[00:00:00] Speaker 03: All right, before we call our next case, I should have done this sooner, but I was very excited because Judge Chen had his motion to move his clerk in. [00:00:06] Speaker 03: We thank Chief Judge Barnett of the Court of International Trade for joining us here today and sitting on these cases with us. [00:00:13] Speaker 03: So thank you for coming. [00:00:15] Speaker 03: I'm sorry I didn't do it at the outset. [00:00:17] Speaker 03: I got distracted. [00:00:19] Speaker 03: So OK, next case for argument, 23-2349, Taction Technology versus Apple. [00:00:26] Speaker 03: Mr. Bash. [00:00:27] Speaker 00: Thank you, Chief Judge Moore. [00:00:28] Speaker 00: May it please the court. [00:00:30] Speaker 00: The principal error of the district court below, and the one that we believe alone requires reversal, is to find a clear and unmistakable prosecution history disclaimer of devices that produce output that is not highly damped. [00:00:46] Speaker 00: That language does not appear in the claims. [00:00:49] Speaker 00: It does not appear in the specification of the patents in suit or any other patents in the family. [00:00:53] Speaker 00: It does not appear in the file history of the patents in suit, but rather in a single reference in the file history of a parent application [00:01:00] Speaker 00: We believe that the district court misunderstood the colloquy between the applicant and the examiner in that case. [00:01:08] Speaker 00: So let me take the court right to that application, right to that part of the file history. [00:01:12] Speaker 00: That's at pages 1, 049 to 1, 050 of the appendix. [00:01:18] Speaker 00: There's an initial statement that the application is distinguishable from the Morris Prior Art Reference because the Morris Prior Art Reference involved high residence. [00:01:30] Speaker 00: Whereas this art is directed to highly damped output. [00:01:34] Speaker 00: And let me bracket directed to for a second. [00:01:36] Speaker 00: I want to come back to that. [00:01:37] Speaker 00: But then the applicant goes on to say, we've proposed an amendment to this claim language that we believe overcomes the more subjection. [00:01:47] Speaker 00: What that amendment did, among one other thing, was say that the claim requires some damping. [00:01:53] Speaker 00: It did not say it requires it to produce highly damped output. [00:01:57] Speaker 00: Then, and this is at page 1,072, [00:02:00] Speaker 00: of the appendix, the examiner said, that change to the claim language overcomes the Morris prior art reference. [00:02:07] Speaker 00: It overcomes the objection. [00:02:08] Speaker 00: So let me take you back to [00:02:11] Speaker 00: what the district court found to be the disclaimer. [00:02:13] Speaker 00: That one sentence at page 1,050 of the appendix. [00:02:16] Speaker 01: I guess I'm just curious about your view. [00:02:19] Speaker 01: Is it possible, in your view, for a statement to be made by an applicant in an office action response that says something that's clearly narrower than whatever is in the claim or in the amended claim? [00:02:37] Speaker 01: Can that serve as a disclaimer? [00:02:41] Speaker 00: and a narrowing we don't have to send it in some cases there can be a disclaimer in the circumstances you described but here we think virtually every consideration of this court's precedents have looked to for disclaimer disfavor that finding a little explain what i think was going on with that sentence [00:02:57] Speaker 00: It's curious that the sentence uses the phrase directed to. [00:03:01] Speaker 00: In the cases that Apple cited and that we found, at least, disclaimers have sometimes said things like, this invention is, or all embodiments of this invention are. [00:03:10] Speaker 00: The directed to language, as far as we can tell, is unusual. [00:03:13] Speaker 00: And what we think that was getting at is the aspirational goal or what the invention can achieve. [00:03:19] Speaker 00: And there's two reasons we think that. [00:03:21] Speaker 00: One, what's block quoted right under that sentence, this is at page 1050 of the appendix, is a portion of the specification that one is describing a particular embodiment of the invention, not the invention as a whole, and two says the phrase can be damped. [00:03:38] Speaker 00: And what this device does is it has a damping mechanism and that it enables the person practicing the invention through experimentation with the level of ferrofluid and the viscosity of the ferrofluid [00:03:51] Speaker 00: to achieve different degrees of damping. [00:03:54] Speaker 00: And we think that understanding of what the applicant was saying has very strong support in the specification. [00:03:58] Speaker 00: So the parties have joined issue on Figure 5C, and the discussion of Figure 5C in the common specification, that's on Column 9. [00:04:06] Speaker 00: The patents start at 109 and 134 of the appendix. [00:04:09] Speaker 03: Mr. Basch, I think that you spent a lot of your argument now on this disclaimer question, and we [00:04:18] Speaker 03: I think have your argument on that. [00:04:20] Speaker 03: I think it might be useful if you move to set up your other arguments. [00:04:24] Speaker 00: Sure, Chief Judge Moray. [00:04:25] Speaker 00: Just to set forward the decision tree as we see it. [00:04:29] Speaker 00: If we win the argument we've just been talking about. [00:04:31] Speaker 03: Yes, but if I was trying to move you to the other arguments, that might be a signal to you, right? [00:04:36] Speaker 03: So move to the other arguments. [00:04:37] Speaker 00: Okay. [00:04:37] Speaker 00: So we have two. [00:04:38] Speaker 00: If we lose the highly damped output disclaimer. [00:04:42] Speaker 00: We have two arguments. [00:04:44] Speaker 00: We both need to