that's not [00:29:33] Speaker 00: a step that's included in the claim, then it doesn't have to be. [00:29:36] Speaker 01: The claims do require that these computer-implemented means plus functions terms, they have to be required to raise and lower the drill bit. [00:29:48] Speaker 00: I don't know. [00:29:48] Speaker 00: This is a larger problem, perhaps, in this case. [00:29:52] Speaker 00: But I still don't know the dividing line between a prose description, such as here, reduce the weight, [00:30:03] Speaker 00: providing several million or billion ones and zeros? [00:30:06] Speaker 01: Your Honor, I would respectfully suggest that reduce the weight and drive the drill stem up and down. [00:30:13] Speaker 01: Those are what you call wish list objectives. [00:30:17] Speaker 01: That's what I would like this invention to achieve. [00:30:22] Speaker 01: That should not, that's the functional language that we know does not satisfy an algorithm. [00:30:28] Speaker 01: Now, if we take it a step back further and the pros you're interested in, [00:30:32] Speaker 01: If you want pros sufficient enough to raise and lower the geral sting, you should have examples of we need to start with this 4 to 20 milliamp signal. [00:30:42] Speaker 01: This signal needs to come into a certain type of computer program. [00:30:46] Speaker 01: The program uses a certain type of operating system. [00:30:50] Speaker 01: That operating system knows to do the subtraction. [00:30:53] Speaker 01: From there it needs to receive this input, that output, and based on what's read at that point, [00:31:00] Speaker 01: it will turn it to voltage. [00:31:01] Speaker 01: After it's turned to voltage, it can then go through a VFD, which then turns it to power. [00:31:06] Speaker 01: Are you now going to run that in a loop? [00:31:08] Speaker 01: Are you doing it in an isolated instance? [00:31:11] Speaker 01: But the pros would need to be so specific that a person could sit down and write the actual computer program to do. [00:31:19] Speaker 00: But as you know, that hasn't been the law. [00:31:22] Speaker 00: Just draw a few boxes, string them together with a line, and there's your entire description [00:31:30] Speaker 00: of the computerized system. [00:31:34] Speaker 00: I'm troubled by that. [00:31:36] Speaker 00: At the same time, isn't that where we are as far as the law of how specifications are written? [00:31:45] Speaker 01: Your Honor, the NOAA case does allow block diagrams. [00:31:51] Speaker 01: It allows an algorithm requirement to be satisfied by computer code, block diagrams, and also pros. [00:32:00] Speaker 00: It seems to me that the way our law has coped with it, and perhaps in this case as well, is to say just you by computer, what we've all been doing by hand or by some other system is not enough. [00:32:15] Speaker 00: And that criticism perhaps can be made here. [00:32:21] Speaker 00: I didn't see it made. [00:32:23] Speaker 01: Well, yes, Your Honor. [00:32:24] Speaker 01: Here we don't even have the simple block diagram. [00:32:29] Speaker 01: I don't think that portion of the... I see I'm out of time. [00:32:32] Speaker 01: Do you all mind if I keep going to answer the question? [00:32:35] Speaker 00: Let's continue the thought if there's something else you need to tell us. [00:32:40] Speaker 01: Yes, Your Honor. [00:32:41] Speaker 01: Well, the Ray 172 patent doesn't even have the block diagram. [00:32:45] Speaker 01: We don't even have a simple breakout of how to get from the beginning of this thing to the end of this thing. [00:32:50] Speaker 01: And then I wanted to say something briefly about the signal input means. [00:32:55] Speaker 01: If the court wants to hear about that term, but if the court does not, I will [00:32:59] Speaker 01: Sit down. [00:33:01] Speaker 00: Do I do it? [00:33:02] Speaker 00: No. [00:33:03] Speaker 00: Okay. [00:33:04] Speaker 00: Are you okay? [00:33:04] Speaker 00: No. [00:33:04] Speaker 00: We're okay. [00:33:04] Speaker 00: Thank you. [00:33:13] Speaker ?: Okay. [00:33:15] Speaker 02: Mr. Henry. [00:33:15] Speaker 02: Thank you, Your Honor. [00:33:16] Speaker 02: Regarding the experts agreeing or disagreeing with us, I would like to just point you briefly our reference, page 34 through 36 of our appellate's brief. [00:33:29] Speaker 02: There, Mr. Stewart, that my colleague quoted, explained where he used algorithm in two different ways. [00:33:37] Speaker 02: One to refer to the logic set out in the patent itself. [00:33:41] Speaker 02: The other, when he talks about developing an algorithm, that is the code. [00:33:46] Speaker 02: We clarified this summarizing on page 36 of our brief, where he explains, this was in a deposition, explains, I was using the term in two different