[00:00:00] Speaker 03:
Our last case for argument is 24-1231, Barrett Outdoor Living versus Fortress.

[00:00:08] Speaker 03:
Is it Marindola?

[00:00:10] Speaker 00:
Yes, Your Honor.

[00:00:10] Speaker 03:
Mr. Marindola, please proceed.

[00:00:13] Speaker 00:
Morning, Your Honors.

[00:00:14] Speaker 00:
May it please the court.

[00:00:15] Speaker 00:
Tyler Marandola for the appellant, Barrett Outdoor Living.

[00:00:18] Speaker 00:
The issue in the principal appeal is whether the district court erred when it held that Barrett disclaimed the non-integral bosses as part of the patents in suit.

[00:00:32] Speaker 03:
The patents in suit concern... Let's just jump right to the issue.

[00:00:36] Speaker 03:
Let's look at appendix page 499 and 500, because that's where it looks like

[00:00:42] Speaker 03:
the disclaimer to place to me.

[00:00:44] Speaker 03:
So I'm just going to take you right there and say why is that not disclaimer?

[00:00:48] Speaker 03:
The claimed integral loss.

[00:00:52] Speaker 00:
So two reasons, Yvonne.

[00:00:54] Speaker 00:
The first is the feature that Barrett is trying to distinguish over here is not, in fact, a non-integral loss at all.

[00:01:07] Speaker 00:
What the examiner cites at appendix 3-0.

[00:01:10] Speaker 03:
It doesn't matter.

[00:01:11] Speaker 03:
Our disclaimer law says it's what somebody would think you're explaining your invention is or how they would understand it, not whether you had to give something up to get past it.

[00:01:21] Speaker 03:
But if you give up more than you need to, or something you didn't even need to, you still gave it up.

[00:01:29] Speaker 00:
an applicant makes an argument, gives up claim scope, and then that claim scope gets allowed, they can argue later on, I didn't need to give up that much.

[00:01:38] Speaker 00:
That's not the case.

[00:01:39] Speaker 03:
By the way, that's not just what disclaimer is.

[00:01:41] Speaker 03:
Disclaimer can be when you don't even give up claim scope.

[00:01:43] Speaker 03:
You're just clarifying what your, well, I guess it is, you are giving up claim scope ultimately.

[00:01:49] Speaker 03:
But when you're making it clear that you're not sweeping as broad as the language might otherwise allow.

[00:01:54] Speaker 03:
So yeah, I guess it is giving up.

[00:01:55] Speaker 00:
And that's not what Barrett was doing here.

[00:01:58] Speaker 00:
So if you look at appendix 430, where the examiner cites the SureStat device, the examiner cites BOSS 150.

[00:02:10] Speaker 00:
What BOSS 150 is, is a pivot hole, just a hole, that's it.

[00:02:14] Speaker 00:
It's an integral feature, and the examiner says, that's what I'm reading on BOSS.

[00:02:19] Speaker 00:
Barrett comes back and says, that's not the claimed integral balls.

[00:02:23] Speaker 00:
No dispute about that.

[00:02:25] Speaker 00:
The examiner then responds and says, you're right.

[00:02:30] Speaker 00:
And to look at what the examiner understood Barrett to be saying, you just need to look at the next office action at page appendix 515.

[00:02:41] Speaker 00:
The examiner says, applicant argues the structure recited as a boss 150 insure stat is not a boss.

[00:02:50] Speaker 00:
Examiner agrees.

[00:02:52] Speaker 00:
Barrett was, at the very least, a competitor could not read that and say, I understand Barrett to be giving up for all time non-integral bosses.

[00:03:03] Speaker 05:
I hear your argument, but if you go back to Appendix 499 and to the Chief's point,

[00:03:11] Speaker 05:
The fact that you may have argued more than you needed to argue doesn't matter.

[00:03:18] Speaker 05:
You've given up subject matter.

[00:03:21] Speaker 00:
It does matter, Your Honor, when the examiner clearly rejects the disclaimer, rejects the view of the claims that the applicant put forward.

[00:03:29] Speaker 05:
No, you're not hearing me.

[00:03:30] Speaker 05:
It doesn't matter that he disclaimed more than he had to disclaim.

[00:03:35] Speaker 00:
Under the court's decisions in the Shire case, the MIT versus Shire, and the Malvern case that we cite in our brief, it does matter because it affects how a competitor or how the public is able to view the file history.

[00:03:51] Speaker 00:
When Barrett says, imagine, and I don't

[00:03:56] Speaker 00:
concede this, that Barrett was trying in that office action response to limit boss to an integral feature.

[00:04:04] Speaker 00:
Like I said, don't concede that.

[00:04:05] Speaker 00:
But if we imagine that that's the case, then once the examiner says, no, no, your claims are not limited to integral features, they are, in fact, and this is page 515, appendix 515,

[00:04:18] Speaker 00:
The examiner meant to refer to the boss 148.

