[00:00:00] Speaker 00:
Our last case this morning is Richard Graham and Reaper Solutions versus Deere and Company, 2024, 1598.

[00:00:08] Speaker 00:
Mr. Young.

[00:00:09] Speaker 04:
Good morning, and thank you, Your Honors.

[00:00:15] Speaker 04:
May it please the Court, the District Court erred by finding Claim 12 of the 395 patent indefinite due to the lack of disclosed algorithm of the control means limitation.

[00:00:26] Speaker 04:
The District Court's findings were based on two overriding errors.

[00:00:30] Speaker 04:
First, the district court erred by reading in an unclaimed function of controlling lateral position of the corn header and subsequently limiting corresponding structure to dialomatic number two, which includes a microprocessor and also is capable of performing the unclaimed function.

[00:00:45] Speaker 04:
Simultaneously, the district court excluded dialomatic number one, which does not include a microprocessor, but is capable of performing the claimed function.

[00:00:56] Speaker 04:
The court's second error occurred when it failed to recognize that a person of ordinary skill in the art would have understood the specification to disclose a three-step prose algorithm for the dialomatic number two.

[00:01:09] Speaker 04:
The means plus function claim of claim 12, or limitation of claim 12, rather,

[00:01:13] Speaker 04:
for sites of control means for raising or lowering the header in accordance with said first signal in maintaining the header a designated height above the soil.

[00:01:22] Speaker 04:
I will refer to this as the claimed function.

[00:01:25] Speaker 04:
The district court was aware of the correct means plus function claim construction methodology in this case, and it cited Williamson, including for its recognition that the means plus function claim covers only the structure corresponding to the claimed function.

[00:01:39] Speaker 04:
The district court also understood that it should first identify the claimed function and then identify what structure, if any, corresponds to it.

[00:01:47] Speaker 01:
You're no longer arguing that the district court erred by conducting the mean plus function out of work, right?

[00:01:53] Speaker 01:
Is that still your argument?

[00:01:55] Speaker 04:
We understand that the court understood the order.

[00:01:57] Speaker 04:
We believe that the court misapplied the order in which it should have applied those steps.

[00:02:03] Speaker 04:
And that's demonstrated by the fact that the court's first focus was on identifying a specific commercially available structure that had the capacity to control lateral position.

[00:02:15] Speaker 04:
If it had gone through the correct steps, it would have looked for and identified the claim's function first.

[00:02:20] Speaker 02:
Can you pass to a specific JA page where you contend that the court erred in terms of its application steps?

[00:02:27] Speaker 04:
Yeah, absolutely.

[00:02:28] Speaker 04:
Appendix 30 is the primary page.

[00:02:32] Speaker 04:
On Appendix 30, the court eliminated dialomatic number one because it lacks the capacity to control lateral position, whereas version number two does not.

[00:02:45] Speaker 04:
And the district court's order hinged on that finding.

[00:02:51] Speaker 04:
That passage was very consequential because it limited the scope of the corresponding structure, which then paved the way for the court's indefiniteness finding.

[00:03:00] Speaker 04:
But the district court was informed throughout, through the testimony of appellant expert Mr. Smith, that a person of ordinary skill in the art would have understood that Deere, John Deere sold combines incorporating two types of head controllers, exemplified by dialomatic one and dialomatic two.

[00:03:18] Speaker 02:
Let me take a step back here.

[00:03:19] Speaker 02:
Did the parties agree?

[00:03:21] Speaker 02:
And my understanding is they did, that control means is the means plus function term.

[00:03:26] Speaker 02:
Correct.

[00:03:26] Speaker 02:
Yeah.

[00:03:26] Speaker 02:
And did the parties also agree on the corresponding structure?

[00:03:29] Speaker 02:
I think that you indicate that in your briefing, that at least the parties, I'm taking this separate, I'm separating away from what the court did, but did the parties also agree on the corresponding structure?

[00:03:39] Speaker 04:
Yes.

[00:03:40] Speaker 04:
Yes, Your Honor.

[00:03:40] Speaker 04:
The parties agreed that there was a controller interface, a head controller, and a hydraulic control means or system.

[00:03:48] Speaker 02:
OK.

