[00:00:00] Speaker 04:
Number 20, 2257, Nature Simulation Systems, Incorporated, against Autodesk, Incorporated.

[00:00:09] Speaker 04:
Mr. Warson.

[00:00:12] Speaker 02:
Good morning, Your Honors.

[00:00:13] Speaker 02:
Matt Warson for Appellant.

[00:00:15] Speaker 02:
May it please the Court.

[00:00:17] Speaker 02:
The District Court here construed various claim terms and found two of the terms that appear in the independent claims of the two patents in suit.

[00:00:29] Speaker 02:
found them to be indefinite and, as a result, invalidated both patents.

[00:00:36] Speaker 02:
On appeal, Pellin is requesting a reversal of that claim construction order, arguing that the intrinsic record supports an ordinary meaning of both of these claim terms.

[00:00:52] Speaker 01:
The two terms... An ordinary meaning of modified Watson method?

[00:00:58] Speaker 01:
How can there be an ordinary meaning to that?

[00:01:02] Speaker 02:
Your Honor, because the claim language itself teaches exactly how the Watson method, which is cited in the specification as a 1981 paper from Watson, the claim language teaches how the Watson method is modified.

[00:01:22] Speaker 02:
And the way the claim modifies the Watson method is principally through adding

[00:01:28] Speaker 02:
a condition to when to split the triangles.

[00:01:34] Speaker 01:
The claim says that the modified Watson method includes three things, but it doesn't say what else may be in the modified Watson method, right?

[00:01:48] Speaker 02:
Not right, Your Honor.

[00:01:49] Speaker 02:
The claim language itself, and so representative claim one of the 961 patents,

[00:01:57] Speaker 02:
includes the splitting triangle step at line 34.

[00:02:02] Speaker 02:
Splitting each triangle through which an intersection line passes using modified Watson method.

[00:02:10] Speaker 02:
The principle condition that's added to modify the Watson method is splitting the triangle if the intersection line passes.

[00:02:21] Speaker 02:
And that can be found in the preferred embodiment

[00:02:25] Speaker 02:
there's an algorithm in the specification which lists one way to do the modified Watson method.

[00:02:33] Speaker 02:
And at step five of that algorithm, column seven, I'm in appendix 31, column seven, line 20, you split the triangle and you check whether it's circumcircle contains the point, that's Watson method,

[00:02:55] Speaker 02:
the last segment passes through the triangle.

[00:02:58] Speaker 01:
That's the additional... Where does the specification say that that's what constitutes the modified Watson method?

[00:03:10] Speaker 02:
The specification teaches that in column 6, appendix 30, it teaches that it's going to modify the Watson method.

[00:03:23] Speaker 02:
At line 64,

[00:03:25] Speaker 02:
The specification cites the Watson paper, the 1981 paper.

[00:03:31] Speaker 02:
The specification then lists a seven step order.

[00:03:35] Speaker 01:
But you're not answering my question.

[00:03:37] Speaker 01:
Where does the specification tell us what the modified Watson method is?

[00:03:45] Speaker 02:
Your Honor, what I just referred to, line 20 of column 7 adds the condition.

[00:03:55] Speaker 02:
And that condition would be the intersection line passing through the triangle.

[00:04:03] Speaker 02:
That is an additional condition.

[00:04:05] Speaker 02:
And all of the evidence supports this, including defendant's expert testifies that the Watson method, as taught in that 1981 paper, did not split triangles based on that added condition, that modification of the Watson method.

[00:04:24] Speaker 02:
The additional conditions that were added to the claim language came from an examiner's amendment to put this claim in a condition for allowance.

[00:04:36] Speaker 02:
And so the wherein clause that Judge Dyke referred to listing other illustrative conditions that one may find in the modified Watson method that's picking up

[00:04:53] Speaker 02:
at line 35 of column 9 wherein the modified Watson method includes removing duplicate intersection points, identifying positions of any intersection points, and splitting portion of each triangle into an upper, a lower, and a middle portion.