[00:04:22] Speaker 00:
And if you look at SureSTED, there's two elements.

[00:04:25] Speaker 00:
There's 148, which is a pivot pin.

[00:04:27] Speaker 00:
And there is 148 prime, which is an integral kind of nub.

[00:04:33] Speaker 02:
But counselor, it doesn't seem like the examiner disagreed the invention was on the integral boss.

[00:04:37] Speaker 02:
But instead, just whether or not SureSTED contained an integral boss.

[00:04:42] Speaker 02:
That's the way I'm seeing I-15.

[00:04:44] Speaker 00:
I don't think that that reading is consistent with the full file history.

[00:04:48] Speaker 00:
The examiner was focused at different times on integral and non-integral features as the boss.

[00:04:54] Speaker 00:
And it seems to me that the examiner understood throughout that boss can be integral or, and this is plain as day in the specification, a separate feature like a pivot pin.

[00:05:07] Speaker 02:
But if you point to the 515 that you point us to, isn't in this particular portion

[00:05:13] Speaker 02:
that the examiner was just talking about whether or not SureStat would have an integral boss.

[00:05:19] Speaker 02:
Isn't that what the examiner is doing there?

[00:05:21] Speaker 00:
So, what the examiner is saying about SureStat is, SureStat shows both integral and non-integral bosses.

[00:05:30] Speaker 00:
and rejecting the claims again in this obfuscation response on the ground that Boss is allegedly found in Shurset.

[00:05:40] Speaker 00:
The examiner, at least as I read this response, and I think it's important to understand or remember that the legal standard here was is there clear and unmistakable surrender of claims here.

[00:05:52] Speaker 03:
I don't understand your argument.

[00:05:56] Speaker 03:
a response which says we've got, if you grant me this, you've got a response that says we have a claimed integral boss and just grant me that means you are limiting your boss to being an integral boss, okay?

[00:06:09] Speaker 03:
Just grant me that.

[00:06:10] Speaker 03:
I understand you might not love that, but just grant me that because that's the way I read 499 and 500 is you're saying we are only claiming an integral boss and the examiner comes along and says after that

[00:06:21] Speaker 03:
Well, it doesn't matter that you're only claiming an integral boss.

[00:06:24] Speaker 03:
You still haven't overcome surestead because a boss can be either integral or not integral.

[00:06:31] Speaker 03:
And that, I don't think that actually informs at all or suggests, oh, well, then you could just go back to having a broader boss.

[00:06:39] Speaker 03:
You can have one that's integral and not integral.

[00:06:41] Speaker 03:
Because you said, no, examiner, I'm only claiming an integral boss.

[00:06:45] Speaker 03:
The examiner says, well, that doesn't get you over this reference because the reference is both.

[00:06:49] Speaker 03:
The fact that you didn't win with that, this is not like collateral stop-all, where you make an argument and you have to prevail on it for it to later be a problem for you.

[00:06:57] Speaker 03:
You made this argument.

[00:06:58] Speaker 03:
You didn't do a take-back.

[00:07:00] Speaker 03:
The examiner said that argument is not good enough, but you didn't do a take-back.

[00:07:03] Speaker 03:
You didn't say, oh, nope, remember we said interval words?

[00:07:05] Speaker 03:
Nope, not an interval anymore.

[00:07:07] Speaker 03:
So...

[00:07:07] Speaker 00:
So two things on that, Your Honor.

[00:07:09] Speaker 00:
One is, from a public perception perspective, it's important, I think, to remember that this office action response, this back and forth, was about a year plus after a couple of patents had already issued with the same type of boss language.

[00:07:27] Speaker 00:
And two, the law is that if the examiner rejects the applicant's view,

[00:07:34] Speaker 00:
And the applicant then distinguishes for another reason.

[00:07:36] Speaker 00:
This is the Ecolab case.

[00:07:38] Speaker 00:
The Ecolab case was the applicant saying, plain as day, my claims are limited to a single biocide, single antimicrobial agent.

[00:07:48] Speaker 00:
The examiner saying, I don't read it that way.

[00:07:50] Speaker 03:
But that's not what the examiner said here.

[00:07:52] Speaker 03:
The examiner didn't say, I don't read your claim is limited to integral.

[00:07:54] Speaker 03:
The examiner said, it doesn't matter whether your claim is limited to integral.

[00:07:57] Speaker 03:
because the reference discloses both integral and non-integral.

[00:08:01] Speaker 03:
So the examiner never suggested that the way you purport that your claim is limited is not accurate.

[00:08:10] Speaker 00:
The examiner says at Appendix 506, Shurstad teaches a connector 130, comprising at least one side with an elongate strip having a boss 148.

[00:08:20] Speaker 00:
The boss is the pivot pin.

[00:08:23] Speaker 00:
That's what the examiner's relying on, or alternatively, 148 prime.

[00:08:27] Speaker 00:
In Shurstad.

