[00:00:00] Speaker 00:
Our first case is 23-12-69.

[00:00:03] Speaker 00:
Styling, holding versus stress engineering.

[00:00:09] Speaker 00:
Mr. Ramey, I want to make sure I get the timing on this correct.

[00:00:14] Speaker 00:
You're going to speak for 11 minutes.

[00:00:16] Speaker 00:
You're reserving four minutes for rebuttal.

[00:00:18] Speaker 00:
Yes, Your Honor.

[00:00:19] Speaker 00:
Okay.

[00:00:20] Speaker 00:
And Mr. McKinnon, you have 10 minutes and four minutes for your cross appeal.

[00:00:27] Speaker 03:
I think I had 10 minutes and 5 minutes.

[00:00:30] Speaker 00:
10 minutes and 5 minutes.

[00:00:36] Speaker 00:
OK.

[00:00:36] Speaker 00:
You may proceed.

[00:00:36] Speaker 04:
Good morning, Judge Raymond, Judge Fronto, and Judge Chid.

[00:00:39] Speaker 04:
My name is Bill Raimi, and I represent the appellate, Stalwan.

[00:00:43] Speaker 04:
If it pleases the court, may I begin?

[00:00:46] Speaker 04:
Stalwan appeals a district court's claim construction order and clarifying order, specifically one for introducing the phrase, induce magnetic field into the construction of the signal

[00:00:57] Speaker 04:
signal and censor claim terms because the phrase inducing that field can't be found anywhere in the claims of the Patents Institute or the specification of the Patents Institute?

[00:01:07] Speaker 02:
Just for housekeeping purposes, I know there were multiple different claim constructions that were made by the district court below.

[00:01:14] Speaker 02:
And then based on those multiple claim constructions, there was a stipulation of non-infringement here, right?

[00:01:21] Speaker 02:
Correct.

[00:01:21] Speaker 02:
Yes, Your Honor.

[00:01:24] Speaker 02:
Just to see if there's a way to confine the appeal, do we have to affirm all of the claim constructions in order to affirm non-infringement, or is there some understanding that each one of those disputed claim constructions would be case-dispositive?

[00:01:46] Speaker 04:
There would not be case-dispositive.

[00:01:52] Speaker 04:
For this particular defendant, if the construction stayed for induced magnetic field, I think that one would be possibly dispositive.

[00:02:01] Speaker 04:
As it goes to the use of identifier equations, that one may also be case-dispositive.

[00:02:08] Speaker 04:
That's the second issue I was about to get to.

[00:02:10] Speaker 04:
It's hard for me to say, as I sit here right now, whether it would be 100% case-dispositive on the identify equation.

[00:02:17] Speaker 04:
We weren't really concentrating on the induced magnetic field.

[00:02:20] Speaker 02:
Sure, but I guess the point here is you do agree that if we were to affirm all of the clone constructions, that would certainly be case-dispositive, right?

[00:02:30] Speaker 04:
Yes, sure.

[00:02:31] Speaker 04:
We had an argument.

[00:02:32] Speaker 04:
We believe under the doctoral equivalence, we dropped it for this appeal.

[00:02:35] Speaker 04:
So we still think there may be a doctoral equivalence issue left, but there would not be literal infringement at that point.

[00:02:43] Speaker 04:
Well, that's why this record is so long.

[00:02:46] Speaker 04:
We did original stipulation for liberal infringement.

[00:02:49] Speaker 04:
And then after talking to the defendants through the course of litigation, we decided to take the issue up on appeal rather than press forward with a DOE argument at that time.

[00:02:57] Speaker 02:
Sure.

[00:02:57] Speaker 02:
But for our purposes, we have to be careful to avoid rendering advisory opinions.

[00:03:03] Speaker 02:
reviewing issues that where it doesn't really matter to the controversy and so that's why I'm trying to figure out if if you were to say Yes, identify our equations Dispute that is case-dispositive That would be useful to know or magnetic fields or the autonomous

[00:03:30] Speaker 02:
construction or whatever else was construed.

[00:03:37] Speaker 04:
Again, we still believe we have a doctor of equivalence analysis under any outcome.

[00:03:45] Speaker 04:
If it's said to be that we had to use identifier equations, that was the more difficult one for us to say that there was a doctor of equivalence analysis simply because the identifier equations are particular to the material under investigation, so they tend to be developed specifically for that material so they can correctly detect the imperfections in the material that they're evaluating.

[00:04:07] Speaker 04:
So that is, but for the induced magnetic field, we do think because of the way the specification, the breadth of the specification, that we would have a doctoral equivalence answer there.

[00:04:17] Speaker 04:
And then for the autonomous, because there are specific claims that, claiming the processes that we have asserted, we think that the claim differentiates.

[00:04:26] Speaker 02:
Now you're getting to the meds.

[00:04:27] Speaker 02:
I'm just trying to organize for our purposes, the court's purposes, what things

[00:04:34] Speaker 02:
potentially could be a firm that would end the appeal for purposes of the stipulated non-infringement, non-literal infringement.

[00:04:45] Speaker 04:
For non-literal infringement, affirming any one of the three would end literal infringement.

[00:04:53] Speaker 04:
For doctoral equivalents, we have an argument except for possibly on the identifier equation.

[00:05:00] Speaker 04:
That was the one that we ultimately decided to stick right to the normal proof on that as well.

[00:05:08] Speaker 04:
Did that answer your question or did it?

[00:05:11] Speaker 02:
I think so.

[00:05:13] Speaker 04:
Maybe.

[00:05:13] Speaker 04:
Maybe.