[00:05:13] Speaker 02:
That language was added by the patent examiner to put the claim in a condition for allowance specifically

[00:05:21] Speaker 02:
to overcome an indefiniteness rejection.

[00:05:26] Speaker 02:
That examiner's amendment deserves weight, especially in this circumstance.

[00:05:33] Speaker 02:
And that added language does find support in the seven step algorithm, which I was referring to earlier in column seven, as well as column six teaches that

[00:05:51] Speaker 02:
duplicate intersection points are removed.

[00:05:59] Speaker 02:
That aspect of the invention, if we could step back and what is trying to be accomplished here.

[00:06:07] Speaker 01:
Where does the specification tell us what the modified Watson meant?

[00:06:14] Speaker 01:
On column 7, line 3 that you referred to, it talks about the modified Delaney method.

[00:06:22] Speaker 01:
It doesn't talk about the modified Watson method.

[00:06:27] Speaker 02:
The Watson paper teaches the Delaney 2D mesh method.

[00:06:34] Speaker 02:
And so the Watson paper was cited.

[00:06:38] Speaker 02:
And in the modified Watson method is this

[00:06:42] Speaker 02:
modification of the Delaney 2D mesh method, which is taught in the 1981 Watson paper.

[00:06:52] Speaker 02:
Now, I would just repeat for the court that, and to answer your question precisely, where is the modified Watson method taught in the specification starting at line 54 of column 6 and culminating

[00:07:12] Speaker 02:
column seven, line 32.

[00:07:15] Speaker 02:
That is where the teaching of the modified Watson method is taught.

[00:07:21] Speaker 02:
It's also supported, and the specification refers to this, and I quote, figures 12a through 12h show a Delany 2D mesh sequence.

[00:07:35] Speaker 02:
And the, an appendix

[00:07:42] Speaker 02:
25, the court will find the figures 12a through 12h, and figures g and h of figure 12 show this additional condition of the modified Watson method, splitting triangles when an intersection line passes through.

[00:08:08] Speaker 02:
And again, defendant's expert is on board with this and he testifies that you won't find that condition for splitting in the 1981 Watson paper.

[00:08:23] Speaker 02:
And those admissions are paragraph 18 of the Aliaga Declaration, page 56 of the Joint Appendix.

[00:08:37] Speaker 02:
And then I would just add that the modified Watson method is also taught in figure 13 through a flowchart, which reflects the various steps and which is consistent with the seven step algorithm, which I was referring to earlier.

[00:08:59] Speaker 00:
Following up on what Judge Teich said, shouldn't a term such as this

[00:09:05] Speaker 00:
appear somewhere in the written description, particularly when the Delaney method is expressly disclosed.

[00:09:18] Speaker 00:
And you point out that the modified Watson method was that phrase was added by the examiner.

[00:09:28] Speaker 00:
And I guess that supports your view that it was not indefinite.

[00:09:34] Speaker 00:
But it doesn't appear anywhere in the patent in the specification, the written description.

[00:09:42] Speaker 02:
Well, Judge Laurie, if we could, why don't we return to the specification language, column six.

[00:09:49] Speaker 02:
And I'm picking up at line 62, quote, given a set of points on a plane that represents a partition of a triangle, to decompose the plane into a group of triangles

[00:10:03] Speaker 02:
This invention modified Delany 2D mesh Watson method, which is published in 1981.

[00:10:11] Speaker 02:
And so this is to the point which I stated earlier, which is that the Watson paper itself, the Watson method, is a reflection of Delany.

[00:10:23] Speaker 02:
And you can also see that in column nine right before the claim language.

[00:10:27] Speaker 01:
But your problem is that

[00:10:30] Speaker 01:
specification doesn't tell us what the modified Watson method is.

[00:10:35] Speaker 01:
You're standing up there.

[00:10:36] Speaker 01:
You're testifying, which you can't do, and trying to tell us what it means.

[00:10:42] Speaker 01:
But we're stuck with looking at the specification to figure out what it means, plus perhaps expert testimony.