[00:08:28] Speaker 00:
In Shurstad.

[00:08:29] Speaker 00:
And the examiner is saying that 148 in Shurstad is the same as the boss of the claims, which is a- Is there anywhere in the prosecution history where the patentee withdraws the view

[00:08:41] Speaker 02:
that the invention had a claimed integral boss.

[00:08:43] Speaker 02:
Like, is there some place you could point me to a page where you suddenly say, just kidding, I didn't even claim integral boss.

[00:08:50] Speaker 02:
Like, is there something like that?

[00:08:51] Speaker 02:
I know you wouldn't use the word just kidding, but do you understand what I'm getting at?

[00:08:54] Speaker 00:
I do, Your Honor.

[00:08:55] Speaker 00:
And I'll start from the premise that I don't think that's required.

[00:08:58] Speaker 02:
OK, but just tell me, did it happen?

[00:09:00] Speaker 00:
So with the very next office action after this.

[00:09:03] Speaker 02:
I have one question.

[00:09:04] Speaker 02:
Did it happen?

[00:09:06] Speaker 02:
Yes, no?

[00:09:08] Speaker 00:
Barrett did not say, I would draw this statement.

[00:09:11] Speaker 00:
What Barrett did say is, I got this office action, said, look, Your Honor, we disagree for various reasons, but we're amending the claims and we're amending them to be like the ones you already allowed.

[00:09:25] Speaker 00:
I think it's common ground here that the boss itself was not the distinguishing feature of the claims that the examiner allowed in the 965 and the 332 patents that issued before, or was at least not the sole distinguishing feature.

[00:09:42] Speaker 00:
And so at least my reading of that prosecution history is Barrett is saying, I made that argument.

[00:09:50] Speaker 00:
This is starting from the premise, Your Honor, that it's a clear,

[00:09:52] Speaker 00:
statement that the claims are limited to integral, which I think you understand from our blue brief we don't concede.

[00:10:01] Speaker 00:
But starting from that premise, Barrett gave that argument up and said, all right, I'll take the claims that you already allowed, Your Honor, that have the additional limitations about the picket going against the levering the strip in one direction or the other.

[00:10:16] Speaker 03:
The problem is that when you say the claimed integral boss, there was an amendment that was made.

[00:10:22] Speaker 03:
And that was adding in the language to the claim about bosses in claim one.

[00:10:29] Speaker 03:
That same language about bosses almost identically appears in the claims.

[00:10:35] Speaker 03:
The same claims that you got rid of these claims and then you went with your old claims and said we're going with our old claims.

[00:10:41] Speaker 03:
The old claims have the same language with regard to bosses as these claims which you've characterized as claiming only integral bosses.

[00:10:51] Speaker 03:
Here's the problem for me.

[00:10:53] Speaker 03:
I'm just gonna be honest with you.

[00:10:54] Speaker 03:
You're the patentee and you represent the patentee You said I am the claimed integral bosses and since I construed that as you make it clear to the world.

[00:11:01] Speaker 03:
That's all you're claiming You can't put point to something squishy after that to get around it because you are the only people that have the ability to make it clear to the world what your invention is and You've made it clear in this statement to me that

[00:11:16] Speaker 03:
So if you're going to try and do a take back, you've got to make that take back really clear.

[00:11:19] Speaker 03:
You can't be squishing on the take back, because you're the only one that has the ability to make this record clear for facetas.

[00:11:26] Speaker 00:
And I think, Your Honor, if you look back at the Ecolab case, the Malvern analytical case, the MIT versus Shire case, there is not a requirement when you're talking about the clear and unmistakable standard for the applicant to make it clear and unmistakable that it's withdrawing an alleged disclaimer.

[00:11:44] Speaker 00:
What is the distinguishing feature of those cases?

[00:11:48] Speaker 00:
The cases that they rely on are all typical disclaimer cases where the applicant makes an argument or makes an amendment that gives up scope and they get the claim.

[00:11:57] Speaker 00:
And then later on they argue, I gave up more than I needed to.

[00:12:01] Speaker 00:
The Ecolab case, the Shire case, the Malvern case are all situations where it's muddy.

[00:12:07] Speaker 00:
And the reason it's muddy is not because the applicant says, I clearly withdraw this argument.

[00:12:13] Speaker 00:
It's muddy because the examiner says, I don't agree with your view.

[00:12:17] Speaker 00:
And then the applicant says, well, here's a different argument for you.

[00:12:22] Speaker 00:
And then the claims issue somewhere down the line.

[00:12:24] Speaker 03:
Now, you're into your rebuttal time soon.

[00:12:26] Speaker 03:
Do you want to move to the 905 patent?

[00:12:28] Speaker 03:
Because I understand there are some differences on that.

[00:12:31] Speaker 03:
Is that something you want to move to?

[00:12:32] Speaker 00:
There are, Your Honor.