[00:03:48] Speaker 02:
So what do you contend is the proper

[00:03:51] Speaker 02:
corresponding structure to the right function here for this limitation that is in dispute?

[00:04:00] Speaker 04:
All three of those.

[00:04:01] Speaker 04:
But in particular, the dispute in this case is focused on the head controller.

[00:04:06] Speaker 04:
And the dispute is focused on the head controller because the patent specification specifically refers to deer controllers or controllers on deer combines.

[00:04:17] Speaker 04:
A person of ordinary skill in the art understood at the time

[00:04:20] Speaker 04:
of the patent that there were two different types of deer controllers, one of which consisted generally of circuitry and a relay, the other of which consisted generally of circuitry and a microprocessor in place of a relay, if you don't mind.

[00:04:35] Speaker 00:
So you maintain that the disclosure in the patent concerning the lateral position does not disqualify that from being structure supporting the claim.

[00:04:52] Speaker 04:
the requirement or the language about controlling lateral position has no relevance to determining what structure performs the claimed function.

[00:05:05] Speaker 02:
Maybe just taking a step back, what do you contend is the right function?

[00:05:09] Speaker 02:
And why don't you walk us through briefly where we can see the support for that being the correct function here?

[00:05:15] Speaker 04:
Yeah, the correct function,

[00:05:19] Speaker 04:
The claimed function is for raising or lowering the header in accordance with said first signal in maintaining the header at designated height above the soil.

[00:05:27] Speaker 04:
And that can be found in claim 12, column eight, lines 51 through 53.

[00:05:49] Speaker 00:
Which column?

[00:05:51] Speaker 04:
Column 8.

[00:05:53] Speaker 04:
Claim 12.

[00:05:54] Speaker 04:
Column 8.

[00:05:54] Speaker 04:
Lines 51 through 53, I believe.

[00:06:02] Speaker 04:
So when a person of ordinary skill in the art understands that there are two types of deer head controllers, they understood that that was exemplified by diomatic number 1 and diomatic number 2.

[00:06:13] Speaker 04:
As I mentioned before, Dial-O-Matic number one consisted primarily of circuitry with a relay.

[00:06:18] Speaker 04:
Dial-O-Matic number two consisted primarily of circuitry with a microprocessor in place of the relay.

[00:06:24] Speaker 04:
Now, it's undisputed in this case that both versions one and versions two perform the claimed function of raising or lowering the header.

[00:06:31] Speaker 04:
Mr. Smith testified that version one is corresponding structure for the claimed function, and his testimony was unrebutted.

[00:06:39] Speaker 04:
Deer's fact witness, Dr. Miller, also acknowledged this much, stating that dialomatic one, quote, controls the height of header above the ground, and that can be found at appendix 2474, paragraph eight.

[00:06:51] Speaker 02:
Now, just for semantics purposes, when you're referring to version one, that's the same as dialomatic one?

[00:06:57] Speaker 04:
Yes.

[00:06:58] Speaker 04:
Yes.

[00:06:58] Speaker 04:
So dialomatic number one, version one, dialomatic number two, version two.

[00:07:02] Speaker 04:
I apologize for the confusion there.

[00:07:04] Speaker 02:
I just want to make sure we're all on the same page.

[00:07:05] Speaker 02:
No.

[00:07:06] Speaker 04:
Understood.

[00:07:06] Speaker 04:
Understood.

[00:07:07] Speaker 04:
Now, notwithstanding the evidence before the court, the district court determined that the corresponding structure was limited only to dialomatic number two because of its capacity for controlling lateral position.

[00:07:18] Speaker 00:
Two and three required algorithms, right?

[00:07:21] Speaker 04:
Two and three both include our microprocessor based.

[00:07:27] Speaker 04:
So, yes.

[00:07:29] Speaker 04:
Because they have microprocessors instead of circuitry.

[00:07:32] Speaker 04:
Yes, they do.

[00:07:33] Speaker 00:
And sir, they were not adequate structure, supporting structure for the means clause.

[00:07:39] Speaker 00:
So you're relegated to one, right?

[00:07:43] Speaker 04:
No, they are adequate structure because a person of ordinary skill in the art would have understood the specification disclosed as an algorithm, a prose algorithm, a three-step prose algorithm, which provides the algorithm necessary for two and three.

[00:07:57] Speaker 00:
But that's not what the court decided, right?