[00:10:50] Speaker 01:
You don't have any expert testimony.

[00:10:52] Speaker 01:
Where does the spec answer the question of what the modified Watson method is?

[00:10:58] Speaker 02:
Judge Dyke, I can only repeat what I've already argued.

[00:11:02] Speaker 02:
And the specification clearly teaches the modification.

[00:11:07] Speaker 02:
We have an additional source of comfort that the patent examiner amended this claim language to address this specific concern.

[00:11:20] Speaker 02:
And so the original language that was amended

[00:11:24] Speaker 02:
had splitting each triangle through which an intersection line passes using modified Watson method, dot, dot, dot.

[00:11:33] Speaker 02:
The wherein clause was added by the examiner, accepted by the patentee, to further define precisely what this Watson method, modified Watson method, is.

[00:11:48] Speaker 02:
Adding to that, and I'm being a bit repetitive here, but columns six and seven

[00:11:54] Speaker 02:
precisely teach what that modification is.

[00:11:59] Speaker 02:
And principally, it's adding this condition on when to split the triangles.

[00:12:05] Speaker 02:
Now, all of that is also reflected in the specification.

[00:12:10] Speaker 02:
And so, Phillips teaches us that in the hierarchy, claim language comes first, and it clearly teaches what the modification is,

[00:12:24] Speaker 02:
in the original language, splitting each triangle through which an intersection line passes.

[00:12:30] Speaker 02:
It is taught, how are we modifying Watson method?

[00:12:33] Speaker 02:
Watson method doesn't split on that condition of the intersection line.

[00:12:38] Speaker 02:
The extrinsic evidence supports that.

[00:12:41] Speaker 02:
But even on top of that, we have the examiner's amendment, which adds to that teaching and further defines what the modified Watson method is.

[00:12:50] Speaker 02:
I think I've run over my time.

[00:12:52] Speaker 02:
I'd like to reserve some for rebuttal.

[00:12:54] Speaker 04:
Anything else for Mr. Morrison at the moment?

[00:12:57] Speaker 02:
No.

[00:12:58] Speaker 02:
No.

[00:12:58] Speaker 04:
Okay.

[00:12:59] Speaker 04:
We'll save the rebuttal.

[00:13:00] Speaker 04:
Okay.

[00:13:01] Speaker 04:
Mr. Matsui.

[00:13:03] Speaker 03:
Thank you, your honor.

[00:13:04] Speaker 03:
May it please the court.

[00:13:05] Speaker 03:
Brian Matsui on behalf of Autodesk.

[00:13:08] Speaker 03:
The district court correctly recognized that the asserted claims are indefinite for three independent reasons.

[00:13:13] Speaker 03:
First, all the claims use a made up phrase, modified Watson method.

[00:13:17] Speaker 03:
without coherently identifying what or how the known Watson method must be changed with any reasonable certainty.

[00:13:24] Speaker 03:
Second, the three steps claim one says must be included in the modified Watson method are themselves impossible to decipher and provide no clear notice, both on their own and how they might change the well-known Watson method.

[00:13:38] Speaker 03:
And third, even setting aside the modified Watson method term, the claims provide no reasonable certainty

[00:13:44] Speaker 03:
because they require searching neighboring triangles of the last triangle pair.

[00:13:48] Speaker 03:
But nothing in the patent identifies what are the neighboring triangles of a triangle pair, or what triangle pair might be the last triangle pair, or what it would mean to build an intersection line based on that searching.

[00:14:00] Speaker 04:
Well now, Mr. Matui, obviously the examiner had a different view when the examiner suggested or requested the

[00:14:10] Speaker 04:
uh... information of the added to the claim and so uh... now uh... we as judges may not be experts in uh... boolean mathematics how are we the second guess what the examiner plainly thought was suitable to complete the description and make the claims allowable your honor i i i think there's a there's a couple problems with that the first is that we don't have

[00:14:38] Speaker 03:
here, we just have a snippet of the prosecution history that the NSS sort of introduced at the 11th hour before the district court.