[00:12:33] Speaker 00:
So the 905 patent uses different terminology.

[00:12:37] Speaker 00:
It uses a projection, and it uses a series of axles.

[00:12:40] Speaker 00:
I don't think the district court, by that point of its opinion, I think, was so far down the road of the disclaimer that it kind of lumped it all together and really shouldn't have.

[00:12:51] Speaker 03:
I just want you to assume as you're making this 905 argument, I hate to say this, but assume that I don't agree with you on the disclaimer with regard to the other three.

[00:12:59] Speaker 03:
So now you've got to convince me why that disclaimer doesn't infect the 905.

[00:13:05] Speaker 00:
Sure.

[00:13:05] Speaker 00:
So a couple of reasons.

[00:13:08] Speaker 00:
One is that the patent couldn't be clearer that pivot pins like a series of axles are covered and the district court agrees with that.

[00:13:17] Speaker 00:
The patents before this had all issued

[00:13:21] Speaker 00:
with the, so let me, I guess step back.

[00:13:26] Speaker 00:
A pivot pin is distinct in the specification from a boss.

[00:13:30] Speaker 00:
It's an example of a boss, but it is distinct from it.

[00:13:33] Speaker 00:
And so when it's the same examiner all the way through, when Barrett uses a different term,

[00:13:41] Speaker 00:
even assuming that it had limited the term boss, then we assume, or we need to presume, that's how patent law works, that the series of axles term was chosen purposefully, and it was chosen because it had a different scope than the term that Barrett allegedly disclaimed.

[00:14:02] Speaker 00:
And I think the district court agreed on this.

[00:14:05] Speaker 00:
It may even be common ground between my friends and I that series of axles is not amenable on its ordinary meaning or based on the specification to an integral restriction.

[00:14:18] Speaker 00:
So I don't think there would be any basis for the public to rely on the disclaimer of boss as affecting the different term series of axles.

[00:14:27] Speaker 03:
Let me just draw your attention to one thing, which is appendix page 1651, which I think is your own brief.

[00:14:39] Speaker 03:
Tell me when you're there.

[00:14:41] Speaker 00:
I'm there, Your Honor.

[00:14:53] Speaker 03:
So it's right in the middle of the page where the paragraph begins accordingly.

[00:14:57] Speaker 00:
Yes.

[00:14:59] Speaker 03:
Barrett urges that a boss in the context of the patents institute is simply a projection or a protrusion.

[00:15:05] Speaker 03:
So basically, have you equated those two, boss and projection or protrusion, such that they're interchangeable and whatever the scope of boss is, that's the scope of projection or protrusion?

[00:15:18] Speaker 00:
I don't think so.

[00:15:20] Speaker 00:
The way that the patent talks about a projection is as broader than a boss.

[00:15:27] Speaker 00:
So the specification I believe uses the phrase projection EG boss.

[00:15:32] Speaker 00:
And so there is a distinction in the specification between a projection and a boss.

[00:15:39] Speaker 00:
And of course series of axles is itself a different term here.

[00:15:45] Speaker 00:
I understand that the 905 uses both.

[00:15:49] Speaker 00:
And your honor, I don't... I'll say it's in time for rebuttal.

[00:15:52] Speaker 00:
Thank you very much.

[00:15:52] Speaker 03:
Yep, no problem.

[00:15:53] Speaker 03:
Mr. Storm.

[00:16:04] Speaker 01:
Good morning.

[00:16:04] Speaker 01:
I think it's still morning and may please the court.

[00:16:07] Speaker 01:
Paul Storm on behalf of Fortress.

[00:16:10] Speaker 01:
All of the time we just spent discussing the disclaimer with respect to integral.

[00:16:14] Speaker 01:
There are three other issues here.

[00:16:16] Speaker 01:
The court also held that boss and the related terms are fastinalists, and either one of those, the integral term or the fastinalist term, is adequate to support the judgment that the court entered of non-infringement.

[00:16:32] Speaker 01:
Fastinalist is not limited to the word bosses in the specification, and the specification is very clear that in addition to having integral bosses as part of the invention,

[00:16:44] Speaker 01:
that the connection, that pivoting connection that's on the inside of this fence is fashionless.

[00:16:53] Speaker 01:
It's a simple sort of slide-together connection that's described as fast and easy.

[00:17:03] Speaker 01:
On fastionalists, that is plenty for us to win.

[00:17:06] Speaker 01:
I think the disclaimer on BOSS is clear.

[00:17:08] Speaker 01:
Happy to address it anymore.

[00:17:12] Speaker 01:
But I think looking at fastionalists in column one, looking at appendix 171, this is the summary of the invention.

[00:17:23] Speaker 01:
Connectors, be they shorter individual picket connector or longer multi-picket connector strips, can include small projections,

[00:17:32] Speaker 01:
e.g.

[00:17:32] Speaker 01:
bosses that extend from one surface thereof and engage holes, e.g.

