[00:00:00] Speaker 04: Forum U.S. [00:00:01] Speaker 04: Inc. [00:00:01] Speaker 04: vs. Flow Valve, 18-1765. [00:00:32] Speaker 04: Mr. Peterson, I see that you've reserved two minutes of your time for rebuttal. [00:00:36] Speaker 04: Is that correct? [00:00:37] Speaker 04: Yes. [00:00:37] Speaker 04: Okay, you may begin, sir. [00:00:52] Speaker 01: May it please the court, the question here is how clear an original patent needs to be [00:01:00] Speaker 01: to support reissued claims that have been brought. [00:01:07] Speaker 01: Our answer is that the original patent needs to be clear enough so that a person of ordinary skill in the art can understand that those claims are supported by the original patent. [00:01:20] Speaker 04: Didn't we answer that question in Taurus? [00:01:25] Speaker 01: In a sense, yes, but the court answered it even before that in the Amos case. [00:01:30] Speaker 01: in 1991. [00:01:31] Speaker 01: And at Amos, the court said the task is, it's essentially a factual issue, is whether a person of ordinary skill in the art would understand that the original patent supported their issue claims. [00:01:49] Speaker 01: So here, that was exactly the evidence we offered. [00:01:53] Speaker 01: We offered evidence from a machinist who was a person having skill in the art. [00:02:01] Speaker 01: And the trial judge said, that's not enough. [00:02:04] Speaker 00: So Mr. President, you would agree that this case sort of stands or falls on the, from your standpoint, stands or falls on the strength of the IA Frady Declaration? [00:02:15] Speaker 00: Yes. [00:02:16] Speaker 00: If you didn't have that, you wouldn't be in front of us, right? [00:02:20] Speaker 00: I think the answer to that has to be yes. [00:02:23] Speaker 00: You wouldn't. [00:02:24] Speaker 01: I'm willing to concede that, Judge. [00:02:26] Speaker 00: Yeah. [00:02:26] Speaker 00: So we have to, so does it really come down then to the question of whether [00:02:31] Speaker 00: What Mr. Iafraty says in his declaration is enough to, as a matter of law, to get over the hurdle of 251. [00:02:46] Speaker 00: No new matter. [00:02:49] Speaker 01: I would agree with you except for one, one proviso as a matter of law. [00:02:54] Speaker 01: I would suggest this is a matter of fact. [00:02:56] Speaker 01: Now the Hester case says [00:02:58] Speaker 01: 251 as a matter of law. [00:02:59] Speaker 00: Well, true. [00:03:00] Speaker 00: But if Mr. Iafrati says in his declaration A, B, and C, and the cases starting with the industrial chemicals, Amos, Riley, Antares that Judge Raina mentioned, if those cases stand for the proposition that A, B, C isn't good enough, then you're out as a matter of law. [00:03:24] Speaker 00: That's what I was thinking. [00:03:25] Speaker 00: In other words, what Mr. Iafrati says [00:03:27] Speaker 00: has to be enough in terms of what the cases have said is OK. [00:03:35] Speaker 00: See what I'm saying? [00:03:35] Speaker 00: Yes. [00:03:37] Speaker 01: So what we offered here was evidence from a person with skill in the art. [00:03:43] Speaker 01: He said he read the original patent's disclosure. [00:03:46] Speaker 01: And a person with skill in the art would understand that reissued claims are supported by the original disclosure. [00:03:55] Speaker 01: That's what he said. [00:03:57] Speaker 00: would understand, would appreciate, and would recognize. [00:04:00] Speaker 00: Those were his words. [00:04:02] Speaker 01: He had to say that because he himself had more skill than a person. [00:04:06] Speaker 02: And what evidence in the specification did he point to for that conclusion? [00:04:11] Speaker 01: Column three, mainly, where the patent talks about the purpose of the arbors, which is the feature that [00:04:22] Speaker 02: But arbors, am I wrong? [00:04:24] Speaker 02: Arbors are specifically related to lathing. [00:04:31] Speaker 01: True. [00:04:31] Speaker 02: So why does that help you? [00:04:33] Speaker 02: I mean, this is the problem for me is that even though there are some stray references to general machining, almost everything it talks about is in terms of lathing or things that are youth with lathing and not, I think your theory is that this could also extend to milling. [00:04:54] Speaker 01: Most of the actual words in the patent, I agree, discussed lately. [00:05:01] Speaker 01: But Mr. Iafredi says an artisan would understand, given the purpose identified