[00:07:59] Speaker 04:
Correct.

[00:08:00] Speaker 04:
The court did not decide that.

[00:08:02] Speaker 00:
In fact, the court decided the contrary.

[00:08:05] Speaker 04:
The court did decide the contrary.

[00:08:07] Speaker 04:
And in doing so, the court applied the wrong law, or incorrect law, I should say.

[00:08:11] Speaker 04:
This court issued its CISVEL decision in early October of 2023.

[00:08:15] Speaker 04:
Appellants promptly provided that decision to the court.

[00:08:19] Speaker 01:
So let's go back to what you were talking about with Judge Worry.

[00:08:25] Speaker 01:
So the district court erred by adding structure that was not necessary in order to perform the claim function.

[00:08:33] Speaker 04:
That's correct.

[00:08:34] Speaker 04:
And that narrowed the scope of corresponding structure.

[00:08:37] Speaker 01:
And you claimed that that was the addition of additional structure.

[00:08:43] Speaker 04:
Correct.

[00:08:43] Speaker 04:
The controlling lateral position language does not come from the claim.

[00:08:47] Speaker 04:
It only comes from the specification, and it comes up one time.

[00:08:51] Speaker 04:
The claimed function has to be determined based on what is recited in the claim.

[00:08:55] Speaker 04:
By virtue of adding in a controlling lateral position, the court effectively failed to perform the first step properly.

[00:09:04] Speaker 01:
And if we were to agree with that position, what's the impact on the remainder of the case?

[00:09:10] Speaker 01:
Is that dispositive?

[00:09:12] Speaker 04:
The case has to go back.

[00:09:15] Speaker 04:
Yes, the claim construction has to be fixed, and you have to vacate the indefiniteness finding.

[00:09:21] Speaker 02:
I think just as a follow-up to Judge Raina's question, there are a series of issues that were raised here.

[00:09:26] Speaker 02:
If we were to agree with you that the district court erred in terms of adding in this additional function, which then had some impact potentially on the corresponding structure, which of the various issues that you raised do we actually need to decide here?

[00:09:41] Speaker 04:
need to examine the court's claim construction, which was incorrect in this case for the reasons I've identified.

[00:09:47] Speaker 04:
It failed to properly identify the claims function and added in an unclaimed function of controlling lateral position.

[00:09:55] Speaker 04:
In addition to that,

[00:09:56] Speaker 04:
that impacted what embodiments were included within the scope of corresponding structure.

[00:10:03] Speaker 04:
The scope of corresponding structure should have included Dylematic 1, which does not include a microprocessor and therefore does not require an algorithm, as well as Dylematic number 2, which does include a microprocessor and therefore

[00:10:17] Speaker 04:
requires an algorithm, but the algorithm is there as a three-step algorithm in the specification, and that's noted by appellant's expert Mr. Smith.

[00:10:27] Speaker 02:
Which issues potentially do we not need to reach if we agree with you that there was an error in the claim construction?

[00:10:34] Speaker 02:
Are there certain issues that we wouldn't have to reach as a consequence of that is my question to you.

[00:10:38] Speaker 04:
I think if you reach those issues, that's at the core of

[00:10:44] Speaker 04:
everything that we've raised here is basically the court's failure to apply black letter law when it comes to means plus function claim construction.

[00:10:55] Speaker 04:
Now, I mentioned earlier that the court misapplied or failed to apply the proper case law with respect to the Mr. Smith's description of the algorithm in this case.

[00:11:09] Speaker 04:
The Sisfeld Court applies here, and it came out about a month before the court issued its claim construction order.

[00:11:15] Speaker 04:
We provided a copy of that to the court immediately.

[00:11:17] Speaker 04:
The Sisfeld Court decision explains that when a specification includes some structure, like this one does, then the rule corresponding to NOAA Group 2 applies, meaning the specification need not disclose all of the details of the algorithm.

[00:11:32] Speaker 04:
The Court further provided that an expert may testify about what the disclosures in the specification would have meant to a skilled artisan.

[00:11:41] Speaker 04:
Ultimately, the district court did not apply CISPEL, and thus it did not recognize that the specification need not disclose all the details of the algorithm to satisfy the definiteness requirement, so long as what is disclosed would have been sufficiently definite to a skilled artisan.