[00:17:37] Speaker 01:
recesses formed in the pickets.

[00:17:39] Speaker 01:
Advantageously, this provides a fashionless but still pivotal connection.

[00:17:45] Speaker 01:
That term is repeated in column four, describing the benefit of how easy it is to put this together.

[00:17:52] Speaker 01:
connector is also cheap without the use of any threaded fasteners.

[00:17:56] Speaker 01:
That's describing the connection between the connector strip and the picket.

[00:17:59] Speaker 04:
But that doesn't necessarily mean that there must be fastenerless.

[00:18:08] Speaker 04:
It just means that, well, it'll work without a fastener.

[00:18:11] Speaker 04:
That doesn't mean that, you know, it's

[00:18:14] Speaker 04:
It must be fashionless.

[00:18:17] Speaker 01:
I believe that the fair reading of those in context does mean that they have to be fashionless, but the specification continues in column five.

[00:18:25] Speaker 01:
In column five, there's a description of these figures seven A, B, C, and D. Two of them are the prior art that have a fastener all the way through from the rail through into the picket.

[00:18:38] Speaker 01:
And two of them are the invention where they have the boss on the inside.

[00:18:44] Speaker 01:
they describe the fastener of the prior artist as describing the specification, and then describe the invention as in stark contrast.

[00:18:52] Speaker 01:
And I think if you put those disclosures together, it's clear that the court's construction, the bosses are both integral and fastenerless is correct.

[00:19:02] Speaker 03:
I would also- If I don't agree with you on fastenerless,

[00:19:06] Speaker 03:
But I do agree with you on interval, if that's the way it works.

[00:19:10] Speaker 03:
So that takes care of maybe three patents, right?

[00:19:13] Speaker 03:
965, 332, and 164.

[00:19:15] Speaker 03:
But what about 905?

[00:19:17] Speaker 01:
905 uses the term projection.

[00:19:21] Speaker 01:
And as I just pointed out, a couple of things there.

[00:19:25] Speaker 03:
Yeah, but I mean what you pointed out was what made me want to draw you to the 905 because at column one it says can include small projections EG bosses, which means for example bosses.

[00:19:37] Speaker 03:
Right.

[00:19:38] Speaker 03:
That would suggest that projections are more than just bosses.

[00:19:43] Speaker 03:
They're capable of including other things.

[00:19:45] Speaker 03:
IE would be one in the same, right?

[00:19:48] Speaker 03:
But EG is like for an example.

[00:19:51] Speaker 03:
Like fasteners, for example, screws.

[00:19:53] Speaker 03:
There's other kinds of fasteners.

[00:19:55] Speaker 03:
So why ought we to import an integral limitation into the word projections?

[00:20:02] Speaker 03:
under those circumstances?

[00:20:04] Speaker 01:
There's two reasons.

[00:20:05] Speaker 01:
I was going to make the point, and it goes here, but it goes to the discussion about no goal as well.

[00:20:12] Speaker 01:
A significant part of Barrett's argument here is pointing to things that the district court never saw or heard.

[00:20:19] Speaker 01:
And I think that's... What do you mean?

[00:20:21] Speaker 01:
Well, for example, you heard Mr. Maradola say that the disclaimer wasn't what it appears to be because the examiner didn't accept it, and then he pointed to... Okay, so none of that is... First off, prosecution history is topple, disclaimer, all legal questions.

[00:20:36] Speaker 03:
That means I get to... And this all was part of the record.

[00:20:38] Speaker 03:
It's part of the prosecution history.

[00:20:39] Speaker 03:
So it doesn't honestly matter to me whether he argued that precisely to the district court, because I review it de novo.

[00:20:47] Speaker 03:
And I have to look at all that stuff.

[00:20:49] Speaker 03:
So could you focus on my question, though, which is why in light of the specification, which says projections, which I understand to mean projections are more than just losses in the same way fasteners are more than just screws?

[00:21:04] Speaker 01:
Right.

[00:21:04] Speaker 01:
That is correct.

[00:21:05] Speaker 01:
The projections, e.g.

[00:21:07] Speaker 01:
bosses, means that projections are more than bosses.

[00:21:10] Speaker 01:
We agree on that.

[00:21:12] Speaker 01:
The reason that the limitations should still be there because

[00:21:16] Speaker 01:
The entire, well first off, projections mean they project from something, right?

[00:21:20] Speaker 01:
You have the connector strip, the description of how the connector strips are made shows that... Yeah, but a screw projects out of a board.

[00:21:30] Speaker 03:
Right.

[00:21:30] Speaker 03:
It doesn't mean it's integral.

[00:21:32] Speaker 01:
That's true.

[00:21:33] Speaker 01:
A screw is not necessarily integral.

[00:21:35] Speaker 01:
And this is one of those arguments that was not made below.

[00:21:40] Speaker 01:
When we put these issues before the court, Barrett did not respond by arguing any difference.