for the arbors, that they're an optional feature. [00:05:11] Speaker 01: You wouldn't need to have them in order to practice the invention. [00:05:14] Speaker 01: That's what he says in his invention. [00:05:16] Speaker 02: Because of the purpose... But how do we know that, looking at the specification? [00:05:21] Speaker 01: you may not know because you're not people, you're not machinists, you're not people. [00:05:25] Speaker 02: That's why I ask you what evidence he relied on in the specification because otherwise he's just a conclusory allegation of you'd look at this. [00:05:33] Speaker 02: He did give a reason. [00:05:34] Speaker 02: He needs to explain, I looked at the specification, these parts of it lead me to think that a skilled artisan such as myself who would read this as it extending beyond Lakeland. [00:05:46] Speaker 02: And the first thing he pointed me to was a statement about arbors. [00:05:50] Speaker 02: which involves a lake. [00:05:52] Speaker 02: So can you give me something better than that? [00:05:56] Speaker 01: I'm quoting from Appendix 181, paragraph 18. [00:06:03] Speaker 01: A worker of ordinary skill would understand from the patent that arbors are provided in order to locate the fixture relative to the lake and to keep it attached. [00:06:15] Speaker 01: He excites from the patent where it says that. [00:06:18] Speaker 01: Then on the next page, in paragraph 19, [00:06:21] Speaker 01: A worker of ordinary skill would appreciate from the patent, including the patent passage cited above, that arbors are an optional feature. [00:06:33] Speaker 01: That worker would recognize that other configurations of components could serve the same purpose. [00:06:39] Speaker 01: And then he goes on to explain, gives an example. [00:06:42] Speaker 02: But that last thing you cited, what's his support for that in the specification? [00:06:49] Speaker 01: He didn't decide anything? [00:06:50] Speaker 02: Otherwise, it sounds to me an awful lot like Antares, where the patent specifically described some specific things. [00:06:59] Speaker 02: They came back with a reissue and said, oh, we want to add some additional limitations, which aren't specifically mentioned, but aren't specifically excluded. [00:07:10] Speaker 02: And we said, that's not enough. [00:07:12] Speaker 02: And so if we read the specification as being directed all at Lathing and Arbors, [00:07:18] Speaker 02: and you can't point me to anything else besides lathing and arbors, then why isn't this just exactly like Antares, where the argument is, well, you could have understood this, even if it doesn't specifically reference it? [00:07:31] Speaker 01: Well, let me answer first question. [00:07:35] Speaker 01: First is, I don't think it has to be in the specification if somebody skilled in the art, a machinist, with his knowledge of those processes, can read the patent and understand it's optional. [00:07:45] Speaker 01: And I think paragraph 19, that's what he's doing. [00:07:48] Speaker 01: That's why he is not citing to the specification. [00:07:51] Speaker 01: This is because he's relying on the knowledge of an artisan. [00:07:54] Speaker 04: That's not what our law is. [00:07:55] Speaker 04: We require a clear and unequivocally disclosed and newly claimed invention. [00:08:02] Speaker 01: That's Antares. [00:08:02] Speaker 01: That's certainly correct. [00:08:03] Speaker 01: But the question that Antares court didn't answer is, how clear? [00:08:08] Speaker 01: How unequivocal? [00:08:11] Speaker 04: Well, you've got to point to something at least. [00:08:13] Speaker 04: You've got to go to the specification and point to it. [00:08:17] Speaker 01: Oh, it's a suspension. [00:08:18] Speaker 02: Do you at least have to point to something ambiguous in this to get to the expert declaration? [00:08:24] Speaker 02: I mean, the expert can't just come in out of the blue and say, well, it doesn't talk about this. [00:08:28] Speaker 02: But I would say that this clearly includes it. [00:08:33] Speaker 01: Well, he has said an artisan would understand. [00:08:36] Speaker 02: I mean, you could have gotten the same thing in Antares. [00:08:38] Speaker 02: I know it probably wasn't there. [00:08:40] Speaker 02: But you could have got the expert to come in and say, [00:08:42] Speaker 02: Well, this specification doesn't talk about these additional health and safety features, which I think was what was