[00:05:15] Speaker 04:
Well, I'll try to answer it better as I go forward.

[00:05:17] Speaker 04:
I'm sorry for my lack of clarity on that.

[00:05:20] Speaker 04:
And then the second issue that we wanted to discuss was

[00:05:23] Speaker 04:
I don't remember what the first issue is.

[00:05:26] Speaker 04:
So that was about the induced magnetic field, whether or not that was properly incorporated into the claims.

[00:05:32] Speaker 04:
And the second issue is whether or not the specific identifier equations that were identified for best load purposes

[00:05:40] Speaker 04:
whether requiring those to be incorporated into the programming limitations will be claimed.

[00:05:45] Speaker 02:
I thought the specification said that they were disclosed for enablement purposes, not best mode purposes.

[00:05:51] Speaker 02:
Isn't that the way the specification reads?

[00:05:53] Speaker 04:
It is.

[00:05:54] Speaker 04:
Yes, Sean, I was blending the terms.

[00:05:56] Speaker 04:
Our briefing talked about best mode as well, so I was blending the terms, but it did specify for enablement.

[00:06:02] Speaker 02:
Which suggests, indicates that without having disclosed those then the claimed invention wouldn't be enabled.

[00:06:10] Speaker 02:
I.e.

[00:06:10] Speaker 02:
you need these equations in order for the claimed invention to work.

[00:06:14] Speaker 04:
The way that the patent was drafted, we were trying to draft the specification in such a way that someone with limited skill in the art could pick it up and practice it without any experimentation.

[00:06:26] Speaker 04:
Those identifier equations were specific for the material on the investigation for the tubulars it was disclosing.

[00:06:32] Speaker 04:
And so it wouldn't be impossible or more difficult for someone else to develop different identifier equations to work on different materials.

[00:06:39] Speaker 04:
In fact, that would be required if you were doing any sort of different material.

[00:06:47] Speaker 02:
Well, before I do, mathematical procedures are described here in the row and enable one of skill in New York to implement the autonomous NDI described herein without undue experimentation.

[00:07:01] Speaker 04:
Yes, sir.

[00:07:02] Speaker 02:
So, I mean, to me that reads that if I didn't give you these identifier equations, then you would require undue experimentation to carry out these claims.

[00:07:16] Speaker 04:
I think what that saying is that the identified equation was provided in the specification so that one with skill in the art could practice the claims without undue experimentation.

[00:07:28] Speaker 04:
But you could, with experimentation, formulate other identified equations.

[00:07:33] Speaker 02:
With undue experimentation, you could.

[00:07:35] Speaker 04:
I don't think it would be undue experimentation.

[00:07:37] Speaker 04:
Once you have one identifier equation, you see how the basic formulation for them goes.

[00:07:42] Speaker 04:
We're not inventing a new rocket.

[00:07:44] Speaker 04:
We're just changing the rocket a little bit.

[00:07:46] Speaker 04:
It's not a wholly new equation.

[00:07:48] Speaker 04:
We would know by the equations we have, for changing material that we're inspecting, changing whether the type of material or the thickness of the material or the age of the material might be a factor, we would have that base identifier equation to modify from that point forward.

[00:08:05] Speaker 04:
But I do agree, without supplying those base identifier equations at all, then the patent would not have been enabled.

[00:08:11] Speaker 04:
We wouldn't have given something for one of our new skill in the art to practice.

[00:08:15] Speaker 04:
So that's all we were trying to do was to provide something that provided a leg up, that provided a mechanism so that they could go forward, practice the claims, and then modify from there that identifier equation for other materials that might be investigated or evaluated.

[00:08:34] Speaker 04:
And specifically, before I got back into claim construction, I wanted to spend just a short amount of time, if I could, talking about the 101 issue.

[00:08:43] Speaker 04:
I'm a little bit confused by a colleague on the other side's briefing that this is a 12b6 101 dismissal that was denied by the district court.

[00:08:53] Speaker 01:
I'm sorry.

[00:08:54] Speaker 01:
The district court did two things, a formal thing, which is to deny the motion to dismiss and a

[00:09:02] Speaker 01:
And a second thing, in the minute entry and then again in the judgment said, I find these claims to be eligible.

[00:09:15] Speaker 01:
That's more than I won't at the moment dismiss.

[00:09:21] Speaker 01:
And I assume as a result of that, when an answer and counterclaims were finally submitted,

[00:09:28] Speaker 01:
later, obviously.

[00:09:29] Speaker 01:
They didn't include a 101 affirmative defense or a 101 counterclaim.

[00:09:34] Speaker 01:
So we actually have the district court making a positive eligibility finding back at the 12b6 stage.

[00:09:43] Speaker 04:
Yes, sir.

[00:09:43] Speaker 04:
We were very ecstatic about that being on our side.

[00:09:47] Speaker 04:
But that's the reason I bring it up.

[00:09:48] Speaker 04:
The appellee's brief is a little bit confusing because they seem to raise the issue that there's no factual issues at this stage, which, of course, the district court didn't rule on.

[00:09:57] Speaker 04:
In fact, as you said, Your Honor, made the factual finding.

[00:10:00] Speaker 04:
I don't believe the hearing transcript made it part of the record from the May 3, 2021 hearing.

[00:10:05] Speaker 04:
I didn't see it in direct, but I was getting ready for this.

[00:10:08] Speaker 04:
It may be there, but on page 11 of that hearing, the district court specifically says he finds under step one and step two that the patents are valid.

[00:10:18] Speaker 04:
What hearing transcript is that?

[00:10:20] Speaker 04:
Sorry, on May 3rd, 2021.