[00:21:46] Speaker 01:
In fact, they argued that projections, losses, nubs, all those things were the same in terms of the briefing and the argument below.

[00:21:53] Speaker 02:
So are you arguing with respect to projection that the same disclaimer that we're talking about for losses would apply to projection?

[00:22:02] Speaker 01:
We are.

[00:22:03] Speaker 02:
And why?

[00:22:04] Speaker 02:
Given the example and the EG and all of that that Chief Judge Moore talked you through, why do you say that it should apply?

[00:22:11] Speaker 01:
Because the specification and the prosecution doesn't actually make a difference between a projection of a boss.

[00:22:18] Speaker 01:
The language does.

[00:22:19] Speaker 01:
I mean, there's no debate about how the language reads.

[00:22:21] Speaker 02:
So we just talked about how the specification made a difference between bosses and projections.

[00:22:26] Speaker 02:
We talked about the EG versus IE, or I didn't, but the Chief talked to you about those.

[00:22:31] Speaker 01:
Yeah.

[00:22:33] Speaker 01:
throughout the actual description of the invention and in the prosecutions that we talked about, including, for example, the distinction over culture, where the actual disclaimers made the claimed integral boss.

[00:22:49] Speaker 01:
They don't make any argument that projections are different.

[00:22:51] Speaker 01:
When they got to adding projection to the claims, they don't argue that it's in any sense different, even though that language is there with the EG bosses.

[00:23:02] Speaker 01:
I would add, I mean that's basically in the context of what they're talking about here in terms of how this is manufactured, quick and easy to assemble, and adding like a screw as a projection.

[00:23:13] Speaker 03:
So they're arguing to us on appeal the projections are different.

[00:23:17] Speaker 03:
Right.

[00:23:17] Speaker 03:
But you're saying they did not argue it before.

[00:23:19] Speaker 01:
They did not.

[00:23:22] Speaker 01:
And I believe we cited to the PowerPoint they gave and the Markman, among other things, when they basically conceded they were the same.

[00:23:27] Speaker 01:
So we didn't vote on that.

[00:23:29] Speaker 04:
Where is that PowerPoint?

[00:23:30] Speaker 04:
Is it in the appendix?

[00:23:32] Speaker 01:
It's in the appendix.

[00:23:51] Speaker 01:
While he's looking at that appendix side, if I can briefly touch on our cross-appeal?

[00:23:56] Speaker 03:
Sure.

[00:23:57] Speaker 01:
Go ahead.

[00:23:58] Speaker 01:
Okay.

[00:23:58] Speaker 01:
We cross-appealed on two issues, both indefiniteness.

[00:24:02] Speaker 01:
Those issues are the language of the claims that the pivoting of the picket causes the connector strip to slide and what we refer to as the slidably engaged terms.

[00:24:17] Speaker 01:
On the causes terms, I think it's very straightforward.

[00:24:20] Speaker 01:
The way the invention is described as working, this is in the specification, it's in the prosecution history.

[00:24:28] Speaker 01:
I think it's really undisputable is that there's a picket that has an opening around it and the picket can be pivoted, moved an angle from vertical a certain degree before it hits the edge of the picket opening.

[00:24:47] Speaker 01:
And in that movement from vertical to the edge of the picket opening, there's no physical effect or physics lever effect that would cause the connector to slide.

[00:24:59] Speaker 01:
So in that initial range of angles, the pivoting of the picket does not cause the connector to slide.

[00:25:11] Speaker 01:
Then at some point,

[00:25:12] Speaker 01:
depending on the size of the picket, the size of the opening, and the angle that is attempted to be made.

[00:25:20] Speaker 01:
Then a force is applied to the connector strip.

[00:25:25] Speaker 01:
I'm just describing the specification and the disclosure of the invention.

[00:25:28] Speaker 01:
A force is applied to the connector strip, and then it starts to slide.

[00:25:33] Speaker 01:
That leaves unclear when we're looking.

[00:25:35] Speaker 01:
This is a functional term in an apparatus plane that leaves unclear

[00:25:41] Speaker 01:
When we're looking at a physical product, our accused product, which depending on the size of the picket, the size of the opening, the desired final angle, whether there's even any change in angle at all, whether there's ever a force applied to that which is called a connector strip in our product, such that there might be a cause if the connector strip would slide.

[00:26:08] Speaker 01:
And because all of those things are unclear and not specified in the claim, we think that claim is indefinite.

[00:26:18] Speaker 01:
The cause's terms are indefinite.

[00:26:21] Speaker 01:
Likewise, slidably engaged is a functional term for an apparatus claim.

[00:26:31] Speaker 01:
in order for two things to be slightly engaged with each other.

[00:26:35] Speaker 01:
There was, you know, testimony and it's not significantly disputed that you need to know the surface roughness, whether there's lubricant, whether there's an adhesive, what the force applied is, what the surface, you know, the area of surface contact, things like that, none of which is in the specification.