added. [00:08:48] Speaker 02: But everybody knows that you would have wanted those. [00:08:51] Speaker 02: So a skilled artisan would have understood the patent to disclose those. [00:08:55] Speaker 02: Well, that's not right. [00:08:56] Speaker 02: That's the same thing here is this is all directing and outlacing. [00:09:01] Speaker 02: There's nothing that excludes milling. [00:09:04] Speaker 02: So a skilled artisan would say, well, yeah, that could have been enough. [00:09:09] Speaker 02: It's not what a skilled artisan could have found this to include. [00:09:12] Speaker 02: but what the patent does include. [00:09:14] Speaker 02: And so when you don't tie it to a specification language, I think you have a hard time. [00:09:19] Speaker 02: So I've asked you a couple times if you have any specific language in the specification. [00:09:24] Speaker 02: I'm going to give you one more chance to tie it to specific language in the specification. [00:09:29] Speaker 01: Not beyond what I've said, Judge. [00:09:32] Speaker 01: Now, maybe it's worth it to just look at this from a different angle. [00:09:37] Speaker 01: What would our original patent [00:09:40] Speaker 01: What would it needed to have looked like to satisfy the trial judge here? [00:09:46] Speaker 01: And I would suggest, how would it have to be changed? [00:09:49] Speaker 01: I would suggest very, very little. [00:09:55] Speaker 01: You could add one word to this patent, optional, or you were discussing the arbors. [00:10:04] Speaker 01: And I think you would have satisfied the trial judge. [00:10:07] Speaker 01: And the question I would ask is, [00:10:11] Speaker 01: How important should that one word be? [00:10:14] Speaker 02: Well, it's everything, if that's what means the inventor meant it to be optional, as opposed to direct it only to specific harbors and lengthen. [00:10:25] Speaker 02: Sure, if you'd thrown in the word optional, or said examples such as milling or lengthening, you'd have an easy case. [00:10:36] Speaker 01: Mr. Iofredi says, an artist who read the patent [00:10:39] Speaker 01: would understand from the disclosure in the patent that they're optional. [00:10:43] Speaker 02: I just don't understand how you go to, I mean, I know this isn't the same kind of analysis, but it's very similar. [00:10:51] Speaker 02: When we're looking to determine the meaning of claim terms, when we're looking and the like, we don't jump to expert testimony at the start. [00:11:01] Speaker 02: We look at the claims and the specifications. [00:11:04] Speaker 02: And only then, if it's ambiguous or undecided, [00:11:09] Speaker 02: Can we get expert testimony? [00:11:11] Speaker 02: You still have to have something to tie it here to. [00:11:14] Speaker 02: And if you don't have anything to tie it to, then I don't see how that expert testimony helps you. [00:11:25] Speaker 01: I would simply add that, let me go back to my point, which is, what would the patent look like if we put in the arbitrary thing? [00:11:33] Speaker 01: Our expert said an artisan who was reading the patent, and the law says Title 35 [00:11:38] Speaker 01: from top to bottom says patents are to be read by artisans, not by lawyers, not by judges. [00:11:44] Speaker 04: So... But even the artisan reading the patent has got to base his opinion on the patent, on the written description or some part of the patent, the claim or something, and say, I base this decision on this paragraph or these words. [00:12:06] Speaker 04: And I agree with Judge Hughes. [00:12:08] Speaker 04: I mean, we don't have that. [00:12:11] Speaker 01: Our witness based it on paragraph 18, describing the purpose of the arbors. [00:12:18] Speaker 01: And based on that purpose, he said an artisan would understand there are other configurations that could accomplish the same purpose without having arbors. [00:12:28] Speaker 01: That's what we've got. [00:12:29] Speaker 04: OK. [00:12:31] Speaker 04: You're close to rebuttal time. [00:12:32] Speaker 04: Do you want to reserve that? [00:12:33] Speaker 04: Yes. [00:12:33] Speaker 04: I think we have your arguments. [00:12:39] Speaker 03: Mr. Jasmine. [00:12:42] Speaker 03: Thank you, your honor. [00:12:44] Speaker 03: May it please the court. [00:12:46] Speaker 03: I think the point that the court has hit on here is that Mr. Ioffredi was not saying that there was any teaching in the patent of a fixture with arbors. [00:12:56] Speaker 03: What he was saying is that he could read the patent and figure out another invention not disclosed in the specification that didn't have arbors. [00:13:05] Speaker 03: And this is not [00:13:07] Speaker 03: a territory that has not already been decided by this court and by the Supreme Court. [00:13:12] Speaker 03: As the Industrial Chemicals Court stated, it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification. [00:13:22] Speaker 03: Rather, the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention. [00:13:29] Speaker 03: That's from U.S. [00:13:30] Speaker 03: Industrial Chemicals, Your Honor. [00:13:33] Speaker 03: This court, in the Antares case, [00:13:36] Speaker 03: characterizing U.S. [00:13:37] Speaker 03: industrial, said that in U.S. [00:13:39] Speaker 03: industrial, the hint, suggestion, or indication that water was optional was not enough to save the reissue claims. [00:13:47] Speaker 03: So I think, Judge Hughes, you hit on an important point that it could make all the difference in the world if the word optional with respect to arborers was actually mentioned. [00:13:56] Speaker 03: Then you might be able to argue that there was some teaching that something other than arborers or that arborers could be omitted from the teaching. [00:14:02] Speaker 02: I mean, I find this difficult because it's on summary judgment. [00:14:05] Speaker 02: So even if it's a factual question, we can show you those facts most favorably to your friend on the other side. [00:14:11] Speaker 02: And this is the type of piece of equipment that seems like if it had been written, the patent had written better, the arborist could have been optional and it could have used different [00:14:22] Speaker 02: Am I wrong? [00:14:23] Speaker 02: It wouldn't have been hard to modify this to adapt it to use the kind of connectors you need for milling. [00:14:29] Speaker 03: That's correct. [00:14:30] Speaker 03: The patent could have been drafted to include the alternatives to arbors that Mr. Ioffredi specifically mentioned in his declaration. [00:14:38] Speaker 03: But all he says is that someone reading this invention would know that there are other things that could be used other than arbors in other cutting machines to do that. [00:14:46] Speaker 03: Not that the patent itself teaches these alternatives. [00:14:50] Speaker 04: Just for the purpose of summary judgment, why wouldn't that be enough? [00:14:54] Speaker 03: That's not enough because what the cases say is that, for instance, U.S. [00:15:00] Speaker 03: Industrial says it must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original. [00:15:09] Speaker 03: The U.S. [00:15:09] Speaker 03: Industrial specifically says what the role of expert testimony is. [00:15:13] Speaker 03: The court can receive expert evidence to ascertain the meaning of a technical or scientific term or term of art so that the court may be aided in understanding not what the instruments mean but what they actually say. [00:15:25] Speaker 03: So at best here with what they're saying is someone could read the specification and they would extrapolate this to another invention that they would come up with. [00:15:34] Speaker 03: There is no testimony from Mr. Iafrati, as the court has pointed out, saying this patent actually teaches a fixture [00:15:42] Speaker 03: without arbors. [00:15:46] Speaker 03: In our view, as a matter of law, there's no disputed issues of fact here. [00:15:53] Speaker 03: Everyone agrees that there is no explicit disclosure of a fixture without arbors in the specification. [00:16:00] Speaker 03: And we think as a matter of law that the district court must be affirmed. [00:16:04] Speaker 03: If the court has no further questions, I will yield the remainder of my time. [00:16:07] Speaker 03: Thank you very much. [00:16:08] Speaker 03: Thank you. [00:16:12] Speaker 04: Mr. Peterson, you have two minutes. [00:16:15] Speaker 04: Unless you have more questions. [00:16:16] Speaker 04: Actually, you have three minutes. [00:16:17] Speaker 04: Thank you, Judge. [00:16:18] Speaker 01: Unless you have more questions, I have nothing further to add. [00:16:20] Speaker 04: We don't have any more questions. [00:16:21] Speaker 04: We thank the parties for the arguments this morning. [00:16:24] Speaker 04: Mr. Coleman, don't stand in recess. [00:16:27] Speaker 00: All rise. [00:16:37] Speaker 02: The Honorable Court is adjourned from day to day.