KYOCERA SENCO INDUS. TOOLS INC v. ITC
Oral Argument — 11/01/2021 · Case 20-1046 · 59:27
0:03
Judge Moore
Please be seated.
0:09
Our next case for argument is 21-1381.
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Our first case for argument this morning is 20-1046,
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Kyocera v. the ITC.
0:20
Mr. Shulman, please proceed.
0:23
Appellant Attorney (Amol A. Parikh)
Good morning, and may it please the Court.
0:30
The Commission erred in its determination of non-infringement for two reasons.
0:34
First, because it misconstrued the driven position,
0:37
and second, because it erroneously...
0:39
Judge Dyk
You don't want to take your mask off.
0:40
Appellant Attorney (Amol A. Parikh)
With the Court's permission, thank you.
0:43
And second, because it erroneously excluded the Doctrine of Equivalence testimony of Dr. Pratt.
0:48
Judge Moore
How do I pronounce your name?
0:49
Appellant Attorney (Amol A. Parikh)
Referring to the driven position.
0:51
The driven position is the position near or at the bottom-most travel position
0:56
where the rotary member re-engages the driver member to lift it back up to its ready position.
1:03
This is near or at the bottom-most travel position because of recoil.
1:07
There is a piston bumper,
1:09
and in pages 1939-1940 of the record it is admitted that every tool ever made has had this piston bumper
1:17
because otherwise, tools would crash together, the whole thing would explode, you'd only be able to use it once.
1:22
And once it recoils, and the evidence in 1935 of the record was that the accused tool
1:28
recoils to 1 16th of an inch from the bottom-most travel position,
1:32
at that point, or at the bottom-most travel position,
1:36
the rotary member lifts it back up,
1:39
to the top,
1:40
to the ready position.
1:42
And if the court looks at page 51 of our reply brief, which is
1:47
figure 20 from the 296 Patent, and I'll refer to the 296 Patent as representative of all of them,
1:55
and look at that figure 20, that annotated figure 20,
1:59
along with, and you can follow along in Appendix 362, column 26,
2:04
which is the description in the 296 Patent
2:08
of this particular
2:10
drawing, and it begins on line 43.
2:15
It says,
2:16
referring to figure 20,
2:17
the piston 458, so this is in the red box,
2:21
is depicted near or at its bottom-most travel position.
2:25
And in this configuration, the displacement volume and the main storage chamber are at their largest combined volumes,
2:31
while the cylinder venting chamber is at its minimum volume.
2:34
This bottom position,
2:37
referring to a position near or at the bottom-most travel,
2:40
is also sometimes referred herein as the driven position.
2:45
It goes on to say in figure 20,
2:47
movable piston 458, this is the blue box,
2:51
is now in contact with the station, I'm sorry, the piston 458, still in the red box,
2:56
is now in contact with the stationary piston stop, that's the bumper,
3:00
which is why the cylinder venting chamber is at its minimum or zero volume.
3:05
If we're at its zero volume, it would be at its bottom-most travel position, but it might not be zero.
3:10
In figure 20,
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Now at the blue box, the driver is also at its bottom-most travel position, and its lower-most tip can be extending out the exit port.
3:19
This demonstrates that the bottom position is nearer at the bottom-most travel position.
3:26
In fact, everywhere in the patent in which the patentee wished to describe the bottom-most travel position, it literally said bottom-most travel position.
3:38
The only time in the patent where it's referred to as a bottom position generally is when it describes the driven position as distinct from the bottom-most travel position.
3:49
And given the proper construction, I don't believe there's any dispute that that 1-16th of an inch difference was near the bottom-most travel position, and therefore there would be infringement.
4:03
Moving on to the doctrine of equivalence issue and Dr. Pratt.
4:06
Judge Dyk
What was Dr. Pratt going to testify?
4:11
As to the doctrine of equivalence, what was he going to say?
4:14
Does the record show that you submit a proposed testimony by him?
4:20
Appellant Attorney (Amol A. Parikh)
Yes, Your Honor.
4:20
So that was, again, in the record around pages 1931 to 1940 is Dr. Pratt's – a description of Dr. Pratt's testimony.
4:32
What the testimony would have been – and again, it depended on this driven position.
4:38
What volume was it attended?
4:43
It would be, Your Honor, in volume two of the appendix.
4:49
So, again, it was in – from 19 – around 1931 to 1940, there is a description of what Dr. Pratt and, for that matter, Dr. Valli's testimony was surrounding the bottom position.
5:06
Once the court had determined that the driven position meant –
5:12
at the bottom-most travel position, at that point, the testimony would have been that one-sixteenth of an inch difference would have been equivalent to that bottom-most travel position.