[00:10:22] Speaker 04:
It's a motion to dismiss.

[00:10:24] Speaker 04:
Judge Ellison, I believe, Your Honor, held three motions to dismiss hearings that day, and he addressed that one at the start, I believe, Your Honor.

[00:10:33] Speaker 00:
What would you say we can find the most expensive explanation of the District Court's 3-101 decision?

[00:10:44] Speaker 04:
Your Honor, it's going to be in the hearing transcript.

[00:10:46] Speaker 04:
If it's not there, then that wasn't made part of the record.

[00:10:50] Speaker 04:
That wasn't my part of the rush.

[00:10:52] Speaker 04:
I'm not displeased with the district court's ruling on the 101 issue.

[00:10:56] Speaker 04:
But that's the memorandum.

[00:10:58] Speaker 04:
You have appendix 0298.

[00:11:00] Speaker 04:
You have the minute entry.

[00:11:02] Speaker 04:
And then you have the order, the final judgments at the end of the case, where he finds it.

[00:11:07] Speaker 04:
That's what I saw in the order, Your Honor.

[00:11:10] Speaker 01:
So back on your affirmative appeal about the claim construction, why does the combination of the specification and

[00:11:28] Speaker 01:
some of the prosecution history, and I'm interested in the first piece that you described as your first issue, whether magnetism needs to be used for detection in these claims.

[00:11:41] Speaker 01:
Why isn't basically the fairest reading of everything except the claim language itself that what's described as the invention here as opposed to

[00:11:59] Speaker 01:
describing the prior art is limited to use of magnetism.

[00:12:05] Speaker 04:
Yes, Your Honor.

[00:12:05] Speaker 04:
While I refer to the court, there's a common paragraph on all six patents, and it's mentioned on page 15 of our opening brief.

[00:12:14] Speaker 01:
Give me the column and line number of 320.

[00:12:17] Speaker 01:
Yes, Your Honor.

[00:12:19] Speaker 04:
Appendix 0034 for the 302 patent.

[00:12:22] Speaker 04:
Column 9 leads 3 to 13.

[00:12:25] Speaker 04:
Appendix 0056.

[00:12:27] Speaker 04:
If it's repeated, you don't need to... It's the same paragraph.

[00:12:31] Speaker 01:
You don't need to say... Okay, it's just different.

[00:12:33] Speaker 01:
Let's focus on what it says.

[00:12:35] Speaker 01:
Okay, yes, sir.

[00:12:38] Speaker 04:
It says, preferably the inspection head 8 relates to time-variance continuous analog signals, analogs in parentheses, because they might not be, such as, but not limited to, echo, reluctance, resistance, impedance, absorption, attenuation,

[00:12:55] Speaker 04:
or physical parameters that may or may not represent an imperfection of the MUI-9 material under investigation.

[00:13:04] Speaker 01:
And which of those items listed are not magnetism?

[00:13:13] Speaker 01:
Echo?

[00:13:15] Speaker 01:
Echo could be ultrasonic.

[00:13:17] Speaker 01:
In fact, the... No, no, no.

[00:13:19] Speaker 01:
Yes.

[00:13:19] Speaker 01:
Tell me which ones of those are necessarily not magnetism.

[00:13:26] Speaker 04:
My belief is it's going to be the echo, the absorption, the resistance.

[00:13:34] Speaker 04:
I thought absorption isn't.

[00:13:37] Speaker 04:
That's the type of mechanism.

[00:13:39] Speaker 04:
But you start by pardoning.

[00:13:41] Speaker 04:
The attenuation pardoning in the physical parameters.

[00:13:45] Speaker 01:
Right.

[00:13:45] Speaker 01:
But that last clause, what would physical parameters mean?

[00:13:52] Speaker 04:
Well, they also, we have camera systems that are in there for visual.

[00:13:56] Speaker 04:
taking visual measurements of the different materials in the investigation for whatever purposes that is, for whatever parameter they're measuring.

[00:14:07] Speaker 04:
I'm down to one minute and 30 seconds, so if the court lets me sit down and pick this back up in a second.

[00:14:14] Speaker 04:
Okay.

[00:14:14] Speaker 02:
Can I just ask one last question, I'm sorry.

[00:14:17] Speaker 02:
Yes, sir.

[00:14:18] Speaker 02:
The trans-stipulation of non-infringement, which begins at A11, that at A13, it's quite clear that it says

[00:14:28] Speaker 02:
The parties now stipulate that given the court's construction of the terms in docket 93 and 108, there is no infringement of the inserted patents, either literally or under the doctrine of equivalence.

[00:14:39] Speaker 02:
So to me, that reads like there is no possible doctrine of equivalence argument that could go back on remand.

[00:14:48] Speaker 04:
So we put that language in there so it would have left an issue open at the Federal Circuit.

[00:14:53] Speaker 04:
We thought we did have an argument.

[00:14:54] Speaker 04:
We thought that we became less convinced of that argument.

[00:14:58] Speaker 04:
So that's always stipulated.

[00:15:00] Speaker 04:
So we do currently stipulate that there's no infringement under the doctoral equipments.

[00:15:08] Speaker 04:
It's just like there's always an argument on each side of it, right?

[00:15:11] Speaker 04:
So we did have an argument.

[00:15:13] Speaker 04:
It just wasn't the strongest we didn't think at that point.

[00:15:16] Speaker 01:
I do want to ask you, if you can, can you describe in layman's language

[00:15:24] Speaker 01:
what these three identifier equations mean?

[00:15:27] Speaker 01:
I don't mean like kindergarten language.

