[00:00:00] Speaker 02:
Our next case for argument today is 24-2081, in-rate echo factor.

[00:00:08] Speaker 02:
Counsel, how do I pronounce your name?

[00:00:10] Speaker 01:
My last name is Eichli.

[00:00:11] Speaker 02:
Mr. Eichli.

[00:00:12] Speaker 02:
Did I get that right, Eichli?

[00:00:14] Speaker 01:
That's correct.

[00:00:14] Speaker 02:
Please proceed.

[00:00:16] Speaker 01:
Thank you, Your Honor.

[00:00:16] Speaker 01:
May it please the Court.

[00:00:17] Speaker 01:
Matthew Eichli for Appellant Ecofactor, Inc.

[00:00:21] Speaker 01:
In order for Ecofactor to prevail in this appeal this morning, I need to convince you of two things.

[00:00:28] Speaker 01:
First, that the board erred in rejecting EcoFactor's amendment made during the re-examination proceeding.

[00:00:35] Speaker 01:
Second, that the board erred in its determination that the two prior out references, Ehlers and Van Ostrand, teach all of the elements of the as amended claim limitation.

[00:00:48] Speaker 01:
Turning to the first issue, the board erred in sustaining the examiner's rejection of amended independent claims 1 and 9 as, quote, enlarging

[00:00:58] Speaker 01:
are enlarging the scope of the claims being re-examined.

[00:01:02] Speaker 01:
But contrary to the board and examiner's determination, the Equifactor's amendment merely adds a claim element and therefore cannot be considered a broadening amendment under the proper broadening analysis in this course precedent, as I'll try to explain now.

[00:01:19] Speaker 01:
The as-issued claim one

[00:01:21] Speaker 01:
only required the system to compare an inside temperature recorded inside a first structure with an estimation for the rate of change in inside temperature.

[00:01:31] Speaker 01:
This as issued claim on thus compared a single recorded data point, temperature one, with an estimated rate of change.

[00:01:43] Speaker 01:
EcoFactor amended that claim during re-examination so that the admitted claim one required the system to compare an actual rate of change in the inside temperature as recorded inside the first structure with the estimation for the rate of change inside temperature.

[00:02:02] Speaker 01:
The as amended actual rate of change in inside temperature is necessarily and mathematically composed of at least four separate

[00:02:13] Speaker 01:
data points, the first temperature, the second temperature, the time the first temperature was taken, and the time the second temperature was taken.

[00:02:27] Speaker 01:
In other words, the as-admitted claim one still requires the same first inside temperature recording, but it now further requires a second temperature, the time the first temperature was recorded, the time the second temperature was recorded,

[00:02:43] Speaker 03:
It still requires that temperature, but it doesn't require any comparison to that temperature.

[00:02:51] Speaker 03:
It now requires a comparison to a rate of change of temperature, which is a different thing.

[00:02:57] Speaker 01:
It is certainly different, Your Honor, but it is not broader than a single amendment.

[00:03:04] Speaker 03:
Well, can't we imagine at least one accused device that would infringe that new amended comparison that would not infringe the original comparison?

[00:03:16] Speaker 01:
I don't believe we can, Your Honor.

[00:03:18] Speaker 01:
I don't believe the director certainly tried in its brief, and I don't believe it succeeded because

[00:03:27] Speaker 01:
in its brief and examiner on the board said something similar, Your Honor, that the rejection was required because a rate of change in temperature is not the same measurement, as in quotes, as the inside temperature recorded itself.

[00:03:42] Speaker 01:
The 35 USA 305 does not require amendments to include the exact same language or measurements as the previous claims.

[00:03:51] Speaker 01:
In fact, that wouldn't even make any sense because amendments, by their very nature, change the words, change the claims,

[00:03:58] Speaker 01:
The director's brief makes the same mistake when it says that the amended claim one only requires comparing an actual rate of change, not the underlying temperature values used to calculate the actual rate of change.