5:25
But what's interesting, Your Honor, I think, and what reflects why the court's – the commission's determination on Dr. Pratt's testimony was faulty is there's an anomaly here.
5:39
Because had the ALJ construed –
5:43
– if she paled the höllen, our mission to bring the bottom – the driven position at or near the bottom-most travel position.
5:48
The ALJ would have let, Dr. – and, in fact, did let Dr. Pratt testify at the literal infringement,
5:53
he would have been able to testify that one-sixteenth of an inch is near the bottom-most travel position.
5:59
But once the ALJ ruled and the commission agreed that the bottom-most – that the driven position is only the bottom-most travel position,
6:07
now it ruled, because of his lack of qualifications as being a literal person of ordinary skill in the arts –
6:12
that he could not testify that 1 16th of an inch
6:15
was equivalent to the bottom of his travel position.
6:17
So you have these two, basically, essentially the same testimony,
6:20
that 1 16th of an inch was near,
6:22
that he would have been allowed to testify,
6:24
and 1 16th of an inch away was equivalent,
6:27
which he wasn't allowed to testify.
6:29
Judge Moore
Why should someone who isn't qualified as a skilled artisan
6:33
be allowed to offer expert testimony
6:36
on how a skilled artisan would view these factual questions?
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Appellant Attorney (Amol A. Parikh)
Well, Your Honor, this Court has never said
6:45
that an expert has to literally be a person of ordinary skill in the art.
6:50
Judge Moore
No, we said they have to, at a minimum,
6:51
possess the level of skill in the art of an ordinarily skilled artisan.
6:56
It would be impossible to find someone who literally meets the definition.
7:00
An expert, by very nature of the word,
7:03
would likely exceed the minimum level of qualification.
7:08
So why should it be, though,
7:10
someone who doesn't possess the minimum level
7:12
of the level of qualification?
7:12
Someone who doesn't possess the minimum level of qualification
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should nonetheless be allowed to be testifying
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as an expert on factual matters.
7:17
Appellant Attorney (Amol A. Parikh)
I think, Your Honor, this Court's decision in S.E.B.
7:20
provides a useful answer to that.
7:22
In S.E.B., where the invention was a friar,
7:27
and the expert admittedly had no expertise in friars,
7:32
but the limitation in question had to do with polymers,
7:35
and he was an expert polymer.
7:35
Judge Moore
Yes, but in that case,
7:37
the parties had a different level of ordinary skill in the art.
7:42
Right.
7:42
And the expert in that case was not excluded
7:44
by virtue of failing to meet the level of skill in the art.
7:47
In this case, you have a level of skill
7:49
that's been decided as a factual matter,
7:53
and your expert doesn't meet it.
7:55
So the S.E.B. case is irrelevant to that.
7:59
Appellant Attorney (Amol A. Parikh)
Well, Your Honor, respectfully, I don't think S.E.B. ever,
8:02
I searched, S.E.B. never refers to the level
8:04
of ordinary skill in the art in the decision.
8:06
Judge Moore
But that's exactly what distinguishes that case
8:10
from this one, Counsel.
8:11
In this one, there is a clear assertion of what qualifies
8:17
for a level of skill in the art,
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and there were those three different tiers of level,
8:21
depending on whether you had a bachelor's,
8:23
a master's, or a doctorate,
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but all of them required accompanying work
8:28
in the particularized field.
8:31
Appellant Attorney (Amol A. Parikh)
Well, Your Honor, so Dr. Pratt's experience,
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and this was all he lacked, the ALJ ruled, was experience.
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He had the education, but the issue,
8:41
was he had experience in fastener driving tools,
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and the question was did he have experience in power nailers.
8:48
And in Appendix 755, he gives his experience.
8:51
Judge Moore
Yes, but now what you're suggesting is
8:53
that we should disregard a level of skill in the art once it's
8:57
ascertained or stipulated to,
8:59
and that we should undertake some factual analysis
9:02
of whether we in particular think somebody has enough
9:05
relevant experience even though they don't meet the
9:08
minimum standard, is that how you would
9:11
like future analysis to be?
9:11
Is that how you would like future cases to proceed?
9:13
It seems squishy and not very consistent
9:16
with the whole FOSETA concept.
9:19
Appellant Attorney (Amol A. Parikh)
Well, Your Honor, admission of expert testimony is always
9:22
reviewed for abuse of discretion.