win. [00:04:45] Speaker 00: So one of them is that the district court erred in granting summary judgment on that basis because it misapplied the local rules. [00:04:53] Speaker 00: And the other is that the other two, what I'll call subsidiary disclaimers of subsidiary constructions, were erroneous. [00:04:59] Speaker 00: Unless the court has a preference, let me take the second of those arguments first. [00:05:03] Speaker 00: So the district court first found that it construed highly damped output to require [00:05:11] Speaker 00: mechanical damping, so not electric damping like the closed-loop controller at issue in this case. [00:05:17] Speaker 00: The parties now agree that that can't be a standalone disclaimer. [00:05:21] Speaker 00: It is at best a construction of highly damped output. [00:05:24] Speaker 00: The short answer as to why that cannot be correct is that the manner in which the output is produced, whether by mechanical damping or is damped, whether by mechanical damping or otherwise, [00:05:36] Speaker 00: is not a resolution of ambiguity in the phrase highly damped output. [00:05:40] Speaker 00: It's not a linguistic construction of highly damped output. [00:05:42] Speaker 00: Highly damped output. [00:05:44] Speaker 01: And I suppose these two supporting passages in the specification that are quoted in the Office Action Response describing a highly damped output, they say nothing about the manner in which the damping is to occur. [00:05:57] Speaker 01: Is that right? [00:05:58] Speaker 00: That is correct, Your Honor. [00:05:59] Speaker 00: What the District Court and Apple have picked up on is a couple of references to maybe one [00:06:04] Speaker 00: one reference to the lack of mechanical damping and one of the prior art references. [00:06:09] Speaker 00: This is in the common specification. [00:06:11] Speaker 00: But elsewhere in the specification, one, it distinguishes just undamped devices, devices that have no damping whatsoever. [00:06:19] Speaker 00: And then at column two of the specification, this is right at the top, the specification says that the damping can be achieved by any suitable mechanism. [00:06:27] Speaker 00: Now, what Apple has said is that, well, then it gives a list of exemplars, and all of those are mechanical. [00:06:34] Speaker 01: Do you have to win on both the mechanical damping requirement and the less than two factor 1.5? [00:06:42] Speaker 00: Judge Chen, if we lose highly damped output, in other words, if this court finds that to be a proper disclaimer, yes, we would have to prevail on both of those because the district court said these devices don't satisfy either of those and we haven't appealed that aspect of the judgment. [00:06:55] Speaker 00: So the basic point on the lack of mechanical damping is that that is not a resolution of ambiguity. [00:07:01] Speaker 00: Now what Apple has said [00:07:02] Speaker 03: Okay, I think we have that one, so why don't you move on to the next one? [00:07:06] Speaker 00: Sure. [00:07:07] Speaker 00: So the other limitation, the other subsidiary limitation is the Q factor must be less than 1.5. [00:07:14] Speaker 00: That depended entirely in our view on misreading one passage of the specification. [00:07:19] Speaker 00: This is at the bottom of column two of the specification. [00:07:23] Speaker 00: And it was distinguishing a prior device referred to as an ERM. [00:07:27] Speaker 00: What the specification says is that that device lacked a means for critical damping, or a mechanism for critical damping. [00:07:35] Speaker 00: And as a result, the Q factor of the oscillating piece in that device was 1.5 to 3. [00:07:42] Speaker 00: Critical damping means 0.5. [00:07:45] Speaker 00: If you think about the swing with the kid, critical damping is pulling the swing back, and it gets to the center as fast as possible but stops. [00:07:53] Speaker 00: What was being disparaged in that prior art was the lack of any mechanism for damping at all. [00:07:58] Speaker 00: It wasn't saying 1.5 is the magic number. [00:08:01] Speaker 00: It was just saying that those devices, based on their innate characteristics, had a Q factor of 1.5 to 3.0 minus any damping mechanism. [00:08:11] Speaker 00: What it was distinguishing about prior art was this part. [00:08:15] Speaker 01: If that prior art environment had no damping and had a Q factor of 1.5 to 3, then you would think any kind of damping would have brought it down under 1.5, right? [00:08:29] Speaker 00: That's true. [00:08:29] Speaker 00: But what was missing with that piece was not that it had a particular level of Q factor. [00:08:34] Speaker 00: What was being distinguished was that there was no damping mechanisms. [00:08:37] Speaker 00: And the claims themselves deal with that, because the claims require a damping mechanism in the form of flare fluid. [00:08:43] Speaker 00: It was not saying that 1.5 is a magic number. [00:08:46] Speaker 00: And by the way, even if, and I don't really take Apple to disagree much with our reading of that, but even if we're wrong about that, what this court has said for prosecution history disclaimers is that there needs to be repeated [00:08:57] Speaker 00: disparagement. [00:08:58] Speaker 00: That's the only instance in the specification. [00:09:00] Speaker 00: There's nothing else in the file history. [00:09:02] Speaker 01: We've given the host... One clear disparagement is not good enough? [00:09:05] Speaker 00: Well, this court has said in cases like Chicago Board that you need repeated disparagement. [00:09:09] Speaker 00: Now, of course, we think the court was not even reading that passage correctly, but if this court disagrees with us about that, what the court has said in cases like Chicago Board is that you need repeated disparagement. [00:09:21] Speaker 00: In addition, cases