[00:04:11] Speaker 04:
So you're saying, imagine an accused device that compares an actual rate of change three degrees per hour.

[00:04:19] Speaker 04:
that device compares that rate of change to an estimated rate of change, whatever it is.

[00:04:26] Speaker 04:
You're saying that that infringes the initial patent because one of the elements of the actual rate of change is T1, is an actual temperature?

[00:04:38] Speaker 01:
That's correct, because the amended language

[00:04:41] Speaker 01:
And I have the amended claim in front of me, because obviously the language is very important.

[00:04:45] Speaker 01:
It's to compare an actual rate of change in inside temperature recorded.

[00:04:49] Speaker 01:
So it still requires that inside temperature to be recorded, not just at time one, but at time two and at time, time X. So.

[00:04:58] Speaker 04:
But that's just one of the elements of the calculation.

[00:05:00] Speaker 04:
I mean, it's still a completely different thing for the first thing to be compared to be a rate of change.

[00:05:06] Speaker 04:
versus a temperature, an actual temperature.

[00:05:08] Speaker 01:
Absolutely.

[00:05:09] Speaker 01:
I cannot dispute that it is different to compare one temperature than to compare a rate of change of temperature.

[00:05:17] Speaker 01:
Argument is that a rate of change of temperature is not broader than the single comparison of a single temperature, which is what 35 USC 305 prevents in re-examination proceedings.

[00:05:30] Speaker 01:
It says you can't broaden the claims.

[00:05:32] Speaker 01:
It doesn't say you can't have a different measurement or different claims.

[00:05:36] Speaker 02:
It just says you can't broaden the... How is it not broad when it's different?

[00:05:41] Speaker 02:
If you now have a device that compares a rate of change in temperature with an estimation, that device would not infringe the original claim, which compared an actual temperature with an estimation.

[00:05:56] Speaker 02:
So that's broader.

[00:05:56] Speaker 02:
That's necessarily unequivocally broader.

[00:05:59] Speaker 02:
I don't understand.

[00:06:00] Speaker 02:
I'm just completely baffled.

[00:06:03] Speaker 01:
Because even in the language you said, Your Honor, it's not just a rate of change.

[00:06:08] Speaker 01:
It's not divorced from units or divorced from the actual temperatures.

[00:06:12] Speaker 01:
It's an actual rate of change in inside temperature recorded inside the first structure.

[00:06:16] Speaker 02:
So what?

[00:06:17] Speaker 02:
It's a rate of change.

[00:06:18] Speaker 02:
That's a totally different thing.

[00:06:19] Speaker 02:
That would not result in infringement of the originally written claim.

[00:06:23] Speaker 02:
You, absolutely not.

[00:06:27] Speaker 02:
Comparing a rate of change would not infringe the original complaint, which was comparing it to one of the two numbers used to determine the rate of change.

[00:06:37] Speaker 02:
It's definitely a different animal.

[00:06:39] Speaker 02:
It would not infringe the original claim.

[00:06:43] Speaker 02:
Therefore, broader.

[00:06:44] Speaker 02:
Therefore, broader.

[00:06:46] Speaker 01:
I agree it's a different animal, but I disagree that it would not infringe the initial claim on.

[00:06:50] Speaker 02:
OK, well, you lose.

[00:06:53] Speaker 02:
That's it.

[00:06:54] Speaker 02:
That's just not reasonable.

[00:06:56] Speaker 01:
I mean, the idea that a system could compare an actual rate of change in the recorded inside temperature without looking at those two inside temperatures.

[00:07:05] Speaker 02:
Of course they look at them, but they're not comparing them.

[00:07:07] Speaker 02:
The claims only address comparing these things.

[00:07:10] Speaker 02:
It doesn't address using it as an input for something you would then compare to it.

[00:07:18] Speaker 01:
Respectfully, your hypothetical is a mathematical impossibility.

[00:07:21] Speaker 01:
You cannot have a rate of change without having the underlying measurements.