9:24
The court has discretion, and the court can ask,
9:26
the district court can ask whether
9:29
or not this particular person is capable of testifying
9:33
from the perspective of one having ordinary skill
9:36
in the art, and in this case, the difference in the skill
9:40
in the art, the qualifications,
9:41
or what he had was minimal, that the ALJ let him testify
9:45
as to literal infringement saying I believed it was a close call
9:48
and said that the only reason the ALJ did not let Mr. Pratt
9:53
testify as to doctrine of equivalence is
9:55
because he thought Aquatex forbid him from doing so.
10:00
Judge Cunningham
Counselor, did you actually stipulate to the definition
10:04
of FOSETA during Markman or otherwise conceded?
10:07
Appellant Attorney (Amol A. Parikh)
The level of ordinary skill in the art?
10:09
Judge Cunningham
Yes.
10:10
Appellant Attorney (Amol A. Parikh)
Yes, Your Honor.
10:10
That was set forth in Markman, and we're not arguing
10:15
to change the level of ordinary skill in the art ruling here.
10:17
Judge Cunningham
Did you ever preserve an objection to it later,
10:20
or was it basically that you conceded it and?
10:23
Appellant Attorney (Amol A. Parikh)
We continue to argue it, Your Honor, but we believe it's irrelevant
10:28
to the point, we believe it's not determinative
10:31
of the point here, because his experience, which was years
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of designing pneumatic fasteners,
10:40
including Ritz-Carlton.
10:41
Allowed him to testify from the perspective of ordinary skill
10:44
in the art as to the particular equivalent in question,
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which is what SEB says.
10:47
You look at his experience relevant to the equivalent
10:50
in question, and nobody has raised any argument that
10:53
because of his experience in pneumatic fastener drivers
10:57
like rivets, that he couldn't tell the equivalence of 1 16th
11:00
of an inch from the bottom most travel position.
11:02
Judge Moore
I believe that Judge Dyke was asking you a question a minute
11:06
ago, which didn't get completed, but I believe I'm going to guess
11:10
what the question was, and it is, doesn't Aquatex actually preclude
11:14
this panel from doing exactly what you're seeking to do in this case?
11:18
It seems quite clear to say the doctrine require that evidence
11:22
be presented to the jury or other fact finder through
11:25
the particularized testimony of a person of ordinary skill in the art.
11:29
So doesn't that preclude?
11:31
I mean, that is a case that binds this court and that we have to
11:36
give finding precedent to.
11:38
Doesn't that preclude exactly what you're asking us?
11:40
To determine in this case?
11:42
Appellant Attorney (Amol A. Parikh)
I see I'm in my rebuttal time, so I'd like to answer that question.
11:44
Your Honor, first of all, I believe when it says of,
11:50
if you look at the first sentence of that paragraph,
11:53
it says both the Supreme Court and this court have made clear
11:56
the evidence of equivalence must be from the perspective
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of someone skilled in the art, for example,
12:01
through the testimony of experts or others versed
12:04
in the technology, which seems to be an expert who's not
12:08
necessarily a person having ordinary skill in the art,
12:10
testify from the perspective or by documents.
12:14
So not even an expert, not a person, including texts or treatises.
12:18
I think, Your Honor, that the word of is holding far too much weight
12:23
in this circumstance.
12:24
The rest of AquaTex is all about particularized linking testimony.
12:29
In fact, Your Honor, I would argue and I do argue, we do argue that
12:32
that the phrase that you're relying on in AquaTex was dicta.
12:38
The court is not bound by that.
12:40
The holding in AquaTex was that the CEO who gave generalized
12:45
equivalence testimony did not give particularized linking
12:48
testimony to the equivalent in question.
12:50
That was the holding in why his testimony was excluded.
12:55
It was an additional fact that he also didn't happen
12:59
to be an expert, but the court had already determined
13:02
that he didn't give particularized linking testimony,
13:05
and the rest of AquaTex is all about the requirement
13:07
for particularized linking testimony.
13:09
I see I'm interrupting.
13:10
My rebuttal time.
13:11
There are no further questions.
13:13
Judge Moore
No problem.
13:13
Thank you, Mr. Shulman.
13:14
Appellant Attorney (Amol A. Parikh)
Thank you, Your Honor.
13:29
Judge Moore
Mr. Is it Mr. Parikh?
13:31
Am I saying that right?
13:32
Okay.
13:54
Appellee Attorney (Clint A. Gerdine)
May I remove my mask?
13:55
Thank you.
14:11
Good morning, Your Honors.
14:12
So I'd like to
14:14
follow up on one thing Mr.
14:16
Shulman said about how the district court can determine whether a person of ordinary
14:21
or whether an expert can testify from the perspective of one of ordinary
14:25
skill in the yard.