[00:14:45] Speaker 03:
And those few pages of prosecution history don't tell the same story that NSS is saying.

[00:14:51] Speaker 03:
In Appendix 71, it shows that there was a rejection to Claim 6 for indefiniteness, not a rejection for Claim 1, which has the wherein the modified Watson method includes

[00:15:04] Speaker 03:
And then it's later, you can see that the next page, Appendix 71, there's this added language of the wherein the modified Watson method includes, but there's no explanation there as to why that language was added to Claim 1 when there was an indefiniteness rejection pending for Claim 6.

[00:15:23] Speaker 03:
But even setting that aside where we're going to look at the fact that the examiner added this language and say perhaps the examiner would not

[00:15:33] Speaker 03:
intentionally add language that makes claims more indefinite.

[00:15:37] Speaker 03:
Well, that's just part and parcel of the ordinary presumption of validity that the patent is accorded once it gets allowed.

[00:15:44] Speaker 03:
And that's something that we are allowed to overcome, and we overcame here greatly when you have a term like modified Watson method itself, which itself is a made-up word that provides no reasonable certainty, and is in all the asserted claims.

[00:16:01] Speaker 03:
A person of ordinary skill in the art would know what the Watson method is, but they wouldn't know what the modified Watson method means.

[00:16:09] Speaker 03:
That's what Dr. Aliaga explained, that the modified Watson method has no customary meaning, no ordinary meaning to persons of ordinary skill in the art.

[00:16:18] Speaker 03:
And so one would have to look at the intrinsic record.

[00:16:21] Speaker 03:
And when you look at the intrinsic record, it provides no guidance, because the claims say one thing.

[00:16:26] Speaker 04:
No, you look at what the examiner added to the claim.

[00:16:31] Speaker 03:
Yes, so we would look at the language of the examiner add to the claim, the wherein the modified Watson method includes these three steps.

[00:16:40] Speaker 03:
And those three steps, I would just have to point out Judge Newman, are not the language that NSS is pointing to right now as the sort of the key distinction which defines the modified Watson method.

[00:16:52] Speaker 03:
NSS's point is something that's found in dependent claim six and in column seven of the specification saying that's

[00:16:59] Speaker 03:
what makes the modified Watson method.

[00:17:02] Speaker 03:
But even if we look at the language that the examiner included, that language is a definition which still have to provide reasonable certainty to one of skill in the art.

[00:17:11] Speaker 03:
And when you look at this language from the specification itself, a person of ordinary skill in the art would not have any idea what these terms mean or how they modify the Watson method.

[00:17:23] Speaker 03:
For example, if we look at the phrase

[00:17:26] Speaker 03:
splitting portion of each triangle, including an upper portion, a lower portion, and a middle portion, there are several problems with that language.

[00:17:36] Speaker 03:
The first is that it's susceptible itself to a lot of different meanings, each of which is going to affect the scope of the claims, because it's going to affect the scope of the modified Watson method.

[00:17:47] Speaker 03:
Does that mean splitting each of those three portions of every triangle?

[00:17:53] Speaker 03:
Does it mean splitting one of those portions of a triangle?

[00:17:56] Speaker 03:
Does it mean splitting a triangle into three portions?

[00:18:00] Speaker 03:
Or is it something else?

[00:18:02] Speaker 04:
Then you look at the specification.

[00:18:05] Speaker 03:
I'm sorry, Your Honor.

[00:18:08] Speaker 04:
Well, just thinking you don't reproduce the specification in the claims, it's supposed to be a signal, a terse statement.

[00:18:18] Speaker 04:
But we all know that you look at the specification to understand the claim.

[00:18:23] Speaker 03:
Of course, and that's the problem here is that you have this claim language that's susceptible to several different meanings and you could look at the specification and you're not going to see any indication as to which of those meanings actually are the ones that's claimed.