[00:07:25] Speaker 02:
Correct.

[00:07:26] Speaker 02:
But you have two measurements.

[00:07:27] Speaker 02:
You can't have a rate of change with a single measurement either.

[00:07:31] Speaker 02:
In order to achieve a rate of change, i.e.

[00:07:33] Speaker 02:
a slope, you need two data points, not one.

[00:07:36] Speaker 01:
I absolutely agree.

[00:07:36] Speaker 01:
That's our argument, Your Honor, that you must have a first temperature as issued claim of rate.

[00:07:41] Speaker 02:
But you're not comparing it to the first temperature.

[00:07:44] Speaker 02:
The first temperature is the only thing claimed in the original claim.

[00:07:48] Speaker 02:
It's comparing it to a single temperature in isolation.

[00:07:52] Speaker 02:
One temperature.

[00:07:53] Speaker 02:
Now instead, you're comparing it to a rate of change calculated from multiple temperatures.

[00:08:00] Speaker 02:
You're not comparing it to the single temperature anymore.

[00:08:02] Speaker 01:
No, you're comparing it to that plus the second temperature plus the first time plus the second time in order operations to become the actual rate of change.

[00:08:11] Speaker 01:
But it's the rate of change of the inside temperature recorded.

[00:08:15] Speaker 01:
That's why I keep looking at the emitted flame language is important.

[00:08:18] Speaker 01:
We still have the recorded inside temperature.

[00:08:20] Speaker 01:
We still have the comparison.

[00:08:22] Speaker 02:
But that's not what you're comparing.

[00:08:23] Speaker 02:
No, that's not what you're comparing.

[00:08:24] Speaker 02:
You're no longer comparing it to the inside temperature.

[00:08:27] Speaker 02:
So if you have a device that infringes because it compares,

[00:08:32] Speaker 02:
a rate of change as opposed to comparing to the actual temperature that would absolutely not infringe the original claim.

[00:08:42] Speaker 02:
That's it.

[00:08:44] Speaker 01:
It will not surprise you, Your Honor, that I disagree with that.

[00:08:46] Speaker 02:
Well, I understood that from your brief.

[00:08:51] Speaker 02:
I don't understand how.

[00:08:53] Speaker 02:
Do you have anything further?

[00:08:55] Speaker 01:
Well, I do.

[00:08:55] Speaker 01:
I mean, I think the second point, since I have prevailed on two points, Your Honor, the second point is that

[00:09:03] Speaker 01:
The board also erred in sustaining the objection over Ehlers and Van Ostrand.

[00:09:09] Speaker 01:
I'll take it very briefly.

[00:09:11] Speaker 01:
The board, the examiner, the director's brief all admit that Ehlers doesn't disclose the amended wearing clause.

[00:09:22] Speaker 01:
They go on to look at Van Ostrand and says, Van Ostrand discloses some but not all of the second wearing clause.

[00:09:28] Speaker 01:
To fill that gap that Van Ostrand doesn't include all of the second wearing clause,

[00:09:34] Speaker 01:
the board and now the directors say, well, let's look back at Ehlers.

[00:09:36] Speaker 01:
But they just said that didn't even include that element.

[00:09:41] Speaker 01:
And so our position, which I think is pretty simple, is that you can't point to two references, neither one of which includes the entire claim limitation, to satisfy that claim limitation.

[00:09:58] Speaker 01:
And because of this, the board's rejection of the as amended claims

[00:10:03] Speaker 01:
over the combination of Ehlers and Van Ostrin, was not supported by substantial evidence, and should be reversed.

[00:10:11] Speaker 01:
And unless the court has additional questions, I'm happy to yield the remainder of my time.

[00:10:16] Speaker 02:
All right.

[00:10:16] Speaker 02:
Thank you.

[00:10:16] Speaker 02:
Thank you, Your Honor.

[00:10:19] Speaker 02:
Mr. Patel?