14:26
And I believe he said that there was no finding in this
14:28
case that Dr. Pratt could not testify from the perspective of one of ordinary skill in
14:34
the yard, but the record shows otherwise.
14:38
At Appendix 1358, there was an issue during trial about whether Dr. Pratt could testify
14:45
from the perspective of one of ordinary skill in the yard.
14:48
And Judge Bullock found below that, and he said, well, unfortunately, Order 2008, I believe,
14:54
has resolved that, so you're going to have to move on to another question.
14:57
So there was a specific question.
14:58
What is the finding below that Dr. Pratt could not testify from the perspective of one of
15:05
ordinary skill in the yard?
15:06
And subsequently, the discussion about Aquatex, I think Aquatex clearly demonstrates that
15:12
evidence of equivalence has to be from, or has to have testimony from the perspective
15:19
of someone skilled in the yard.
15:20
And here, there is no question that Dr. Pratt did not meet that minimum level.
15:24
Judge Dyk
Okay.
15:24
So apart from his testimony about the doctrine of equivalence, your question is, is there
15:28
any argument that he should not have been able to testify as to other claim limitations,
15:35
correct?
15:35
Appellee Attorney (Clint A. Gerdine)
That's correct.
15:36
Judge Dyk
And it seems to me, outside of the doctrine of equivalence area, let's take a hypothetical
15:41
that the invention is an automobile with leather seats, one of the limitations is leather seats.
15:48
Shouldn't someone under those circumstances, who's an expert in leather, be allowed to
15:56
testify whether the particular material used was, you know, an ordinary skill in the yard?
15:59
Or is it considered in the art to be leather?
16:02
Appellee Attorney (Clint A. Gerdine)
If the level of skill in the yard that's found is somebody who has experience of leather
16:07
seats, then I would...
16:09
Judge Dyk
No, no, I'm saying that the level of skill in the yard is someone who's been in the automobile
16:13
industry, has a degree in automotive engineering, has had 10 years designing automobiles, to
16:22
testify about whether a particular material is leather or not.
16:27
An expert in...
16:29
An expert in leather might actually be able to testify with more credibility about that
16:36
issue than someone who has a more general expertise in automobile technology, right?
16:42
Appellee Attorney (Clint A. Gerdine)
It's possible.
16:43
And I think under SED, that testimony, if it's helpful to the trier of fact, then that
16:50
testimony should be permitted.
16:52
Judge Dyk
Okay, so what is it here that Pratt was testifying about?
16:55
Put aside the doctrine of equivalence.
16:58
Put aside the doctrine of equivalence as to other infringement issues that was...
17:03
Where he should have been excluded because he wasn't opposed.
17:09
Appellee Attorney (Clint A. Gerdine)
So, for example, the lifter member is one of the terms that the chief administrative
17:16
law judge relied on Dr. Pratt for understanding whether the lifting pins on the face surface
17:23
of the accused product met the lifter member limitations.
17:27
Okay.
17:28
So, that's one example of where the chief administrative law judge actually relied...
17:33
Judge Dyk
Why do you have to be an expert in power lifters to testify as to that?
17:38
Appellee Attorney (Clint A. Gerdine)
Because in...
17:39
So, Dr. Valley, Cokie's expert, provided testimony explaining why one of ordinary skill in the
17:46
yard needed to have experience in power nailers.
17:50
So, one example is the recoil of the tool.
17:53
Another example is the power cycle of the tool.
17:58
And the effect that the recoil...
18:01
These are complicated tools.
18:02
When the nailer...
18:03
The nail comes out at a high pressure, it has some recoil and how that impacts the other
18:09
components in the tool.
18:11
So, for example, the lifter member limitation.
18:14
Whether those pins are on the face surface.
18:18
Judge Dyk
And what else do you think he was improperly allowed to testify about?
18:23
Appellee Attorney (Clint A. Gerdine)
So, that's what the chief ALJ relied...
18:27
His...
18:28
His...
18:30
In our view, he should also not have been able to provide testimony on obviousness,
18:35
for example.
18:36
Now, there may not be as much error there because I don't think the chief ALJ appeared
18:41
to rely on Dr. Pratt's testimony.
18:43
But he...
18:44
The chief ALJ certainly relied on Dr. Pratt's testimony with respect to lifter member.
18:49
And under Sundance, the law is that you need to be an expert in order to open up your own
18:58
Judge Dyk
Okay, so as to the 1-12-6 issue, how does that help you on infringement?
19:06
I mean, I'm just wondering how this case comes out differently, whether it's 1-12-6 or not,
19:12
because the structure described for the lifter member, even under the 1-12-6 theory,
19:18
is still this lateral movement and the socket, whatever it is.