[00:11:57] Speaker 00:
Is this patent expired?

[00:11:59] Speaker 04:
I'm sorry, what's that?

[00:12:00] Speaker 00:
Is this patent expired?

[00:12:02] Speaker 04:
It has, yes.

[00:12:03] Speaker 00:
Is there other litigation going on?

[00:12:05] Speaker 04:
No, this is the only litigation.

[00:12:08] Speaker 00:
the district court um... you're into your bottle time you can continue or save it as you wish.

[00:12:13] Speaker 04:
I'll save it.

[00:12:16] Speaker 00:
Thank you your honor.

[00:12:19] Speaker 03:
Thank you your honor.

[00:12:21] Speaker 03:
May please the court Laura Liddickson for Deer and Company.

[00:12:25] Speaker 03:
The court should not lose sight here of the ultimate question, which is whether the 395 patent meets the quid pro quo for means plus function claiming by disclosing adequate structure clearly linked to the claimed control means.

[00:12:39] Speaker 03:
The answer to that question is simple.

[00:12:41] Speaker 03:
It does not.

[00:12:42] Speaker 03:
The district court here correctly found that claim 12 and its dependents

[00:12:48] Speaker 03:
failed to meet that quid pro quo based on its findings, first, that the 395 patent specification does not disclose, describe, discuss the dialomatic number one controller.

[00:13:01] Speaker 03:
and that the specification does not provide any disclosure of an algorithm.

[00:13:07] Speaker 03:
I want to start with the argument that Reapers' Council makes about the district court's process in identifying the function and the structure.

[00:13:14] Speaker 03:
To your honor's question, Judge Reyna, the district court did apply the process in the correct order.

[00:13:20] Speaker 03:
The only thing that appears in the district court's decision before its identification of the claimed function is a summary of the party's arguments.

[00:13:28] Speaker 03:
Then on appendix page 29, the district court recites the function straight from the claim.

[00:13:34] Speaker 03:
Nowhere in the subsequent pages of its opinion or before that does the district court go through a claim construction analysis or otherwise limit that function.

[00:13:43] Speaker 01:
The place where this lateral... There's no claim construction issue in this case.

[00:13:49] Speaker 03:
Well, no, the means plus function, identifying the function and the structure is a claim construction issue.

[00:13:56] Speaker 03:
But the district court got the function part right.

[00:14:00] Speaker 03:
It's stated correctly in the district court's opinion.

[00:14:02] Speaker 03:
It never revisited that.

[00:14:04] Speaker 03:
The place where this lateral positioning capacity comes up is in the identification of the structure.

[00:14:09] Speaker 03:
And the district court, when it discussed that lateral positioning

[00:14:15] Speaker 03:
capacity, it was not in the context of rewriting the function.

[00:14:18] Speaker 03:
And I think it's helpful to kind of step back and look at what the district court did here and the process that she went through.

[00:14:24] Speaker 03:
She started with the claim function, and then Reaper's counsel identified this passage of the specification at column 3, lines 33 through 52 as being the key passage with the corresponding structure.

[00:14:37] Speaker 03:
And in there is where you see this reference to a controller.

[00:14:39] Speaker 03:
But there's no description in that passage of what that controller consists of.

[00:14:43] Speaker 03:
It doesn't tell you what the parts are.

[00:14:45] Speaker 03:
It doesn't say whether it's a microprocessor.

[00:14:46] Speaker 03:
It doesn't say circuitry, unlike the Sysful case that they cite.

[00:14:50] Speaker 03:
It doesn't even mention software.

[00:14:51] Speaker 00:
So you're saying the reference to the word lateral is irrelevant?

[00:14:56] Speaker 03:
Well, it's not irrelevant.

[00:14:58] Speaker 03:
It was a clue for the district court when it got to the end of that passage.

[00:15:01] Speaker 03:
So people knew it had a problem with the word controller, right, Your Honor?

[00:15:05] Speaker 03:
Because it was too vague.

[00:15:06] Speaker 03:
So they said, this controller is actually a controller as in a deer combine based on the very last sentence of that passage.

[00:15:15] Speaker 03:
So then the district court said, OK, well, that narrows the field for me.