[00:15:33] Speaker 01:
I just mean translating it into words.

[00:15:36] Speaker 04:
There are different ways that the sensors are told to act around the material.

[00:15:43] Speaker 01:
I need you to tell me what a is, little a, what x sub a is, what y sub a is, and what these, I think I understand what m is, it's just a constant, or anyway, could be a function also, and t is something you get out of a lookup table.

[00:16:01] Speaker 01:
Describe what's going on in those equations.

[00:16:03] Speaker 04:
I don't have more information about that, of what those mean beyond knowing that those are the physical characteristics that the sensors are programmed with to operate.

[00:16:11] Speaker 04:
They derive these different signals from the material by the sensor.

[00:16:37] Speaker 03:
My name is Christopher McKeon and I represent the Appellee Cross Appellant Stress Engineering Services.

[00:16:46] Speaker 03:
So I want to go real quick to the stipulation.

[00:16:48] Speaker 03:
So we stipulated to non-infringement under both literal infringement and under the doctrine of equivalence.

[00:16:55] Speaker 01:
We had filed a motion for summary judgment on doctrine of equivalence and that's when we agreed to this the stipulation that was filed with the court we feel ends the case and if this court I think our discussion was about the possibility that our disagreeing or I'm sorry about our agreeing with the even one or two or three but not four of the claim constructions that are before us whether or

[00:17:25] Speaker 01:
um, that subset of agreement might end the case.

[00:17:33] Speaker 03:
Well, right.

[00:17:34] Speaker 03:
Obviously that would be up to, um, the doubt in terms of stipulating to know.

[00:17:40] Speaker 01:
The only stipulation is the entire package of the claim constructions ends infringement.

[00:17:47] Speaker 03:
Yes.

[00:17:47] Speaker 03:
Um, yeah.

[00:17:50] Speaker 03:
And there's been no, there's no, um,

[00:17:52] Speaker 03:
There's no agreement that any one of these could be, although one of them could be.

[00:17:56] Speaker 03:
We've obviously looked at that ourselves as to which ones we could survive without, but as far as stipulating to non-infringement.

[00:18:05] Speaker 01:
Right.

[00:18:05] Speaker 01:
So let's get beyond the stipulation.

[00:18:07] Speaker 01:
What is your view?

[00:18:10] Speaker 03:
My view of which part?

[00:18:11] Speaker 01:
So I think Mr. Ramey agreed or came close to agreeing that if magnetism is required, then

[00:18:22] Speaker 01:
there cannot be infringement.

[00:18:25] Speaker 03:
I would agree with that, yes.

[00:18:27] Speaker 01:
Either literal or equivalence.

[00:18:29] Speaker 01:
I think he said maybe that's true about the equations also, but maybe that agreement, not agreement between the parties, maybe that statement on his part was limited to literal infringement because maybe you all do something

[00:18:47] Speaker 01:
sufficiently like those equations that that something would be an equivalent.

[00:18:53] Speaker 03:
So as far as autonomous is concerned, if the autonomous language is in there, then so our

[00:18:59] Speaker 03:
Our client uses... I haven't gotten to that one yet.

[00:19:01] Speaker 03:
I'm sorry.

[00:19:01] Speaker 03:
Okay.

[00:19:02] Speaker 01:
That's what, at least, I'm confused.

[00:19:06] Speaker 03:
So the infringing device, the alleged infringing devices are accelerometers that measure vibrations and structures and lasers.

[00:19:13] Speaker 03:
Neither of these are disclosed as any type of sensor or operation in these specifications.

[00:19:19] Speaker 01:
That's not a form of ultrasonics, at least the vibration piece of it?

[00:19:23] Speaker 03:
I mean, an accelerometer, I guess they do...

[00:19:25] Speaker 03:
My understanding is not a form of ultrasonics, but an accelerometer is measuring vibration and basically counting movement of left and right.

[00:19:36] Speaker 01:
What's the mechanism of conveying the vibration?

[00:19:40] Speaker 03:
It would be a transducer.

[00:19:45] Speaker 03:
So Your Honor, this is something we haven't, I don't know.

[00:19:49] Speaker 00:
So in terms of defect, then the

[00:19:51] Speaker 00:
The defect is detected by the sensors by a change in the vibrations.

[00:19:56] Speaker 03:
The change in the vibrations would indicate there may be an issue and then professional engineers would have to take a look at it and confirm what is actually happening.

[00:20:04] Speaker 03:
So Stress Engineering is a professional engineering company.

[00:20:06] Speaker 03:
They're consultants.

[00:20:08] Speaker 03:
So there is no, they're PEs.

[00:20:11] Speaker 03:
They have to sign everything.

[00:20:12] Speaker 03:
There's no automation.

[00:20:13] Speaker 03:
like they have to double check, triple check everything, and make a determination of what they think is occurring.

[00:20:19] Speaker 03:
So the vibrations would give them an indication that there could be a problem, but they would actually have to go and then do further inspection to find out what exactly was going on.

[00:20:28] Speaker 01:
Okay, so maybe you can talk about the autonomous

[00:20:32] Speaker 03:
Right.

[00:20:33] Speaker 03:
So the autonomous piece is simply this.

[00:20:35] Speaker 03:
They clearly describe their invention as autonomous.

[00:20:38] Speaker 03:
They use the word over and over again.

[00:20:40] Speaker 03:
They call the prior art remaining useful, life estimation, fit for service, and non-destructive inspection, and then they call their invention autonomous.

[00:20:51] Speaker 02:
Is your accused system not autonomous?