like Polytech that the [00:09:25] Speaker 00: parties have cited in the briefs, usually that disparagement is twinned with some explanation for how the patent claims solve for that problem. [00:09:32] Speaker 01: Let's assume that the district court in this alternate court grounds went too far on requiring mechanical damping and also went too far on having a specific Q factor value. [00:09:50] Speaker 01: Then the other thing is the exclusion of the expert report. [00:09:56] Speaker 01: Could you just comment on that? [00:09:58] Speaker 00: Yes, yes, Shin. [00:10:00] Speaker 00: One, and we've made this argument in the brief, we think that if the court reverses the claim construction issues you just referred to, one option would be to remand for the district court to conclude whether a modification in the claim construction [00:10:13] Speaker 00: is a different result on the expert report. [00:10:15] Speaker 00: Oftentimes, once courts modify claim construction mid-trial, they go back and consider. [00:10:19] Speaker 01: But even if the court... My understanding of the district court's order, correct me if I'm wrong, is there was one ground and then a second ground. [00:10:26] Speaker 01: And then the one ground [00:10:28] Speaker 01: which dealt with exclusion of the exit report had nothing to do with these additional constructions that required mechanical damping and a certain Q factor. [00:10:37] Speaker 01: Am I? [00:10:38] Speaker 00: That is correct, Judge Chen. [00:10:39] Speaker 00: So if the court goes along and reaches that question, we think there were a few problems with what the district court did. [00:10:45] Speaker 00: First, it's construction of the local rule. [00:10:47] Speaker 00: The Southern District of California local rule requires the [00:10:51] Speaker 00: plaintiff to identify where in the asserted devices, or in the accused products, the various elements of the patent claims are met. [00:10:59] Speaker 00: It does not say how, and that is in distinct contrast to the Northern District rule, which says where and how. [00:11:05] Speaker 00: Now, my friends have cited some district court cases prior to this case that have construed the Southern District California rule to also require the how. [00:11:14] Speaker 00: There's three things I'll say about that. [00:11:16] Speaker 00: One, I don't think it's the burden on parties to go through non-binding precedent of other district judges in the same district to determine whether the plain text of the rule has a different meaning than what it appears on its face. [00:11:28] Speaker 00: One of the lead cases they cite is a case called Amaranth. [00:11:31] Speaker 00: Two things about that case. [00:11:32] Speaker 00: One, it relied almost entirely on Northern District of California precedents for this point. [00:11:37] Speaker 00: Two, although in fairness it did not arise in a summary judgment posture, it gave the party leave to amend the infringement contentions. [00:11:43] Speaker 00: It didn't say your case is over because you didn't know that you had to say how. [00:11:48] Speaker 01: I guess at the bottom, two things. [00:11:51] Speaker 01: One is, [00:11:52] Speaker 01: we're dealing with an abuse of discretion. [00:11:54] Speaker 01: I take your point that the Southern District of California's local patent rule doesn't say where or it doesn't say how it only says where. [00:12:03] Speaker 01: But at bottom the question is whether [00:12:08] Speaker 01: the expert Dr. Oliver was presenting a new, different infringement theory than the one that was contained in the final infringement contentions. [00:12:17] Speaker 01: And could you just speak on that, why it's fair to say that what Dr. Oliver was proposing was in line, or should have been understood to be in line, and it was an abuse of discretion to find otherwise with the [00:12:36] Speaker 01: the proposal made in the final infringement? [00:12:38] Speaker 00: Yes, Judge Chen. [00:12:39] Speaker 00: The key paragraph is on page 3751 of the appendix. [00:12:42] Speaker 00: That's the paragraph from our revised infringement contentions. [00:12:46] Speaker 00: And what it says is, if highly damped output is a claim limitation, [00:12:51] Speaker 00: It is satisfied by the closed-loop controller. [00:12:53] Speaker 00: Then it says, so too. [00:12:55] Speaker 01: Does it say it's satisfied by the closed-loop controller? [00:12:59] Speaker 01: I mean, remember, it makes an observation that Apple's products have something called a closed-loop controller. [00:13:05] Speaker 00: Well, I can pull the exact language. [00:13:07] Speaker 00: It's reproduced in our reply brief. [00:13:09] Speaker 00: But it refers to the closed-loop controller. [00:13:11] Speaker 00: And then it refers to our frequency response graphs, which are what show the effect of the ferrofluid. [00:13:16] Speaker 00: And then it says that highly damped output can be satisfied by any mechanism. [00:13:20] Speaker 00: The district court took issue with, one, the fact that I guess that didn't say directly these things combine to satisfy that effect. [00:13:29] Speaker 00: And two, that in trying to give some understanding to this term that has no clear meaning in the art, our experts said, [00:13:35] Speaker 00: well, if something's generally uniform and flat, that would be highly damped output. [00:13:40] Speaker 01: Could you explain a little bit more about the graph that Dr. Oliver relied on that showed a flat line or a substantially flat line? [00:13:49] Speaker 01: What's the y-axis representing? [00:13:52] Speaker 01: Is that representing something different than what was shown in the frequency response graphs in the final infringement contention? [00:14:00] Speaker 00: My understanding is they're the same. [00:14:01] Speaker 00: They show the