[00:15:18] Speaker 03:
I'm down to three controllers because there's

[00:15:20] Speaker 03:
looking at Dr. Miller's declaration.

[00:15:22] Speaker 03:
He's a retired deer engineer.

[00:15:24] Speaker 03:
There were three deer head controllers available in 1997.

[00:15:28] Speaker 03:
Now I need to figure out which one it is because this court's precedent in Ergo the Cariffusion says just getting it down to three isn't enough.

[00:15:37] Speaker 03:
Just saying it's something known in the art.

[00:15:39] Speaker 03:
and it could be any one of three options, doesn't get you there in terms of the quid pro quo of means plus function claiming.

[00:15:46] Speaker 03:
You need to have some direction.

[00:15:47] Speaker 03:
And so the district court did everything in her power to give Reaper the benefit of the doubt.

[00:15:52] Speaker 03:
And she went back to that passage, the one that's identified as the relevant passage, and looked for clues as to which controller was being referenced.

[00:16:00] Speaker 03:
And when she read it, it says that the controller, that key sentence, this is the sentence that supposedly does the clearly linking to, says that the controller,

[00:16:09] Speaker 03:
The deer controller referenced later is one that has the capacity to do lateral positioning, as well as height control.

[00:16:16] Speaker 03:
And so she knew from that passage that the controller referenced later, the one that Reaper said was the clearly linked structure, had to be something other than the dilamatic number one, because all of the evidence before her showed that the dilamatic number one didn't have that capacity.

[00:16:32] Speaker 03:
To use an analogy.

[00:16:33] Speaker 02:
But is that lateral positioning even necessary to the function of the

[00:16:39] Speaker 02:
claim limitation dispute here?

[00:16:41] Speaker 03:
No, it's not, Your Honor.

[00:16:42] Speaker 03:
But that's a different question.

[00:16:44] Speaker 03:
Judge Ebinger never got to the point of identifying the structure because the algorithm requirement came in first.

[00:16:52] Speaker 03:
So had she found that it was the dialomatic number one and had to go to the process of which structure is necessary to perform the claim function, perhaps parsing which components of the dialomatic number one that would be,

[00:17:06] Speaker 03:
That's where that would come in.

[00:17:07] Speaker 02:
But she didn't even get there, because once it was... Wasn't part of the reason she concluded it couldn't be dialomatic version number one is because of the controlling the lateral position statements in the specification that she seemed to be pointing to in her decision.

[00:17:22] Speaker 03:
Yes, Your Honor.

[00:17:23] Speaker 03:
She did look at that, but it's a clue as to which controller is referenced at the end.

[00:17:27] Speaker 03:
If I might use an analogy, let's say it didn't say lateral positioning here.

[00:17:31] Speaker 03:
Let's say it actually said microprocessor.

[00:17:33] Speaker 03:
the controller uses a microprocessor to adjust header height.

[00:17:38] Speaker 03:
We would be talking about something that's more of a structure, right?

[00:17:41] Speaker 03:
I think the confusion comes up because the lateral positioning does have this functional feel to it.

[00:17:45] Speaker 03:
But she didn't actually import a function in.

[00:17:47] Speaker 03:
She was just looking at that lateral positioning capacity as a clue.

[00:17:50] Speaker 01:
But either way, would you agree that the claim language itself does not mention or claim this last corresponding structure of the lateral part?

[00:18:03] Speaker 03:
The claim language does not, in the functional language in the claim, does not use the phrase lateral positioning.

[00:18:09] Speaker 03:
You're correct, Your Honor.

[00:18:10] Speaker 03:
But she did not import that in.

[00:18:12] Speaker 03:
She just looked at that capacity as a clue as to which combine controller headers were being referenced later in the passage.

[00:18:19] Speaker 01:
But when she included that, then that affects the clock one, clock two descriptions.

[00:18:27] Speaker 03:
I'm sorry, Your Honor.

[00:18:28] Speaker 01:
It affects the... No, go ahead.

[00:18:31] Speaker 01:
Go ahead.

[00:18:31] Speaker 03:
I would really like to answer your question.

[00:18:34] Speaker 03:
It does affect which dialomatic controllers were envisioned by this passage, but understand also that she was, Judge Ebinger was giving grief for the benefit of the doubt.