[00:26:57] Speaker 01:
You know, basically as a member of the public, we're entitled to know what it takes to avoid infringing this patent.

[00:27:04] Speaker 01:
There's no dispute that if we want to make sure something slides, that's easy.

[00:27:09] Speaker 01:
You make the surfaces smooth.

[00:27:11] Speaker 01:
You make the area of contact small, things like that.

[00:27:15] Speaker 01:
The point for definiteness is not what is the center point or the sweet spot of the claim, but what is the edges so that we can find our way outside the scope of the claim.

[00:27:26] Speaker 01:
There's nothing in specification that provides guidance that would help us to avoid a situation where something is slightly engaged when that's something that we want to avoid.

[00:27:38] Speaker 01:
And do you have a slide?

[00:27:41] Speaker 01:
The PowerPoint dealing with this argument that the difference between projection and BOSS was not made by Barrett below is appendix 2129 through 2137.

[00:27:53] Speaker 01:
Also, in their briefs, they don't make a distinction apart from that.

[00:27:57] Speaker 01:
21.29 to 21.37.

[00:28:01] Speaker 01:
I am in my rebuttal time, obviously happy to address this.

[00:28:14] Speaker 03:
Well, you can't address this in rebuttal.

[00:28:16] Speaker 03:
That's not how your rebuttal works.

[00:28:18] Speaker 01:
I'm happy to address it now, is what I meant to say.

[00:28:26] Speaker 01:
I guess I'm saying if you have questions, I'm happy to address them.

[00:28:28] Speaker 03:
Our point is... So you basically think they waived it.

[00:28:31] Speaker 03:
So I'm trying to figure out, because I'll tell you, I don't think that production of Bosch should be construed as identical.

[00:28:38] Speaker 03:
But I certainly see your point that those were the representations they made.

[00:28:41] Speaker 03:
They didn't just make it, by the way, here.

[00:28:43] Speaker 03:
They also made it in the argument on the Boston hearing.

[00:28:46] Speaker 03:
So I don't...

[00:28:47] Speaker 03:
I don't know what to do with that.

[00:28:48] Speaker 03:
Do I deem it waived on appeal?

[00:28:51] Speaker 03:
Because I mean, climate construction is a question of law.

[00:28:54] Speaker 03:
You can't stipulate to a question of law.

[00:28:56] Speaker 03:
You can only stipulate to fact questions.

[00:28:59] Speaker 03:
So I don't know what to do with that.

[00:29:00] Speaker 03:
I've got to make a determination as a matter of law.

[00:29:04] Speaker 03:
Does it matter that they argue the wrong thing?

[00:29:07] Speaker 01:
I think it has to be.

[00:29:09] Speaker 01:
That to me gets back a little bit to this argument about the prosecution history that they didn't submit to the exam.

[00:29:14] Speaker 01:
At some point, district judges have a hard job.

[00:29:18] Speaker 01:
And if they can be reversed for something they never saw or never dealt with, that just seems to make it worse.

[00:29:24] Speaker 01:
And that would be part of the reason why we would say waiver, even though it's an issue for me.

[00:29:30] Speaker ?:
OK.

[00:29:40] Speaker 00:
Thank you, Your Honor.

[00:29:41] Speaker 00:
I have a few points to make.

[00:29:42] Speaker 00:
The first on fastener list.

[00:29:45] Speaker 00:
Just very briefly, the specification is pretty clear here that the fastener list, two things.

[00:29:52] Speaker 00:
One, always describing an embodiment.

[00:29:56] Speaker 00:
And two, the contrast is to prior art that fastens the rail directly to the picket.

[00:30:04] Speaker 00:
not the connector strip to the picket.

[00:30:08] Speaker 04:
Am I correct that even if you convince us on the fastener list and you don't convince us on the integral that you lose,

[00:30:19] Speaker 00:
So true on, I guess, everything except for the 905 patent.

[00:30:26] Speaker 00:
There, there's still the issue of projection and series of axles.

[00:30:32] Speaker 02:
On that point, I want to... I actually thought it was... Was there any place where you explained to the district court that you wanted a different sort of view for projection versus loss?

[00:30:47] Speaker 00:
So, no.

[00:30:50] Speaker 00:
What the below we said was all of these terms should get their ordinary meaning.

[00:30:56] Speaker 00:
We explained in our blue brief why, or sorry, the yellow brief, why we don't think the statements that were made below were equivalent to saying the plain and ordinary meaning is exactly the same.

[00:31:08] Speaker 00:
And I wanted to point out in my rebuttal time that

[00:31:12] Speaker 00:
Fortress actually agrees the on in their red brief at page 35 They have a heading that is pins are not bosses They they agreed or at least are arguing here that Projection and series of axles is a distinct thing in the specification from a boss And so I don't see how we go back how they go back on that now and say well I take it all back with respect to the 905.