amplitude of the oscillation. [00:14:04] Speaker 00: I'll go back and confirm that I'm correct about that. [00:14:06] Speaker 00: The reason they're different is because the earlier graphs showed only the effect of the ferrofluid. [00:14:11] Speaker 00: Once the highly damped output limitation was in place, the latter graphs showed the effect of both, because now we had to satisfy this new highly damped output. [00:14:20] Speaker 00: Disclaimer before we only have to show that here what I'm wondering is how come you didn't? [00:14:26] Speaker 01: Have that graph in your final infringement contention and instead use the other infringement the other graph from your initial contention showing that the two peaks one smaller than the other and [00:14:38] Speaker 00: Well, I don't even think Apple has argued this. [00:14:41] Speaker 00: I don't think our responsibility at that stage in the final infringement contentions was to show the full extent of our experimentation and analysis. [00:14:48] Speaker 00: What we did was identify that these two elements, the ferrofluid and the closed-loop controller, contributed to the highly damped output. [00:14:56] Speaker 00: And we said that it could be satisfied by any mechanism. [00:15:00] Speaker 01: I don't mean to nitpick, but I seem to recall your final contention saying, here, [00:15:06] Speaker 01: the ferrofluid, look at our frequency response graphs, which show a highly damped output. [00:15:13] Speaker 01: And so then you look at the graphs, and then we see the peaks, a lower peak, which to me seems to, on its face, suggest that the plaintiff's theory for what is a highly damped output is a peak, albeit a lower peak than what it would be otherwise. [00:15:33] Speaker 00: Two tiers more, may I respond? [00:15:34] Speaker 00: Yes, please. [00:15:35] Speaker 00: Your Honor, at page 3751, that's the paragraph we're talking about, the first point that's made is about the closed-loop controller, not about the ferrofluid. [00:15:45] Speaker 00: Then it says, so too, the frequency response graphs demonstrate this. [00:15:50] Speaker 00: And then it says, and it can be satisfied by any mechanism. [00:15:53] Speaker 00: So I think a reasonable understanding of what we were saying was that they both contribute, but maybe, and I'll end on this point if I have the leave to do so, [00:16:02] Speaker 00: It's strong medicine to say, because we didn't precisely say combined, our entire case ends. [00:16:08] Speaker 00: I mean, that's cutting it pretty slim, especially in light of the fact that the rules do not actually say how. [00:16:14] Speaker 00: They only say where. [00:16:15] Speaker 00: So we would ask the court to reverse. [00:16:18] Speaker 00: I see I've not saved any of my time. [00:16:21] Speaker 00: I'll restore some. [00:16:22] Speaker 00: Thank you. [00:16:23] Speaker 03: Yep. [00:16:26] Speaker 03: Ms. [00:16:26] Speaker 03: Postwick. [00:16:33] Speaker 02: Thank you, Your Honor. [00:16:33] Speaker 02: May it please the court, the prosecution history. [00:16:37] Speaker 02: Can we start where we ended? [00:16:39] Speaker 03: How where? [00:16:40] Speaker 02: Yes, Your Honor, absolutely. [00:16:43] Speaker 02: So first, I want to note, as this court has held in many cases, including the Phigenix case that is cited on page 27 of the opening brief, a district court gets deference in both its interpretation and application of its local patent rule. [00:16:58] Speaker 01: That's true. [00:16:59] Speaker 01: You know, when we're trying to think about what the rules say, they supply a very important notice function to the parties. [00:17:08] Speaker 01: And the notice that the rule supplies is pretty clear. [00:17:13] Speaker 01: You just have to identify where. [00:17:16] Speaker 01: You don't have to identify how. [00:17:18] Speaker 02: But what's equally clear clear your honor is a decade of precedent from the Southern District of California that uniformly interprets it to require not simply respectfully I don't see a decade of precedent every case you cited is unprecedented some of them are magistrate judges not even district court judges. [00:17:34] Speaker 03: And on top of all that, two of them are not even interpreting 3.1. [00:17:37] Speaker 03: They're just talking about, in general, let's see, which two, foot balance and anti-cancer, are just talking about, in general, how to do infringement contentions. [00:17:46] Speaker 03: They're not offering an interpretation of 3.1. [00:17:48] Speaker 03: They don't even quote or cite it or purport to offer an interpretation of 3.1. [00:17:53] Speaker 03: So show me the decades of precedent that I'm missing, and show me one presidential decision. [00:17:58] Speaker 03: Show me how they're on notice. [00:17:59] Speaker 02: I apologize, Your Honor, when I said precedent. [00:18:01] Speaker 02: There is a decade of consistent case law interpreting this. [00:18:04] Speaker 02: Tauchman has not cited a question. [00:18:05] Speaker 02: How many cases? [00:18:05] Speaker 03: How many cases? [00:18:06] Speaker 03: You cited two by magistrate judges, and they're non-prec, and two of them don't even mention or quote or cite the rule itself. [00:18:14] Speaker 02: I'm sorry, Your Honor. [00:18:16] Speaker 02: They're also in the district court's opinion. [00:18:18] Speaker 02: I think one thing I would like to highlight in terms of the notice function, Taction knew what these cases said. [00:18:24] Speaker 02: Taction itself relied on, for example, the clinic comp case, which is one of the non-precedential decisions that we have cited. [00:18:30] Speaker 02: Taction successfully relied on that case and many others. [00:18:34] Speaker 02: in its own motion to strike Apple's attempt to supplement its invalidity contentions for going beyond what had originally been