[00:18:43] Speaker 03:
If all the passage said was three deer combines without any identification of which one was being referenced, we would be in exactly the same position as Eargo, V. carifusion.

[00:18:52] Speaker 03:
There, the claim term at issue, just like this one was control means,

[00:18:57] Speaker 03:
And the patentee pointed to the specification where it referenced the clearly linked structure as a controller.

[00:19:04] Speaker 03:
Exactly the same.

[00:19:05] Speaker 03:
And the patentee had evidence from an expert that there were three potential controllers out there that were known in the ARC.

[00:19:12] Speaker 03:
Precisely the same facts we would have here if the district court hadn't done that additional inquiry to try to figure out which controller was being referenced in that passage.

[00:19:20] Speaker 03:
And these are not three controllers that are.

[00:19:22] Speaker 03:
Do you agree that the right claimed function here

[00:19:25] Speaker 02:
is what I think you point us to on appendix page 29, raising and lowering the header in accordance with said first signal and maintaining the header at designated height above the soil.

[00:19:35] Speaker 03:
It is.

[00:19:35] Speaker 03:
That is the claim function.

[00:19:36] Speaker 03:
And that's exactly what the district court applied here.

[00:19:39] Speaker 03:
She did not read in lateral positioning capacity into that function.

[00:19:43] Speaker 02:
Could that function be controlled or completed by the Dalamatic version number one?

[00:19:50] Speaker 02:
Could that function be the... Could you repeat that, Your Honor?

[00:19:55] Speaker 02:
I'm sorry.

[00:19:55] Speaker 02:
Could that function be controlled by circuitry in Dalamatic version number one?

[00:20:02] Speaker 03:
Possibly, but there's not clear evidence of the record of that.

[00:20:06] Speaker 03:
So Dr. Miller does say that the diplomatic number one does head or height, but he never goes through and does a claim analysis where he says he wasn't presented as an expert.

[00:20:15] Speaker 03:
He was a fact witness.

[00:20:17] Speaker 03:
And so he just went through and said what it does, he didn't actually go to the claim function and provide testimony as to whether it meets that function as stated in the claim.

[00:20:26] Speaker 03:
And there's more words in that function than just height control, although that's the key one.

[00:20:30] Speaker 03:
But possibly, yes, if your honors were to reverse, we would need to go back and look at that question with the district court.

[00:20:38] Speaker 03:
But I think there's another impediment to reversing, which is the fact that if your honors don't accept the proposition that it excludes Dalmatia number one, that there's some guidance as to which one of these dear combine controllers is referenced in the passage, we're in exactly the same boat as Ergo, which the district court gave you for the benefit of the doubt on.

[00:21:00] Speaker 03:
If there are no more questions on the function aspect, I'd like to turn to the algorithm.

[00:21:04] Speaker 03:
So the district court made a correct set of findings here that the specification of the 395 patent does not disclose an algorithm corresponding to the Diolomatic 2 or 3.

[00:21:15] Speaker 03:
That finding is based on not just the patent itself, but also

[00:21:19] Speaker 03:
testimony from Dr. Miller, the retired deer engineer, and the source code for the dialomatic two and three, which were attached to Dr. Miller's declaration.

[00:21:32] Speaker 03:
In doing so, she also looked at Mr. Smith's declaration and rejected the prose algorithm in there.

[00:21:39] Speaker 03:
And that finding was not in clear error.

[00:21:42] Speaker 03:
In fact, Dr. Smith's prose algorithm, if you line it up side by side the way that Reaper does in the reply brief with the Finisar case, you'll find that there are even fewer words, phrases, different between that prose algorithm and the claimed function here.

[00:21:58] Speaker 03:
And on top of that, the district court correctly found that step two of Mr. Smith's alleged prose algorithm finds no corollary in the specification at all.

[00:22:09] Speaker 03:
That prose algorithm is based on piecing together different parts of the specification and a phrase from the claim itself that has no corollary.

[00:22:20] Speaker 03:
The notion that a person of ordinary's that the quid pro quo for means plus function claiming was met here with an algorithm that has to be pieced together by an expert using disparate parts of the specification and the claim, it's just incorrect.

[00:22:43] Speaker 03:
During Mr. Young's argument, he referenced the Sizzle case

[00:22:49] Speaker 03:
I want to just correct one thing about that case.