[00:10:27] Speaker 00:
I may please record on Fahad Patel with the USPTO.

[00:10:30] Speaker 00:
I don't think I need to say a whole lot here on the broadening issue, except that the issue is dispositive.

[00:10:35] Speaker 00:
So if the court affirms a board on the improper broadening question, then it need not reach the obviousness question.

[00:10:43] Speaker 00:
And just to reiterate kind of the comments from the court, it's pretty simple.

[00:10:48] Speaker 00:
It's open and shut.

[00:10:49] Speaker 00:
The original claims required a temperature value.

[00:10:52] Speaker 00:
The amended claims require a rate of change.

[00:10:55] Speaker 00:
There are two different values.

[00:10:56] Speaker 00:
a rate of change does not somehow include everything that was used to compute the rate of change.

[00:11:02] Speaker 00:
There's no case law from this court that would, or no kind of planning construction that we've seen that would require such a result.

[00:11:11] Speaker 00:
So I'm not going to take any more of the court's time.

[00:11:13] Speaker 00:
Unless you have any further questions, I'll yield the remainder.

[00:11:16] Speaker 04:
I'll just ask if you could respond briefly, I mean, to this thought.

[00:11:23] Speaker 04:
I don't think the petition,

[00:11:27] Speaker 04:
petitioner or appellant argues this precisely.

[00:11:29] Speaker 04:
But is it even meaningful to compare a temperature to a rate of change?

[00:11:35] Speaker 04:
And the reason I ask that is I'm wondering if this is a situation where this is sort of always what they meant with this patent.

[00:11:43] Speaker 04:
Because what does it mean to compare 70 degrees to three degrees per hour change?

[00:11:50] Speaker 04:
If that's true, a very charitable interpretation would be, well, this is kind of always what was meant.

[00:11:58] Speaker 04:
And the fact that the actual temperature in the initial patent claim was actually part of a calculation that is then compared to an estimated rate of change.

[00:12:11] Speaker 04:
And this is sort of always what was meant.

[00:12:15] Speaker 04:
To be clear, I don't think they argue it that way.

[00:12:18] Speaker 04:
But could you address that briefly?

[00:12:20] Speaker 00:
I can't speak to the eco-factors' motivations as to their claim amendment.

[00:12:27] Speaker 00:
In other words, why did they amend the claims the way they did?

[00:12:29] Speaker 00:
There is a history to this patent, and we don't get into it in the briefing, but we kind of reference it in our related cases, where this patent was actually, claim one was actually found invalid in front of the district court.

[00:12:42] Speaker 00:
Judge Albright found it invalid.

[00:12:44] Speaker 00:
under Section 112 written description.

[00:12:46] Speaker 00:
And we actually dug into the history.

[00:12:49] Speaker 00:
We couldn't find the judge's decision on that.

[00:12:53] Speaker 00:
But it appears that the court in Texas found the claim invalid for precisely the reason that you articulated, which was, Your Honor, which was that it doesn't really make sense to compare a single temperature value with a rate of change.

[00:13:05] Speaker 00:
And on that basis, the court found the claim invalid.

[00:13:08] Speaker 00:
That got appealed to this court, actually, and was voluntarily dismissed.

[00:13:13] Speaker 00:
So a mandate did issue.

[00:13:15] Speaker 00:
So technically, claim one as issued has been finally determined to be invalid.

[00:13:21] Speaker 00:
And we think perhaps that might have been the reason why EcoFactor is trying to amend the claims in the way they did here.

[00:13:30] Speaker 04:
And then the only other question I'll ask is, what about this argument that this is necessarily narrowing, not enlarging, the scope of the claim because any device that compares the actual rate of change with an estimated rate of change necessarily starts with an actual temperature?

[00:13:50] Speaker 00:
I think the key issue is what is actually being compared, because certainly to come up with a rate of change, there has to be some prior computation to determine the rate of change.