[00:18:39] Speaker 03:
That makes this case like Dow Chemical where the court said that

[00:18:43] Speaker 03:
where a patent discloses multiple known approaches, a person of ordinary skill in the art would have to know which approach to select.

[00:18:51] Speaker 03:
And when you look at the specification here, there's nothing to indicate which of these approaches you would select, whether or not you're splitting each portion of those three portions of every triangle or splitting one triangle into three portions.

[00:19:05] Speaker 03:
Now, NSS's explanation to that is to say, well, this is just a question of infringement that basically claims scope and infringement just go

[00:19:13] Speaker 03:
hand-in-hand, but that's precisely what the definiteness requirement is trying to avoid.

[00:19:19] Speaker 03:
We should not have to find out whether or not we infringe or not to know what the scope of the claim is.

[00:19:25] Speaker 03:
We're supposed to know that in advance, so we know with reasonable certainty what is left open to us and what isn't foreclosed to us.

[00:19:33] Speaker 03:
And there's other claim terms in this wherein a staff that the examiner adds that also just have no reasonable certainty.

[00:19:43] Speaker 03:
removing duplicate intersection points.

[00:19:45] Speaker 03:
Nothing in the patent explains what duplicate intersection points mean, let alone how duplicate intersection points modify the Watson method.

[00:19:54] Speaker 03:
And in part that's because the Watson method just has nothing to do with removing intersection points and certainly not duplicate ones.

[00:20:02] Speaker 03:
So a person of ordinary skill and the art would be left to guess what this term means.

[00:20:06] Speaker 03:
Is this point supposedly on a line or is it in a triangle?

[00:20:11] Speaker 03:
And then when you look at figure 12,

[00:20:13] Speaker 03:
you're just left scratching your head even more in the patent because that talks about inserting intersection points, not removing them.

[00:20:21] Speaker 03:
So a person of ordinary skill in the art is just not going to have any idea what the scope of the claims are when they look at these phrases that are added by the examiner.

[00:20:30] Speaker 03:
And that's in part why I think NSS points now to the specification and that key language they say exists on column seven, even assuming

[00:20:41] Speaker 03:
that that language in column seven, you know, is, you know, is the modified Watson method.

[00:20:47] Speaker 03:
There's nothing in the, um, that would sort of direct a person of ordinary skill in the art to that last segment phrase that that's the key distinction that, that makes the modified Watson method different from the Watson method.

[00:21:03] Speaker 03:
And if you look just to, to respond to NSS's argument that,

[00:21:08] Speaker 03:
the modified Watson method is everything from the splitting triangle heading at column six downward.

[00:21:16] Speaker 03:
There's nothing at all that would indicate that that is the whole modified Watson method.

[00:21:24] Speaker 03:
If anything, the steps that are listed under splitting a triangle, one, two, and three, appear to be steps that occur before you actually do the Delany 2D mesh, which makes

[00:21:39] Speaker 03:
sense because the Watson method is meant to take a plane and to place dots on it and then to triangulate that plane.

[00:21:49] Speaker 03:
It's not meant to do anything like splitting triangles.

[00:21:54] Speaker 03:
And just to respond to NS's point that our expert basically conceded that he would know what the modified Watson method is because the Watson method

[00:22:06] Speaker 03:
does not split triangles.

[00:22:10] Speaker 03:
That's a misreading of what our expert said.

[00:22:12] Speaker 03:
Our expert said that a person of ordinary skill wouldn't understand how splitting triangles would even apply to the Watson method, given the fact that the Watson method does something entirely different.

[00:22:24] Speaker 03:
And that's precisely why it was important when you have this made-up phrase, like the modified Watson method,

[00:22:32] Speaker 03:
for the patentee to actually explain with reasonable certainty what the scope of the claim is, what the modified Watson method requires.

[00:22:44] Speaker 03:
And that's precisely what the NSS's patent does not do here.

[00:22:52] Speaker 03:
Because if a person of ordinary skill in the art was to look at this patent, they would basically be lost.