[00:20:54] Speaker 03:
The acute system, well, it would be autonomous in that it autonomously maybe records data, but in terms of autonomously determining whether or not there is a defect and autonomously determining distinguishing between defective and non-defective materials, that would not be something that would have to be an engineer would have to look at that and make that determination.

[00:21:15] Speaker 02:
You don't have some program computer system that's doing some signal processing on the outputs and then

[00:21:23] Speaker 02:
making a determination of what the remaining useful life is, of the material, or whether there's an imperfection, or what type of imperfection there is?

[00:21:33] Speaker 03:
I mean, there's obviously, there's a lot that goes into those determinations, and so there are computer algorithms that may be assisting with that, but at the end of the day, again, you know, when you're talking about, in these,

[00:21:47] Speaker 03:
In our client's particular situation where you're looking at, say, offshore rigs, where you need professional engineers to sign off on whether or not the structure is suitable for continued use, it would require a, at the end of the day, it would require an engineer making a final determination and to rely on AI.

[00:22:07] Speaker 02:
Does the EQ system use these equations?

[00:22:09] Speaker 03:
The EQ system does not use these equations.

[00:22:13] Speaker 03:
And as our expert has testified, Dr. Jacobs, these equations, as far as he could tell, had no use outside of this particular invention disclosure.

[00:22:26] Speaker 03:
He could not identify another use or alternative use they had.

[00:22:29] Speaker 03:
They are specific to this invention.

[00:22:36] Speaker 01:
So is there or is there not some

[00:22:40] Speaker 01:
gap, maybe even a small gap, between the language of the claim construction on this autonomous point is that, put aside the equation, it's just that the program autonomously distinguishes between defective and non-defective materials.

[00:23:00] Speaker 01:
And slightly earlier in the same construction, autonomously recognizes the nature of the material features.

[00:23:10] Speaker 01:
How does that fit with the role of your professionals signing off?

[00:23:18] Speaker 01:
It seems to me both could be true.

[00:23:21] Speaker 03:
So in the case of say like a laser,

[00:23:26] Speaker 03:
A laser scanner going into a tubular is going to detect maybe pits, cracks, but it's also going to detect pipe joints, features like that.

[00:23:35] Speaker 03:
Things that should be there, like threads, and things that shouldn't be there, like cracks.

[00:23:41] Speaker 03:
At the end of the day, an engineer is going to, at some level, have to go in and take a look at this and figure out, is this a crack?

[00:23:48] Speaker 03:
Is this supposed to be there?

[00:23:50] Speaker 03:
Or is this a design feature that was always there?

[00:23:52] Speaker 03:
And so that's where the engineer would have to make that final determination.

[00:23:58] Speaker 03:
A lot of this is controlled by regulations regarding offshore stuff.

[00:24:04] Speaker 03:
You would not be able to just use AI without some accountability.

[00:24:08] Speaker 03:
A lot of this came about as a result of the disaster in the Gulf of Mexico many years ago.

[00:24:17] Speaker 03:
And so as a way to establish accountability, you can't just

[00:24:22] Speaker 03:
send it to the computer and say, well, the computer said it, and that's what we're stuck with.

[00:24:26] Speaker 03:
They want engineers to approve this, review it, sign off on it, and second-guessing.

[00:24:31] Speaker 03:
In their prosecution history,

[00:24:35] Speaker 03:
They more than once went after prior art, where there had to be some type of verification by humans, some type of second guessing by humans.

[00:24:43] Speaker 03:
And they said that that was not, that the prior art did not apply to their patent.

[00:24:48] Speaker 01:
What would be a, or even the best example in the prosecution history of what you just said?

[00:24:55] Speaker 03:
Well, the best example would be the PTAB brief.

[00:25:01] Speaker 01:
about the later patent application?

[00:25:03] Speaker 03:
The 038?

[00:25:05] Speaker 03:
The 038 application, yes.

[00:25:07] Speaker 03:
So in that one, when describing the claims, they specifically say that the claims are autonomous.

[00:25:12] Speaker 03:
They say that the present invention uses the identifier equations.

[00:25:16] Speaker 03:
They say that the identifier equations are fundamental to its operation.

[00:25:20] Speaker 01:
Where is that?

[00:25:34] Speaker 01:
So it's 24 something.

[00:25:36] Speaker 03:
2476, your honor.

[00:25:44] Speaker 03:
And honestly, if you just start at the top where it says independent claim one, the purpose of the invention is to avoid catastrophic failures in materials.

[00:25:55] Speaker 03:
And it goes on to say tubulars are notoriously difficult to inspect for impending failures.

[00:26:00] Speaker 03:
And if we go down a little bit further, it says experts cannot be available to repeatedly and frequently examine millions of miles of tubular.

[00:26:07] Speaker 03:
And then even if the experts were universally available, experts cannot visually see faults within a tubular.

[00:26:14] Speaker 03:
And experts do not always evaluate 100% of each tubular.

[00:26:18] Speaker 03:
Accordingly, the present invention is provided with programming for non-destructive and autonomously evaluating tubulars along their entire length and area based on feature identifier equations.

[00:26:29] Speaker 03:
And they cite, too, the paragraph that's common to all the specifications, 0198.

[00:26:33] Speaker 01:
The equation is 123?

[00:26:34] Speaker 03:
That's the paragraph that says the fundamental operation.

[00:26:37] Speaker 03:
But it's the beginning of the discussion.

[00:26:39] Speaker 03:
It's, I believe, the one that your honor.

[00:26:44] Speaker 03:
Yeah, and if you go to the next page on 2477, when they talk about the material features acquisition aspect of the claim,

[00:26:57] Speaker 03:
That's where, and it's kind of about, it's the second to last claim element on the page.