[00:14:03] Speaker 00:
Involving an underlying temperature value that's that's sort of basic, you know straightforward math And we're not we're not fighting about about that, but the claim specifically requires Comparing an actual rate of change and it's really a question of claim construction.

[00:14:17] Speaker 00:
Does the claim term actual rate of change?

[00:14:20] Speaker 00:
encompass within its scope all the values that were used to calculate the rate of change and there's just simply a

[00:14:26] Speaker 00:
in the case law and in the record, in the spec, and even if you did like a Markman analysis and looked at the claim language, the spec, there's nothing that would compel that type of construction here.

[00:14:39] Speaker 02:
Why don't you just for a second explain to us, within the PTO, when you want to make a change to an already issued patent, there are a number of different processes available to an applicant.

[00:14:50] Speaker 02:
right, there's reissue which has certain limits, then there's also a correction of errors process, isn't there?

[00:14:57] Speaker 02:
Can you explain just a little bit about, because if this were an error and they always sort of meant something but said the wrong thing, there's an error correction process that's a little different from reissue, isn't there?

[00:15:09] Speaker 00:
I don't have those procedures at my fingertips for correction of errors.

[00:15:16] Speaker 00:
I'm not sure if this, I mean,

[00:15:19] Speaker 00:
I'm not sure if this would count as an error or not.

[00:15:22] Speaker 00:
This is sort of a 112 issue, written description.

[00:15:25] Speaker 00:
I don't know if this was a mistake or an error per se.

[00:15:30] Speaker 00:
Perhaps it could be considered as such, and I know there's ways to deal with that.

[00:15:37] Speaker 00:
If within two years of issuance, there could be a reissue to correct, or I guess it sort of changed the claim language.

[00:15:45] Speaker 00:
But this is sort of well outside of that time period.

[00:15:48] Speaker 02:
So OK, well, that's helpful.

[00:15:49] Speaker 02:
So it's unfortunate you don't know the correction of the error statute.

[00:15:53] Speaker 02:
Maybe you could have a little primer on that when you go back to the PTL.

[00:15:55] Speaker 02:
But the other point you just made is a very good one.

[00:15:58] Speaker 02:
The reissue statute allows for two different types of reissue, doesn't it?

[00:16:02] Speaker 02:
within the first two years, you're allowed to broaden your claims.

[00:16:05] Speaker 02:
So if you've made a mistake in the claiming of any kind, whether it's, I meant one thing, but I said the other, or I just didn't claim as broad as I should have, and my spec supports it, within those first two years, you're allowed to make these kinds of amendments, if the claim would be supported by the spec, correct?

[00:16:21] Speaker 00:
That's correct, yes.

[00:16:22] Speaker 02:
But we're outside the two-year window.

[00:16:24] Speaker 02:
And once outside the two-year window, reissue does not allow broadening amendments.

[00:16:27] Speaker 02:
It allows amendments, but only narrowing amendments, or identical scope amendments.

[00:16:31] Speaker 00:
Right?

[00:16:33] Speaker 00:
Yes.

[00:16:33] Speaker 00:
Absolutely.

[00:16:35] Speaker 02:
That's very helpful.

[00:16:37] Speaker 00:
Anything else for the court?

[00:16:40] Speaker 02:
No.

[00:16:40] Speaker 02:
Okay, thank you.

[00:16:49] Speaker 01:
Just one very short point, Your Honors.

[00:16:51] Speaker 01:
As my colleague just mentioned,

[00:16:54] Speaker 01:
Accelerative change in inside temperature recorded, the new language in the augmented claim is a claim construction issue.

[00:17:00] Speaker 01:
And EcoFactor's position in our brief and here today is that an accelerated change in the recorded inside temperatures, of course, includes those inside temperatures themselves.

[00:17:12] Speaker 01:
Thank you.

[00:17:14] Speaker 02:
OK.

[00:17:14] Speaker 02:
I thank both counsel.

[00:17:15] Speaker 02:
This case is taken under submission.