[00:31:38] Speaker 00:
It's exactly the same

[00:31:40] Speaker 00:
It seems to me that the arguments below were not saying that the plain and ordinary meaning are exactly the same on all of these.

[00:31:48] Speaker 00:
To touch just briefly on the cross- But the parties lumped them all together.

[00:31:51] Speaker 03:
I mean, that's what 2129 and 2130 are doing, right?

[00:31:57] Speaker 03:
That's your PowerPoint?

[00:31:58] Speaker 00:
So there were, I mean, there were 33 terms, I think, discussed at the Markman.

[00:32:03] Speaker 00:
So a lot of them were lumped together.

[00:32:05] Speaker 00:
The district court, though.

[00:32:06] Speaker 03:
The seven boss terms, the seven boss terms, the seven boss terms, the Marvel boss terms.

[00:32:12] Speaker 03:
projector.

[00:32:13] Speaker 03:
So it's not the district courts or projections.

[00:32:14] Speaker 03:
It's not the district courts that lumped it together.

[00:32:16] Speaker 03:
It seems like you both lumped it together.

[00:32:19] Speaker 00:
No, that's right.

[00:32:19] Speaker 00:
And I think the district court recognized that there was a separate issue.

[00:32:22] Speaker 00:
She had a separate heading in her opinion that talked about series of axles and found that the disclaimer for bosses applied to series of axles.

[00:32:31] Speaker 03:
What about projections?

[00:32:34] Speaker 00:
She does, I think, describe those terms as used

[00:32:41] Speaker 00:
the same in the claims.

[00:32:43] Speaker 00:
And that's a conclusion that we take issue with.

[00:32:46] Speaker 02:
And these are your slides?

[00:32:48] Speaker 02:
Your side slides?

[00:32:50] Speaker 00:
Those were Barrett's slides.

[00:32:59] Speaker 00:
Yes.

[00:33:00] Speaker 00:
I apologize, Yaron.

[00:33:01] Speaker 00:
You're talking about what starts at appendix 2103.

[00:33:04] Speaker 00:
2129.

[00:33:06] Speaker 03:
That's the slides we're talking about.

[00:33:08] Speaker 03:
2129, 2130.

[00:33:13] Speaker 00:
If I could just briefly touch on the contingent cross appeal, I suppose, it's probably appropriate to call it, since the court only needs to reach it if it finds at least one of the claims go our way.

[00:33:27] Speaker 00:
I don't think I've ever seen an indefiniteness case

[00:33:30] Speaker 00:
where, at least with respect to the cause's terms, the parties agree on exactly how the invention works, that there's a pivot hole, or a picket hole, the picket goes in the hole, and then as you lever the picket one way or the other, it contacts the edge of the hole and moves the connector strip from one side to the other.

[00:33:49] Speaker 00:
That's an ordinary meaning of the word cause.

[00:33:53] Speaker 00:
It's an easily understandable meaning of the word cause from the specification.

[00:33:57] Speaker 00:
District courts have construed this term before in these patents and understood it exactly that way.

[00:34:06] Speaker 00:
I don't understand.

[00:34:07] Speaker 00:
Their argument was premised on cause having a very specific and somewhat idiosyncratic meaning of a one-to-one relationship between input and outcome.

[00:34:16] Speaker 00:
That is not the meaning that is, one, ordinary even in isolation, but two, not the meaning that the patents give to the term.

[00:34:25] Speaker 00:
On the slideable terms,

[00:34:28] Speaker 00:
The I think the easiest case way faster.

[00:34:32] Speaker 03:
Yeah, I'm gonna have to call it so You have a I'll give you a well how much time rebuttal times you have how much rebuttal time does this one have?

[00:34:42] Speaker 03:
Okay, you've got a minute and 38 seconds limited to the cross appeal.

[00:34:48] Speaker 01:
Thank you, Your Honor

[00:34:51] Speaker 01:
I think I can do it in less than a minute, 38.

[00:34:54] Speaker 01:
Claim 1 of the 965 raises this issue about causes, and part of the issue is that the claim concludes with, in such a manner, that's pivoting causes, in such a manner that the pivotal range of the plurality of pickets relative to the plurality of the race is at least about 20 degrees in each direction.

[00:35:11] Speaker 01:
That 20 degrees is a requirement of the claim.

[00:35:14] Speaker 01:
It starts from the vertical and moves either direction.

[00:35:18] Speaker 01:
And everybody knows that does not happen until you hit the edge.

[00:35:22] Speaker 01:
So this claim does not describe the invention.

[00:35:25] Speaker 01:
And we can't figure out what it means that we're trying to apply it to our product.

[00:35:28] Speaker 01:
That's why the causes terms are indefinite.

[00:35:32] Speaker 03:
OK.

[00:35:32] Speaker 03:
I thank both counsels.

[00:35:33] Speaker 03:
The case is taken under submission.

[00:35:35] Speaker 03:
Thank you.