disclosed. [00:18:42] Speaker 02: That happened before the motion to strike that's at issue in this case. [00:18:46] Speaker 02: It happened before they served Dr. Oliver's reports. [00:18:49] Speaker 02: The idea that they had to somehow scour the precedent, they knew it was required. [00:18:53] Speaker 03: I don't see them ever acknowledging at any point that they are required to meet this Howell limitation. [00:18:59] Speaker 03: It seems to have come out of the blue. [00:19:01] Speaker 02: I don't think that's a fair characterization. [00:19:03] Speaker 02: They had the cases, they relied on them. [00:19:05] Speaker 02: Yes, it was invalid. [00:19:06] Speaker 03: No, they didn't rely on them for that purpose. [00:19:08] Speaker 03: They did not rely on them for the notion that they have some obligation under the local rules to meet an additional how standard. [00:19:15] Speaker 02: I think that they certainly had the notice of what, if we're hung up on the word how, I think what's important is that they understood the substance of the rule. [00:19:22] Speaker 03: I'm not hung up on the word how, Ms. [00:19:24] Speaker 03: Boswick. [00:19:24] Speaker 03: I'm hung up on the rule. [00:19:26] Speaker 03: The rule says where. [00:19:27] Speaker 03: And guess what? [00:19:28] Speaker 03: The rule in an adjacent court says you have to prove how and where. [00:19:31] Speaker 03: And so it's not the word how, it's the rule. [00:19:34] Speaker 03: The rule says what they're required to proffer in infringement contentions. [00:19:39] Speaker 03: And I think that they complied with what that rule requires. [00:19:44] Speaker 02: So the district court here disagreed. [00:19:45] Speaker 02: It gets deference. [00:19:46] Speaker 03: It relied on cases that... But do you agree that the district court only disagreed because it concluded they were required to also prove how? [00:19:54] Speaker 02: No, Your Honor. [00:19:55] Speaker 02: He also found that they hadn't shown where and... Let's go to page 57. [00:20:03] Speaker 03: of his decision, sorry, JA57. [00:20:18] Speaker 03: Where in this decision does he say they didn't show where? [00:20:21] Speaker 03: Because it looks to me, he says, Taction needed to identify not only where in the accused products, the highly damped output limitation cell, [00:20:31] Speaker 03: but also precisely how those components satisfy the limitation. [00:20:34] Speaker 03: Taction failed to provide the requisite how in its final infringement contextions. [00:20:40] Speaker 03: I don't see where he took issue with where. [00:20:42] Speaker 03: And then in the footnote, look down below in the footnote, he says, you know, look, I get that the California rule and one court requires how and where and here it only requires where, but we require how and where. [00:20:55] Speaker 03: And then he cites to a amaranth, which is a non-precedential decision by a magistrate. [00:21:01] Speaker 02: Yes, Iran. [00:21:02] Speaker 02: I would direct you earlier in this opinion at appendix 55. [00:21:05] Speaker 02: So he identifies two significant differences between the final and Frenchman contentions. [00:21:10] Speaker 03: We're on page 55. [00:21:11] Speaker 02: I'm looking at the bottom. [00:21:12] Speaker 02: It says... Line number. [00:21:14] Speaker 02: Line number 26. [00:21:15] Speaker 02: First, Taction never expressly asserted or explained in its contentions that it is the closed-loop controller combined with the ferrofluid that satisfies the highly damped output. [00:21:24] Speaker 03: That's the failing of where, and then the second is... That's a problem. [00:21:29] Speaker 03: is where, right? [00:21:31] Speaker 03: They absolutely do, on page 3751, and it cannot be disputed, identify the closed loop controller and identify the ferrofluid, both of which they expressly indicate contribute to damping. [00:21:44] Speaker 03: They do that. [00:21:46] Speaker 03: You can't deny that. [00:21:47] Speaker 03: Look at 3751. [00:21:48] Speaker 03: What am I missing? [00:21:49] Speaker 02: I would respectfully disagree that they've clearly identified that the closed-loop controller is linked to the highly damped output. [00:21:57] Speaker 03: No, not highly damped. [00:21:58] Speaker 03: Damping. [00:21:59] Speaker 03: I said damping. [00:22:00] Speaker 02: But we're talking just about the highly damped output requirement. [00:22:03] Speaker 02: The disclaimer that the district court found is that separate from the claim language. [00:22:08] Speaker 02: Apple tried to argue this was an interpretation of the claim language. [00:22:11] Speaker 02: The district court instead found [00:22:13] Speaker 02: There is simply a disclaimer of the invention requiring highly damped... I don't want to talk about the disclaimer. [00:22:18] Speaker 03: I can be more clear about that. [00:22:20] Speaker 03: To the extent that the court's statement concerning... I'm sorry, I'm going to be clear. [00:22:25] Speaker 03: I'm reading from 3751, line 5. [00:22:27] Speaker 03: To the extent of the court's statement concerning transducers with highly damped output is ultimately imposed as a requirement. [00:22:32] Speaker 03: Detection contains the detection engines in the accused products are transducers with highly [00:22:37] Speaker 03: damped output. [00:22:38] Speaker 03: Apple itself, for example, stated the frequency response is controlled, including the frequency response at the resonant frequency, through the use of the closed-loop software controller. [00:22:48] Speaker 03: So how is it they have not linked the closed-loop software controller directly to highly damped? [00:22:53] Speaker 02: I would say that sentence doesn't talk about highly damped output, whereas the sentence about the furrow thing does. [00:22:57] Speaker 02: For example? [00:22:58] Speaker 