[00:27:03] Speaker 03:
They say the fundamental operation is performed by identifier equations which capture the material features on 098, figure 13, they reference figure 13, again a common figure across all the specifications, and shows the data processing sequence along with the discussion 0198 through 227.

[00:27:21] Speaker 03:
The computer 20 recognizes a feature by comparing the identifiers with stored feature template database.

[00:27:28] Speaker 03:
So these paragraphs, 0198 through 227, these are common across all the specifications.

[00:27:35] Speaker 03:
They include these.

[00:27:36] Speaker 01:
And just to be clear, do you think that the reference in paragraph 198, which is also paragraph 10, and not paragraph, column 10 in the 320,

[00:27:47] Speaker 01:
kind of incorporates the slightly further down paragraphs that actually include equations 1, 2, and 3.

[00:27:55] Speaker 01:
And it would be those specific equations.

[00:27:58] Speaker 03:
Yes, Your Honor.

[00:27:59] Speaker 03:
OK.

[00:27:59] Speaker 03:
If we can.

[00:28:00] Speaker 01:
I don't think you need to.

[00:28:02] Speaker 03:
OK.

[00:28:02] Speaker 03:
But it is in, we included the specification of the 098 in the, sorry, 038 is included in here as well if you go to.

[00:28:11] Speaker 01:
Right, 2587, yeah.

[00:28:12] Speaker 03:
Yes.

[00:28:14] Speaker 03:
Right.

[00:28:15] Speaker 03:
And figure 13 clearly calls out equations 1, 2, or 3.

[00:28:18] Speaker 03:
And those are the same equations 1, 2, or 3 that are referenced.

[00:28:21] Speaker 03:
OK.

[00:28:24] Speaker 02:
What about the magnetic fields question, when there are passages in the specification?

[00:28:29] Speaker 02:
It's a very long specification, very hard to read specification.

[00:28:32] Speaker 02:
But nevertheless, there are some moments where it talks about things other than magnetic information.

[00:28:41] Speaker 02:
Yes.

[00:28:44] Speaker 02:
Line 26, there's a sentence that says the pipe's response to magnetic or ultrasonic excitation is not one of the design elements.

[00:28:54] Speaker 02:
And then it goes on and talks about MFL, magnetic flux leakage, but that could only just be an example.

[00:29:03] Speaker 02:
And then later down at line 50 at column 7, it says, regardless of the specific inspection technique utilized, the autonomous NDI device will preferably scan the material after each use.

[00:29:21] Speaker 02:
What I wonder is why doesn't messages like these open up this pattern for consideration beyond just magnetic information being received from sensors.

[00:29:34] Speaker 03:
Well, in this particular case, Your Honor, because they specifically disclaimed ultrasonics and electromagnetics as being fundamentally different technologies in their PTAB arguments.

[00:29:44] Speaker 02:
Okay, this is in the prosecution where they're trying to overcome the prior art rejection.

[00:29:48] Speaker 02:
Right, so there was an ultrasonic-based prior art reference being proposed to be combined with a magnetic information type prior art reference.

[00:29:55] Speaker 02:
Yes.

[00:29:55] Speaker 02:
And then they, in response, said,

[00:29:57] Speaker 02:
Why would you ever make that combination?

[00:29:59] Speaker 02:
Those are two different technologies.

[00:30:01] Speaker 02:
Yes.

[00:30:02] Speaker 02:
That's not the same thing as, we only do magnetic flux leakage.

[00:30:06] Speaker 02:
We do not do ultrasonic.

[00:30:09] Speaker 03:
This particular argument I didn't find very persuasive.

[00:30:13] Speaker 03:
They also reference it in their specification as being a manual process, the ultrasonics being a manual process that they were disclaiming against.

[00:30:20] Speaker 03:
If you look at APPX00

[00:30:23] Speaker 03:
3 1 at lines 4, 15 through 20.

[00:30:27] Speaker 03:
Which column?

[00:30:29] Speaker 03:
Sorry, column 4.

[00:30:35] Speaker 03:
Column 4 what?

[00:30:37] Speaker 03:
Column 4, lines 15 through 20.

[00:30:58] Speaker 02:
You're saying ultrasonic detection can only be done manually?

[00:31:01] Speaker 03:
It can't be done automatically, too?

[00:31:04] Speaker 03:
Well, I am not saying that, Your Honor, but this is what they say.

[00:31:06] Speaker 01:
I guess it seems to me the natural reading of this is it's saying manual things are deficient.

[00:31:15] Speaker 01:
We're going to do autonomous.

[00:31:18] Speaker 01:
And it lists a whole bunch of things that have been done manually, but that doesn't

[00:31:25] Speaker 01:
imply that if you can do any of those things autonomously, that that's outside the later, outside the description of the invention.

[00:31:37] Speaker 03:
I am out of time.

[00:31:37] Speaker 03:
Can I answer the question or do you?

[00:31:40] Speaker 03:
I'd appreciate that.

[00:31:41] Speaker 03:
Okay.

[00:31:42] Speaker 03:
So we, in the case of, in this particular case,

[00:31:48] Speaker 03:
Appellants have not been proposing claim language that would include all of these terms.

[00:31:54] Speaker 03:
Instead, they're just using this as more of a red herring to say that, well, we should just be entitled herring.

[00:31:59] Speaker 01:
Red herring doesn't help.

[00:32:00] Speaker 01:
But there's claim language that is, on its face, undeniably broader than magnetism.

[00:32:08] Speaker 03:
Yes, like the 910 claim 41 is exceptionally broad.