[00:22:52] Speaker 03:
In that case, this court remanded for a determination of whether or not there was structure because a reference to software and the specification was a sufficient hook to make the expert declarations relevant.

[00:23:04] Speaker 03:
That's not the case here.

[00:23:05] Speaker 03:
The district court did look at the expert declarations.

[00:23:08] Speaker 03:
She did make fact findings based on those rather than deciding on the patent itself.

[00:23:15] Speaker 03:
And so it's a different situation.

[00:23:20] Speaker 03:
And then Judge Raina, to answer, are there any further questions on the algorithm?

[00:23:24] Speaker 03:
No.

[00:23:27] Speaker 03:
I wanted to go back to the question that you asked Judge Raina, which was about whether there was any addition of structure by the district court's finding here with respect to the lateral capacity.

[00:23:38] Speaker 03:
And again, the district court never got to the point of determining which structure was necessary.

[00:23:43] Speaker 03:
to perform the claim function because the algorithm requirement was triggered.

[00:23:47] Speaker 03:
And therefore, there was no reason to go on to the structure analysis beyond that.

[00:23:54] Speaker 03:
So because once you got to the algorithm requirement, the claim was indefinite, and there was no further to go.

[00:23:58] Speaker 01:
And then if we were to find that the quota added structure beyond that's necessary to the claim function, then isn't it ergo that that impacts the algorithm analysis?

[00:24:12] Speaker 03:
The algorithm analysis is separate from that.

[00:24:15] Speaker 01:
It's a predicate step before you get to... No, but it's been reduced now to Dalamatic 1 and Dalamatic 2.

[00:24:22] Speaker 01:
The additional structure impacts the Dalamatic analysis or the algorithm analysis.

[00:24:33] Speaker 03:
If the district court had... I think your question, Your Honor, is that if the district court had added additional structure, would it impact the analysis?

[00:24:42] Speaker 03:
It would, but the district court never got to that point.

[00:24:45] Speaker 03:
She just determined that the dialomatic referenced in column three could not be the dialomatic number one.

[00:24:51] Speaker 03:
Therefore, it was a dialomatic two or three, both of which required an algorithm.

[00:24:58] Speaker 03:
One other issue that I think Your Honors would need to grapple with if you were to agree with Reapers' counsel that one, two, and three are all covered by this claim is that this precedent that they cite for the notion that

[00:25:11] Speaker 03:
If you have one structure that's got an algorithm and a second structure that doesn't, and that somehow meets the definiteness requirement and the quid pro quo, that all predates nautilus.

[00:25:21] Speaker 03:
I don't think your honors need to get to that question, but if there are three structures disclosing the specification and two of them are indefinite and vague, that is a problem under nautilus because the person of ordinary skill cannot determine with reasonable certainty

[00:25:35] Speaker 03:
what the scope of the claim is, because they have to determine the equivalence thereof for each of those structures.

[00:25:40] Speaker 03:
But just like Judge Ebinger, there's no reason to get there, because either this claim is invalid under ERGO, or if you get to the point of figuring out which dilamatic is covered, it's not the dilamatic number one, it's the dilamatic two or three, and those both clearly trigger the algorithm requirement, and there's no algorithm here.

[00:26:00] Speaker 01:
If you were considering dilamatic one in a vacuum,

[00:26:05] Speaker 01:
then there would be no triggering of the algorithm requirement, right?

[00:26:10] Speaker 01:
There's no requirement for an algorithm if you only have Dalamatic 1.

[00:26:15] Speaker 03:
That's not true, Your Honor.

[00:26:17] Speaker 01:
Dalamatic is only circuitry and a relay.

[00:26:20] Speaker 01:
It's not a processor.

[00:26:22] Speaker 03:
It's not a microprocessor, but the testimony in the record, if you look at appendix 578, this is from the Indiana briefing.

[00:26:30] Speaker 01:
It's not a processor like Dalamatic 2.

[00:26:33] Speaker 03:
It's not a microprocessor, but Dr. Lucas's testimony was that even though it was circuitry, it did implicate an algorithm.

[00:26:42] Speaker 03:
And you can look at appendix 578 for that discussion.

[00:26:45] Speaker 03:
But that wasn't the focus in the Iowa court, because there was this other problem with the dialomatic number two and three.