ways, but the logic [00:33:57] Speaker 02: The logic of what has to happen, that is in there. [00:33:59] Speaker 02: And they clarified that there. [00:34:02] Speaker 02: Now, on signal input means, very briefly, we would respectfully urge that the district court essentially read an element out of the claim in finding that signal input means was merely preferable. [00:34:17] Speaker 02: We would argue that the district court exchanged preferred embodiment with preferred to be there at all. [00:34:24] Speaker 02: Now, in column five of the patent... Did you make this argument in your brief? [00:34:30] Speaker 03: Pardon me? [00:34:31] Speaker 03: Did you make this argument in your brief? [00:34:35] Speaker 02: Yes, Your Honor. [00:34:36] Speaker 02: That essentially the element, it's the part where we discuss that the way the court construed signal input means, it would basically mean a PLC comprising a PLC. [00:34:52] Speaker 02: that essentially reads that element out by saying that it has to be a separate PLC, a computer requiring an algorithm. [00:35:03] Speaker 02: So if you look at the actual description in column five, appendix 144 of the 172 patent, lines 25 through 35, here we describe that you have an analog digital converter. [00:35:20] Speaker 02: We even give an example [00:35:22] Speaker 04: I mean, I think you have a good argument on this issue, but even if we agree with you, you have to get us to agree with you on the other two as well, right? [00:35:30] Speaker 02: Yes, Your Honor. [00:35:31] Speaker 02: Yes, Your Honor. [00:35:32] Speaker 02: And on that point... Which seemed much harder for you. [00:35:37] Speaker 02: Thank you, Your Honor. [00:35:38] Speaker 02: On that point, back to the first two elements. [00:35:43] Speaker 02: Yes, we have pros. [00:35:44] Speaker 02: Yes, it is simplistic. [00:35:46] Speaker 02: Your Honor, Judge Newman, you asked about [00:35:48] Speaker 02: If all we're doing is doing by computer, which has been done forever. [00:35:54] Speaker 02: If that was the only thing in these claims, then frankly, we would have Alice issues. [00:35:59] Speaker 02: But it's not. [00:36:00] Speaker 02: We have a computer taking in sensitive sensor data. [00:36:07] Speaker 02: We have the computer sending out data to a responsive, non-pneumatic motor. [00:36:12] Speaker 02: These are all elements of those claims. [00:36:14] Speaker 02: So it's the integration. [00:36:15] Speaker 02: Certainly, computer is part of it. [00:36:17] Speaker 02: But it's the integration of these features. [00:36:20] Speaker 02: Yes, the calculation is what's been done manually for a long time. [00:36:25] Speaker 02: But you put it all together, and what you have is an incredibly responsive autodrill system that advanced the art tremendously. [00:36:33] Speaker 02: And so the fact that the computer element of it is very simple, that does reflect what was done before. [00:36:40] Speaker 02: Very simple. [00:36:41] Speaker 02: If it's too high, signal will reduce. [00:36:42] Speaker 02: If it's too low, [00:36:43] Speaker 02: send out a signal to raise it. [00:36:45] Speaker 02: And we showed the examples in the specification of at least samples of that. [00:36:51] Speaker 02: But it's the combination. [00:36:52] Speaker 02: So it's not just doing that by computer, which has been done manually before. [00:36:57] Speaker 02: There was a tremendous contribution to the art. [00:37:01] Speaker 02: So, Your Honor, we would urge that, simple as it is, the law allows us [00:37:10] Speaker 02: to, in prose, say, do this, then do this, then do this. [00:37:13] Speaker 02: And we did that. [00:37:15] Speaker 02: We don't have code, admittedly. [00:37:18] Speaker 02: So there's an algorithm there. [00:37:20] Speaker 02: And I would respectfully remind the court, of course you know this, clear and convincing evidence. [00:37:24] Speaker 02: When we have experts, when we have all experts, including theirs, saying, I see an algorithm. [00:37:31] Speaker 02: Here is where it is. [00:37:32] Speaker 02: This carries out that function. [00:37:35] Speaker 02: In fact, Mr. Porsche actually used the term structure. [00:37:38] Speaker 02: I find that this is what carries out that function. [00:37:42] Speaker 02: How can we have clear and convincing evidence of invalidity in the face of that when you look at it at that evidentiary level? [00:37:49] Speaker 02: So we respectfully urge, Your Honor, that you reverse the lower court's finding as to indefiniteness of all three elements and remand this for further proceedings. [00:38:00] Speaker 00: Thank you. [00:38:01] Speaker 00: Thank you, Your Honor. [00:38:01] Speaker 00: The case is taken under submission. [00:38:04] Speaker 00: And that concludes our arguments for this morning.