[00:32:13] Speaker 03:
And it would encompass any human inspection activity.

[00:32:17] Speaker 03:
If it's not, so some combination of autonomous, along with the identifier equations, obviously, you know, they have included other types of sensors in here, and they reference this camera, but then even in their own reply, they said that, well, a human can't inspect these pipes because they can't see below the surface.

[00:32:38] Speaker 03:
So that would preclude cameras.

[00:32:39] Speaker 03:
So while there are other sensors in here, they then make other statements later on in their prosecution history, on their appeal brief, or even in this briefing,

[00:32:48] Speaker 03:
You're out of time.

[00:32:49] Speaker 00:
You've been out of time for a little bit.

[00:32:52] Speaker 00:
I apologize for that.

[00:32:54] Speaker 00:
Did my colleagues have any other questions?

[00:32:57] Speaker 00:
I'll give you three minutes to address your counter-plan, if you do that.

[00:33:02] Speaker 00:
Thank you very much.

[00:33:18] Speaker 04:
So in other words, if I could, for just the last couple of minutes, I probably should have done a better job of explaining what this invention is.

[00:33:26] Speaker 04:
I like to think of it as you've needed the 1D systems and the 3D systems of the patent a lot.

[00:33:33] Speaker 04:
When our system is a continuous measurement, continuous evaluation of the material under investigation, such that it creates truly

[00:33:43] Speaker 04:
a three-dimensional or gets more facts about the petroleum under investigation.

[00:33:48] Speaker 04:
And you can see that, right?

[00:33:50] Speaker 04:
If I'm going to claim one of the three-to-oh, it talks about, if that's appendix 0039 through 40, at least one imperfection detection sensor where the output, set output comprising imperfection signals in a time-varying

[00:34:07] Speaker 04:
electrical format.

[00:34:08] Speaker 04:
So that's telling me that the data that it's collecting is being collected over time in a continuous nature.

[00:34:14] Speaker 04:
So you're getting, that's what the invention is.

[00:34:17] Speaker 04:
It's the continuous examination.

[00:34:20] Speaker 04:
If you're going in fact down to, pardon me, down to the eight minute floor pattern, it appendix 0247.

[00:34:29] Speaker 04:
Again, it says repeatedly scanning in the second section there, material under evaluation.

[00:34:35] Speaker 01:
In the 894, are you now talking about a claim or something else?

[00:34:40] Speaker 04:
Yes, sir.

[00:34:41] Speaker 04:
A claim will be on.

[00:34:42] Speaker 04:
My apologies.

[00:34:43] Speaker 04:
So then the other claims refer to this material evaluation system.

[00:34:49] Speaker 04:
That section that I was reading earlier in my presentation,

[00:34:54] Speaker 04:
That actually refers to a continuous evaluation system.

[00:34:57] Speaker 04:
That's there for all the material evaluation systems.

[00:35:01] Speaker 04:
So we think that that would be read by one of our very skilled arts, being how that system operates, how that material

[00:35:10] Speaker 04:
inspection system and material feature acquisition system.

[00:35:14] Speaker 04:
They called it about seven different things and six patents.

[00:35:17] Speaker 04:
So it was a little bit confusing, but all of them carry that same paragraph we talked about earlier.

[00:35:21] Speaker 04:
All of them carry that three-dimensional limitation, you know, the benefit, the advancement over the prior art is the way that they measure.

[00:35:31] Speaker 04:
I wanted to address... I'm sorry.

[00:35:35] Speaker 01:
I don't...

[00:35:35] Speaker 01:
Did you propose a claim construction that included language of the sort you're just talking about, about having to repeat the detection operation to form something that you would call three-dimensional?

[00:35:50] Speaker 01:
I thought you said everything was plain and ordinary except for a few little things that are not material here.

[00:35:56] Speaker 04:
Correct, John.

[00:35:57] Speaker 04:
And we think that one of ordinary skill in the art, plain on their knees, still doesn't construe something in a vacuum.

[00:36:04] Speaker 04:
So that one of ordinary skill in the art

[00:36:06] Speaker 04:
would construe that as plain learning meaning after having read all six patent specifications and seeing that every one of them talks about this material acquisition system

[00:36:19] Speaker 04:
that operates in a continuous manner that acquires these features so that it has more of a three-dimensional representation.

[00:36:26] Speaker 01:
And what is the bearing of this discussion in the last few minutes on the specific land construction issues?

[00:36:32] Speaker 04:
Just to explain, I'm getting to that next point.

[00:36:34] Speaker 04:
Now we were talking about the autonomous and whether or not autonomous impacted the entire features.

[00:36:40] Speaker 04:
What I'm agreeing is that we do autonomously measure

[00:36:44] Speaker 04:
the material.

[00:36:45] Speaker 04:
But then there can be manual intervention after that to look at the results from that.

[00:36:49] Speaker 04:
And in fact, because we're clearly at appendix 1954 through 1956, we clearly distinctly show that the autonomous only modifies

[00:37:01] Speaker 04:
the inspection system, and then you have aim control.

[00:37:05] Speaker 04:
So it's not modifying the control portion.

[00:37:08] Speaker 04:
So the control portion could be done automatically.

[00:37:10] Speaker 04:
It could be done by a computer program, as some of the claims require.

[00:37:14] Speaker 04:
Or it could be done by an operator.

[00:37:15] Speaker 02:
But what about just concluding that everything that's happening in these claims is happening autonomously?

[00:37:24] Speaker 02:
Do you have an objection to that?

[00:37:26] Speaker 04:
Yes, Your Honor, because there do have certain claims that modify that dependent claims for human interaction.