[00:22:57] Speaker 03:
They would see the claims pointing one way, the specification pointing another way.

[00:23:02] Speaker 03:
and they would look at the figures, such as figure 12, and they wouldn't understand how that differs from the Watson method.

[00:23:10] Speaker 03:
For example, if you look at figure 12, G, and H, those are supposed to be the byproduct of the modified Watson method, but they don't show splitting triangles.

[00:23:22] Speaker 03:
As our experts showed, that's splitting polygons or taking placing points and then

[00:23:29] Speaker 03:
erasing triangles and then splitting the remaining polygon.

[00:23:33] Speaker 03:
So there's nothing here that would provide the guidance that's necessary for a person of ordinary skill in the art.

[00:23:42] Speaker 03:
If there are no further questions, we would ask the court to affirm the judgment.

[00:23:47] Speaker 04:
Any more questions for Mr. Mitsui?

[00:23:50] Speaker 03:
No.

[00:23:51] Speaker 04:
All right.

[00:23:52] Speaker 04:
Thank you.

[00:23:52] Speaker 04:
You have your rebuttal time, Mr. Worson.

[00:23:55] Speaker 02:
Thank you, Your Honors.

[00:23:57] Speaker 02:
First of all, a figure 10B discloses an upper portion, middle portion, and lower portion which would support the language and claim one amended by the examiner as part of the modified Watson method.

[00:24:15] Speaker 02:
Council for defendant.

[00:24:17] Speaker 01:
Did the exam ever explain what he understood modified Watson method to mean?

[00:24:24] Speaker 02:
Yes, Your Honor.

[00:24:25] Speaker 02:
With the examiner's amendment and adding the wherein clause, I think he answered that question by adding the language as it appears in the asserted claims.

[00:24:37] Speaker 01:
Just the wherein clause is his only explanation, but that says includes.

[00:24:42] Speaker 01:
It doesn't say that's what it is.

[00:24:46] Speaker 02:
Well, it's defining the modified Watson method, Your Honor.

[00:24:50] Speaker 01:
Well, that's not what you were saying earlier.

[00:24:52] Speaker 01:
You were saying

[00:24:53] Speaker 01:
Does the modified Watson method is somehow defined in parts of the specification?

[00:25:00] Speaker 02:
Correct.

[00:25:01] Speaker 02:
Well, those things are not exclusive of one another.

[00:25:04] Speaker 02:
They go hand in hand.

[00:25:06] Speaker 02:
The support for the examiner's amendment would be found in the specification.

[00:25:13] Speaker 02:
And I think it is the examiner's understanding of how to claim the modified Watson method in a definite manner.

[00:25:24] Speaker 02:
To the removal of duplicate points, council argued that there's no teaching of where do these duplicate points come from, but in fact, the step of building intersection lines, starting with and ending with searching for, you search for an individual intersection point and, quote, searching neighboring triangles of the last triangle pair

[00:25:51] Speaker 02:
that holds the last intersection point that's in the singular.

[00:25:56] Speaker 02:
We're talking about one intersection point, then continuing to extend the intersection line until the first intersection point is identical to the last intersection point of the intersection line.

[00:26:10] Speaker 02:
That's your duplicate point.

[00:26:12] Speaker 02:
You have data that represents the same point in this 3D geometrical object.

[00:26:20] Speaker 02:
And that data is not represented twice, but in fact, according to this method, is removed.

[00:26:28] Speaker 02:
I see my time is up.

[00:26:30] Speaker 02:
Without questions, Your Honors, I'll rest.

[00:26:33] Speaker 04:
Any more questions, Mr. Warson?

[00:26:36] Speaker 02:
No.

[00:26:36] Speaker 02:
No.

[00:26:37] Speaker 04:
All right.

[00:26:38] Speaker 04:
Thank you.

[00:26:38] Speaker 04:
Well, then thanks to both councils.

[00:26:40] Speaker 04:
And the case is taken under submission.

[00:26:43] Speaker 02:
Thank you.