03: Wait, the for example? [00:22:59] Speaker 03: For example, these things begin with for example. [00:23:02] Speaker 03: What other example could they be referring to? [00:23:03] Speaker 03: For example, something I'm not talking about anywhere. [00:23:05] Speaker 03: The prior sentences are highly damped output. [00:23:07] Speaker 03: For example, [00:23:09] Speaker 02: I think, Your Honor, it's difficult to understand these contentions as referring to the closed-loop controller contributing to the highly damped output when they are using frequency graphs that were created by taking the closed-loop controller out of the system and looking only at the fair output. [00:23:22] Speaker 02: If the Court disagrees, if the Court thinks that the District Court abused its discretion in this finding, then there are two other reasons why, if you uphold the disclaimer of highly damped output, [00:23:31] Speaker 02: The district court's decision should be affirmed. [00:23:33] Speaker 02: They have the mechanical damping issues and the key factor issues that we talked about. [00:23:37] Speaker 03: Well, just out of curiosity, page 3751, what is the bolded title of this paragraph? [00:23:41] Speaker 02: Transducers with Highly Damped Output, yes. [00:23:43] Speaker 03: Oh, wow, look at that. [00:23:44] Speaker 02: Understood, Your Honor. [00:23:45] Speaker 02: But again, in context, I think when they're talking about testing, that didn't involve the closed-loop controller at all. [00:23:51] Speaker 02: And then they come back with an expert report that is a complete 180 from these that depends entirely on the closed-loop controller. [00:23:58] Speaker 01: Let me ask a hypothetical. [00:23:59] Speaker 02: Yes, Your Honor. [00:24:01] Speaker 01: OK. [00:24:02] Speaker 01: What if we think there's a prosecution disclaimer? [00:24:04] Speaker 02: Yes, Your Honor. [00:24:06] Speaker 01: But also what if we don't like the extra constructions requiring mechanical damping or particular Q factor value? [00:24:21] Speaker 01: And we also think the judge went too far in demanding where [00:24:32] Speaker 01: I mean, sorry, demanding how the claim elements are all met by the accused product. [00:24:39] Speaker 01: But we can't tell if, based on this order, whether there's a separate standalone ground for other reasons why there is a justification to exclude the expert report. [00:24:55] Speaker 01: Could we vacate and remand for [00:24:59] Speaker 01: a second look at whether or not Dr. Oliver's expert report on highly damped output should be excluded or not excluded? [00:25:10] Speaker 02: I think that's certainly an option that's open to this court. [00:25:15] Speaker 02: I think that if the court were to say that actually the Southern District has misunderstood its rules and that they don't require a how, then [00:25:25] Speaker 02: Certainly, the district judge should be given an opportunity to apply that standard in the first instance. [00:25:30] Speaker 02: Our position is that it's clear from his opinion that he did not find the where met, because he did not find it to be the same theory of infringement from the final infringement contentions to the expert report. [00:25:43] Speaker 02: And that is really the critical difference here. [00:25:45] Speaker 01: There's some confusion, because at 857, the district court does say, [00:25:52] Speaker 01: because there was a failure to identify how in the final infringement contentions I'm going to strike Dr. Oliver's expert report. [00:26:04] Speaker 01: And so it's kind of interesting that because in the district court's view there was a defect in the final infringement contention, he's going to exclude this expert report over here. [00:26:19] Speaker 02: I think that that's pretty typical. [00:26:21] Speaker 02: Again, I would point out, Taction has asked this court for leave to amend its contentions. [00:26:27] Speaker 02: It never asked the district court for that. [00:26:28] Speaker 02: So the idea that this is too harsh a remedy. [00:26:31] Speaker 02: Also, again, Apple's supplemental invalidity contentions. [00:26:34] Speaker 02: Ms. [00:26:34] Speaker 03: Bosswick, did you tell me that you didn't understand this paragraph, despite the title, transducers with highly damped output, at page 3751? [00:26:43] Speaker 03: Did you tell me that you did not understand this paragraph when it talked about the closed-loop controller? [00:26:49] Speaker 03: to be asserting that the closed loop controller was integrated as part of the highly damped output. [00:26:55] Speaker 03: Is that what you told me? [00:26:56] Speaker 02: If I said that I misspoke, I understand that we recognize they referred to it. [00:27:00] Speaker 03: What we didn't understand... I want to point you to... You did say it. [00:27:03] Speaker 02: Yes, I agree. [00:27:03] Speaker 02: So you definitely said it. [00:27:04] Speaker 03: So let's look at page 4967. [00:27:06] Speaker 03: Yes, Your Honor. [00:27:09] Speaker 03: Page 4967, does or does Apple not say at line five, [00:27:14] Speaker 03: actions infringement actions appear to rely on Apple's closed-loop controller for this limitation. [00:27:19] Speaker 02: Yes, yes. [00:27:20] Speaker 03: Highly damped output. [00:27:21] Speaker 02: Yes, Your Honor. [00:27:22] Speaker 02: And what we didn't understand was both the combination of the two and particularly how that could be a theory of infringement. [00:27:28] Speaker 02: So do you now agree that the wearer is met? [00:27:30] Speaker 02: No, Your Honor. [00:27:30] Speaker 02: And that the district court didn't conclude the wearer wasn't met? [00:27:32] Speaker 02: No, Your Honor, because it's the combination, the two things combined, we did not say we understood them to be relying on that. [00:27:38] Speaker 02: And again, that