[00:37:34] Speaker 04:
The humans are involved in this.

[00:37:47] Speaker 04:
Specifically, Your Honor, especially claims from the 874 patent claims 2, 3,

[00:37:54] Speaker 04:
4, 5, 6, 17, 18, and 32.

[00:37:59] Speaker 04:
And for the 9-1-0 pattern, claim 27.

[00:38:03] Speaker 02:
I know, but just representative claim one of the 8-7-4, the key

[00:38:12] Speaker 02:
act in the claim is where the computer is programmed to utilize the equations and coefficients to estimate a remaining useful life of the material under evaluation.

[00:38:26] Speaker 02:
Why isn't that autonomous?

[00:38:28] Speaker 02:
Why isn't that automatic?

[00:38:33] Speaker 04:
It could be automatic.

[00:38:35] Speaker 04:
It's not limited to being automatic.

[00:38:37] Speaker 02:
I think that the measurement system... The computer is programmed to use these equations to estimate the remaining useful life of the material.

[00:38:47] Speaker 02:
That's all computerized.

[00:38:51] Speaker 04:
Yes, sir.

[00:38:52] Speaker 04:
Or it's automatic.

[00:38:56] Speaker 04:
Yes, it can function on an automatic or at least a partial automatic state that it could have an intervention of a human operator after it does that inspection to verify or to look at other things or to even combine things that aren't combined inspection methodologically.

[00:39:12] Speaker 02:
Just one more time.

[00:39:12] Speaker 02:
If we were to affirm on autonomous and affirm on the identifier equations needing to be in the claims, does that end this case?

[00:39:19] Speaker 02:
I wanted to clarify that because I didn't mean to do this question.

[00:39:23] Speaker 02:
What's the answer?

[00:39:23] Speaker 04:
No.

[00:39:24] Speaker 04:
So for those, we have a DOT, DOE argument of magnetism, we thought.

[00:39:29] Speaker 04:
We don't think we have one that's very good for the equation.

[00:39:32] Speaker 04:
So if you have fun on the equation, I didn't want to misrepresent that to the court.

[00:39:38] Speaker 04:
But we do think for autonomous, we also have a very good DOE argument as well.

[00:39:43] Speaker 04:
But you're saying for the identified equations, you don't.

[00:39:46] Speaker 04:
We think that's our weakest argument, yes.

[00:39:49] Speaker 04:
Yes, Your Honor.

[00:39:52] Speaker 04:
So we're not going to go back and if the court would have found out everything, we wouldn't go back.

[00:39:58] Speaker 02:
We know that.

[00:39:59] Speaker 02:
That's not the question.

[00:40:01] Speaker 02:
The question is identifier equations and autonomous.

[00:40:04] Speaker 01:
Autonomous, we thought we had a very strong view here.

[00:40:09] Speaker 01:
The question can't be about what you thought.

[00:40:11] Speaker 04:
Well, we still think.

[00:40:14] Speaker 02:
We had a strong deal.

[00:40:15] Speaker 02:
We argued.

[00:40:16] Speaker 02:
But you just said on identifier equations, you don't.

[00:40:19] Speaker 02:
So that's what I'm trying to figure out is, if you just affirm this case, if we were to affirm on identifier equations and autonomous only.

[00:40:29] Speaker 04:
Yes, if you did it on both, we can't make it on the identifier equations.

[00:40:51] Speaker 03:
Your Honor, I just wanted to direct your attention to our brief on Docket 38.

[00:40:56] Speaker 03:
This is page 31 of the top, or 30 and 30.

[00:40:59] Speaker 01:
Are we talking only about the 101 question?

[00:41:03] Speaker 01:
You don't get to stay here for a second.

[00:41:04] Speaker 03:
Oh, okay.

[00:41:05] Speaker 03:
You're right.

[00:41:05] Speaker 03:
I'm sorry about that.

[00:41:07] Speaker 03:
With regards to 101, I guess I don't really know if he even mentioned 101, other than

[00:41:15] Speaker 00:
We mentioned that and we asked some questions, but it wasn't much.

[00:41:20] Speaker 00:
You don't have to address it if you don't want.

[00:41:22] Speaker 03:
I will address one.

[00:41:24] Speaker 03:
Did you have a specific question you wanted me to address?

[00:41:27] Speaker 02:
This is not a counterclaim, right?

[00:41:29] Speaker 02:
This is an alternate basis to affirm non-infringement.

[00:41:35] Speaker 02:
Is that right?

[00:41:36] Speaker 03:
Yeah, if this court broadened the claims,

[00:41:43] Speaker 03:
So under the stipulation, there is no case.

[00:41:47] Speaker 03:
But if you changed or broadened those claims, then yeah, we were bringing the argument that they were.

[00:41:53] Speaker 01:
But if we concluded that there was non-infringement, then we don't have to address your 101 issue because it's not a freestanding counterclaim.

[00:42:08] Speaker 03:
That's my understanding.

[00:42:09] Speaker 03:
Yes, Your Honor.

[00:42:10] Speaker 03:
Any other questions?

[00:42:13] Speaker 03:
I really appreciate it.

[00:42:19] Speaker 00:
Thank you.

[00:42:20] Speaker 00:
I believe you have time left to address, but we didn't have any argument on the general claim, so you don't need to say anything here.

[00:42:29] Speaker 04:
No, I'm done.

[00:42:31] Speaker 00:
You're done.

[00:42:31] Speaker 00:
Thank you very much.

[00:42:32] Speaker 00:
Okay, thank you.

[00:42:36] Speaker 00:
We thank the parties for their arguments.