[00:26:51] Speaker 03:
And there are many problems with this patent.

[00:26:55] Speaker 03:
I want to just leave you with the ultimate question, which is whether the quid pro quo for means plus function claiming was met with the 395 patent.

[00:27:03] Speaker 03:
And there are many aspects of this patent that are vague.

[00:27:06] Speaker 03:
The district court here was methodical in the way she analyzed it, giving Rieper the benefit of the doubt at every step.

[00:27:11] Speaker 03:
And she came to the conclusion, which I hope you'll agree with, that this claim is indefinite due to the failure to disclose adequate structure for the control means.

[00:27:19] Speaker 03:
Thank you, Your Honor.

[00:27:20] Speaker 00:
Thank you, Ms.

[00:27:21] Speaker 00:
Wibickson.

[00:27:23] Speaker 00:
I, Mr. Young, have some rebuttal time.

[00:27:26] Speaker 04:
Yes, thank you, Your Honor.

[00:27:29] Speaker 04:
First of all, with respect to the algorithm, I'd just like to point out that the district court rejected Mr. Smith, who was an expert in this case, rejected his testimony about the prose algorithm.

[00:27:42] Speaker 04:
And in reaching her conclusion that the prose algorithm did not... Let me step back.

[00:27:49] Speaker 04:
What she said was the prose algorithm simply restated the claimed function of the patent.

[00:27:55] Speaker 04:
And in reaching that conclusion, the district court relied on Contrary to Sisvel.

[00:28:01] Speaker 04:
She ruled Contrary to Sisvel with states that the adequacy of the disclosure and the specification, that is the algorithm here, must be viewed on the skilled artisan's perspective.

[00:28:12] Speaker 04:
Her section dealing with the algorithm, PENIX 34 to 37, doesn't even mention ordinary skill, doesn't mention skilled artisan, doesn't cite to anyone other than her own opinion.

[00:28:27] Speaker 04:
She completely ignores the testimony of our expert, who is the only person who provided any perspective of a skilled artisan.

[00:28:36] Speaker 02:
If we were to consider vacating and remanding here,

[00:28:41] Speaker 02:
What would be left for the district court to do upon a remand?

[00:28:46] Speaker 04:
I would have to fix its plane construction with respect to the corresponding structure.

[00:28:50] Speaker 04:
The corresponding structure in this case has to be dialomatic one and dialomatic two.

[00:28:55] Speaker 04:
Judge Rainey, you properly noted that if

[00:28:58] Speaker 04:
Diomatic one is corresponding structure, then there is no indefiniteness problem because you don't have to have that.

[00:29:04] Speaker 04:
The Serrano case establishes that.

[00:29:06] Speaker 04:
The Serrano case involves discrete logic or a microprocessor under software control.

[00:29:11] Speaker 04:
And in that case, this court did not require an algorithm.

[00:29:16] Speaker 04:
There's also not an algorithm necessary here, but there is one that exists in the specification for Diomatic 2.

[00:29:22] Speaker 04:
And Mr. Smith explained why.

[00:29:24] Speaker 04:
And the court in discounting that testimony simply relied on her own view of the

[00:29:31] Speaker 04:
specification without considering the perspective of a skilled artisan.

[00:29:35] Speaker 04:
Additionally, in doing so, she re-characterized both the claimed function and the specification by using terms such as control process, signal reception, translate, signal production, none of which are in the patent anywhere, none of which were used by any of the parties or any of their witnesses.

[00:29:55] Speaker 04:
So the court did not rely in any way, shape, or form on a person having the perspective of a skilled artisan.

[00:30:02] Speaker 04:
I would simply note, Judge Cunningham, you asked earlier if Diolomatic 1 does, in fact, perform the claimed function.

[00:30:09] Speaker 04:
And it does.

[00:30:09] Speaker 04:
If you look at Appendix 2474, Deer's fact witness, Mr. Miller states that it does in paragraph 8.

[00:30:19] Speaker 04:
I would also note that under Qualcomm, circuitry does not trigger an algorithm requirement, contrary to what Deer's counsel has indicated.

[00:30:30] Speaker 04:
And I see my time's out.

[00:30:32] Speaker 00:
Thank you both counsel, the case is submitted.