wouldn't have made sense when they're talking or they're relying on frequency graphs that were created [00:27:43] Speaker 02: They took the Taptic engine out of the device, they put it on an electrodynamics shaker. [00:27:50] Speaker 02: Instead of using the closed-loop controller software to provide this input signal to the Taptic engine, they used the electrodynamics shaker and they measured it with and without the ferrofluid. [00:28:02] Speaker 02: eliminating the closed loop controller from the system in order to show a highly damped output, you can't read a theory of infringement from that that nonetheless relies on a closed loop controller. [00:28:13] Speaker 02: In contrast, Dr. Oliver's report does the opposite. [00:28:16] Speaker 02: He goes on for 50 pages with a whole set of new tasks and software that he wrote that solely control the closed loop controller and don't measure the effect of the ferrofluid, including because he said, I think the question came up in [00:28:29] Speaker 02: the opening argument, you know, did you use those frequency graphs in Dr. Oliver's report? [00:28:33] Speaker 02: No, they didn't, because Dr. Oliver opined that those graphs did not show a highly damped output. [00:28:39] Speaker 03: Now, counsel, I know you wanted to start with your strongest argument, which is page 1050 disclaimer, and I got you all to set out of that for the obvious reason, I hope now, to you, which is don't waste your time on an argument that [00:28:51] Speaker 03: is your strongest. [00:28:52] Speaker 03: Let's focus on the ones that I'm struggling with, right? [00:28:54] Speaker 03: So hopefully you get it. [00:28:55] Speaker 03: But I do want to give you a chance to go back to that argument at page 1050. [00:28:59] Speaker 03: And here's why. [00:29:00] Speaker 03: I want to ask a question. [00:29:01] Speaker 03: I want you to open it up, your appendix to that page, 1050. [00:29:05] Speaker 03: So when it says applicant invention in contrast is directed to transducers with highly damped output. [00:29:12] Speaker 03: I like the district court. [00:29:15] Speaker 03: I see that. [00:29:16] Speaker 03: And that sure looks like a disclaimer to me. [00:29:18] Speaker 03: One of the questions I have [00:29:20] Speaker 03: Is that a disclaimer only as to claim 15, that particular language? [00:29:27] Speaker 03: And in particular, should it travel along with the amendment that was made? [00:29:32] Speaker 03: And by the way, let me just say I've tracked through this case, and I think all your asserted claims have nearly identical in substance, the 40 to 200 hertz, the whole, all that language, right? [00:29:44] Speaker 03: I guess what I was wondering is when a statement like this is made in the context of discussing a new amendment to a particular claim limitation, does that statement affect all claims globally such that now every single claim that could ever spawn from this invention must have a highly damped output, or does it only affect claim 15 and progeny that have [00:30:10] Speaker 03: carry through the similar language? [00:30:13] Speaker 02: A couple answers, Your Honor. [00:30:14] Speaker 02: I do think it should affect, in this context, it should affect all the claims coming from this common specification, right? [00:30:21] Speaker 02: This is the parent application to both the 885 and the 117, so it's an identical specification. [00:30:26] Speaker 02: And the statement is, applicants' invention, in contrast, is directed to transducers with highly damped output. [00:30:32] Speaker 02: And that's in the context [00:30:34] Speaker 02: of a specification that consistently says the same thing, that consistently criticizes... Okay, and maybe that the fact that you're saying in conjunction with the specification, because my other problem... [00:30:44] Speaker 03: You're right. [00:30:45] Speaker 03: If that statement was the only one like it, like it was a zebra with polka dots, I would be like, yeah, that's a disclaimer. [00:30:51] Speaker 03: But page 1051, when I read the rest of the response, I found that the applicant, and he didn't make this argument. [00:30:58] Speaker 03: So if you're not prepared to discuss it, I'll forgive you. [00:31:01] Speaker 03: But I mean, it is a question of law, and I read the whole response. [00:31:04] Speaker 03: So the very next page, page 1051, they use this language again, right? [00:31:09] Speaker 03: Applicant invention in contrast specifies several important aspects. [00:31:13] Speaker 03: And what these aspects are directed to is the headphones, right? [00:31:17] Speaker 03: The cup-like shape of the headphones. [00:31:19] Speaker 03: And I thought, okay, clearly not every claim in this patent requires cup-like shaped headphones. [00:31:24] Speaker 03: And that's the limitation that was added for claim 16 using the identical language. [00:31:29] Speaker 03: So while in general, I'm a big fan of if you say the invention is or the invention is directed to or whatever, you now are stuck with that for all your claims. [00:31:36] Speaker 03: this applicant seemed to use that language repeatedly when clearly they weren't meaning to limit all claims. [00:31:43] Speaker 03: I mean, in a way, an ordinarily skilled artisan, I don't think an ordinarily skilled artisan would rate the language I just pointed to and conclude that this applicant intended every single claim to have headphones with cuff-like shapes. [00:31:54] Speaker 03: Do you understand? [00:31:55] Speaker 02: I do. [00:31:56] Speaker 02: May I respond? [00:31:56] Speaker 03: Of course. [00:31:57] Speaker 03: He's probably going to let him go over. [00:31:59] Speaker 03: Go over to you. [00:32:00] Speaker 02: Be sure, Your Honor. [00:32:01] Speaker 02: Yes, and I think the context is critical. [00:32:03] Speaker 02: I don't think we're asking for a bright line rule that any time someone says, my invention is this, that you get a disclaimer for all purposes. [00:32:11] Speaker 02: But we are talking about this disclaimer, this statement made in the prosecution history, as to a patent that, again, throughout the specification talks about the importance of substantial uniformity of the frequency response, which Taction now agrees, because it successfully argued to the district court, is synonymous with highly damped output. [00:32:29] Speaker 02: You have every embodiment showing substantial uniformity. [00:32:34] Speaker 02: You have criticism of the prior art for not being sufficiently damped. [00:32:38] Speaker 02: I think in this context, when the patentee, along with all of those disclosures, comes in and says, applicant's invention is directed to transducers with highly damped output, they should be held to that representation. [00:32:49] Speaker 03: Okay, that's very helpful. [00:32:51] Speaker 03: Do you have anything for us? [00:32:53] Speaker 03: Oh yeah, you look like, go ahead, just jump on in. [00:32:56] Speaker 03: Let's just, we can stop. [00:32:58] Speaker 03: Okay. [00:33:00] Speaker 03: Thank you. [00:33:01] Speaker 03: Thank you. [00:33:03] Speaker 03: Mr. Bash, I'm going to restore three minutes of rebuttal time. [00:33:05] Speaker 00: Thank you, Judge. [00:33:07] Speaker 00: I want to make a handful of points. [00:33:09] Speaker 00: One, we agree with Apple that if the court concludes that the two what I'll call subsidiary disclaimers are invalid and that there was at least some error in the district court's treatment of infringement intentions in the expert report, but you're not sure if there were other grounds, vacater and remand would be appropriate. [00:33:26] Speaker 00: The one thing I wanted to bring to the court's attention [00:33:28] Speaker 00: is we did make the argument below that this was not an appropriate basis for summary judgment. [00:33:34] Speaker 00: If you look at Appendix 59, that's the striking of the report. [00:33:40] Speaker 00: So what we argued below is that Apple should have raised any issues with the inadequacy of the... Did you make that in your opening? [00:33:48] Speaker 03: Yeah, in our opening... Your argument here, did you give Ms. [00:33:52] Speaker 03: Postwick a chance to respond to this argument? [00:33:54] Speaker 00: in our opening brief. [00:33:55] Speaker 03: No, I'm not asking about your brief. [00:33:56] Speaker 03: I'm saying an oral argument. [00:33:58] Speaker 03: When you stand up and you present issues, do you understand that then she's kind of confined to those issues? [00:34:04] Speaker 00: Yes, and in my colloquy with Judge Shen at the conclusion of my argument earlier, I argued that summary judgment was too strong of medicine for what is at most a reasonable disagreement about procedure requirements. [00:34:14] Speaker 00: I'm just showing the court where we preserve that argument in the record. [00:34:17] Speaker 00: It was made in a slightly different way. [00:34:18] Speaker 03: That's what you're doing. [00:34:18] Speaker 03: That's fine. [00:34:19] Speaker 03: I just want to make sure that fair is fair. [00:34:21] Speaker 00: On highly damped output, I know that's not what the court wanted me to focus on, because Chief Judge Moore, you had a colloquy with my opponent about it. [00:34:28] Speaker 00: I just want to remind the court, and I know the court knows this, if we have any reasonable reading of that disclaimer that's not, or any reasonable reading of that sentence that's not a disclaimer, that's enough for us to prevail. [00:34:39] Speaker 00: It's a clear and unmistakable standard. [00:34:41] Speaker 00: This court has said any reasonable reading defeats a disclaimer. [00:34:45] Speaker 00: And Chief Judge Moore, to your question specifically, might this have been [00:34:50] Speaker 00: specific to claim 15 of the 394 application in our opening brief. [00:34:55] Speaker 00: We have made that point a number of times. [00:34:57] Speaker 00: One point we've made on that is that claim 15, and this is at page 1062 of the appendix, had an additional element, an apparatus for imparting vibratory motion to the at least one vibration module of a user's skin. [00:35:12] Speaker 00: It goes on. [00:35:13] Speaker 00: The point we've made is that if you looked at the specification about that sort of [00:35:19] Speaker 00: application of this, there are additional components that might serve to have further damping when it's talking about something that goes against somebody's skin. [00:35:26] Speaker 00: So that could at least reasonably, and that's the standard here, account for the highly damped output disclaimer. [00:35:33] Speaker 00: And again, of course, just to remind the court, our view is that that is talking about [00:35:36] Speaker 00: the purpose of the device, what can be achieved. [00:35:39] Speaker 00: That's consistent with the specification. [00:35:41] Speaker 00: It's also consistent with this court's cases like copoxone that say that even... Counsel, this is a very poor use of a very short amount of time. [00:35:47] Speaker 00: Well, let me just add the last point, which is that counsel didn't have a chance much to talk about the mechanical damping and Q factor limitations. [00:35:56] Speaker 00: The Q factor does not satisfy the clear and unmistakable limit standard by any stretch. [00:36:01] Speaker 00: The district court, in our view, respectfully just misread a single passage [00:36:06] Speaker 00: The mechanical damping limitation is not in any way liquid. [00:36:08] Speaker 03: I'm sorry, counsel, your time is up. [00:36:10] Speaker 00: Thank you, Chief Judge Moore. [00:36:11] Speaker 03: I thank both counsel. [00:36:12] Speaker 03: The case is taken under submission.