19:28
Appellee Attorney (Clint A. Gerdine)
So there's not evidence on the record because the claim construction came out
19:33
and then the parties operated under the claim construction that was adopted.
19:37
Judge Dyk
Okay, but how does the case come out?
19:39
I mean, you would have to agree that under 1-12-6 analysis,
19:43
this description of the lifter member in the specification is the corresponding structure, right?
19:51
Correct.
19:52
So how does that help you then?
19:54
I'm just not – what am I missing?
19:57
Appellee Attorney (Clint A. Gerdine)
Yeah, so before –
19:58
Before the claim construction, when the parties had competing claim construction,
20:01
Kochie had a non-infringement argument that it did not meet the lifter member limitation
20:06
under – if it were construed as 1-12-6.
20:10
The case would have to be remanded.
20:11
Judge Dyk
Why would that be true?
20:13
Appellee Attorney (Clint A. Gerdine)
Because the –
20:14
Judge Dyk
I mean, you've got to show harmful error here.
20:16
I'm just not understanding how saying that it should have been analyzed with 1-12-6
20:21
leads to a different result.
20:23
Appellee Attorney (Clint A. Gerdine)
Yeah, so again, there's not evidence on the record because of what the parties operated,
20:27
but to answer that question, I'm just not –
20:28
to answer your question, Your Honor, Kochie's lifter member structure is different.
20:34
It has two faces, and it has pins going from one face – or from one – through one face
20:40
to another face.
20:42
It also engages the driver member in a different orientation than the lifter member that's
20:48
disclosed in the assertive patents in this case.
20:53
But there would have to be a remand.
20:55
Judge Dyk
I'm not sure that I understand how that helps you because –
20:58
whether a lifter member is analyzed under the doctrine of equivalence, it's not a 1-12-6
21:05
situation, or whether it's analyzed under 1-12-6, the same arguments about equivalence
21:11
apply.
21:12
What's the point here?
21:14
Appellee Attorney (Clint A. Gerdine)
Well, the parties never got to whether Kochie's lifter member would be equivalent to – if
21:22
the lifter member were construed as 1-12-6.
21:25
Kochie had a non-infringement argument on literal.
21:28
I don't think – and again, it's not on the record, but I don't believe Kyocera ever
21:32
made the argument that Kochie's lifter would have infringed under the doctrine of equivalence.
21:38
So there's nothing in the record on that.
21:40
That would have to be, again, expert testimony as to why Kochie's lifter member would not
21:46
meet – or, I'm sorry, Kochie's – the component in Kochie's tool would not meet
21:51
the lifter member limitation if it were construed as a 1-12-6.
21:54
Judge Dyk
Okay, I don't want to take all of your time.
21:56
Go ahead.
21:57
Judge Moore
All right.
21:58
Can I back up for one second to the expert?
22:03
The expert in this case that you think should not have been allowed to offer testimony because
22:07
he wasn't, at a minimum, a skilled artisan, am I understanding correctly that he offered
22:13
testimony on claim construction, on infringement, literal, and then attempted on DOE, and also
22:19
on obviousness?
22:20
Appellee Attorney (Clint A. Gerdine)
Yes.
22:21
Judge Moore
And so your view is that he should not have been allowed to offer any of that testimony?
22:26
Appellee Attorney (Clint A. Gerdine)
That's correct, yeah.
22:27
Judge Moore
Does that result in –
22:28
Does that result in vacating and remanding this case?
22:30
What is the result of, if we were to agree with you, the exclusion of that expert's
22:35
testimony?
22:36
Appellee Attorney (Clint A. Gerdine)
So for – it would – for the 718 patent, it would result in remanding the case.
22:46
For the other patents, the 296, the 297, the 722, and the 282 patent, which were excluded,
22:58
that would result in an affirmance.
23:02
Judge Moore
Right.
23:02
Because they were excluded because they were trying to prove it under DOE, and if we agreed
23:06
it was correct, he couldn't give DOE testimony.
23:09
That's just an affirm.
23:10
That's right.
23:10
So only the 718 would be vacated and remanded.
23:13
Would we – would we be – but can you tell me precisely what issues you believe we would
23:18
be vacating and remanding for a new assessment of?
23:21
Appellee Attorney (Clint A. Gerdine)
It would –
23:22
Judge Moore
Obviously, literal infringement is one of them, right?
23:25
Appellee Attorney (Clint A. Gerdine)
That's correct, Your Honor.
23:29
If we – if we – if we – if we – if we – if we – if we – if we – if we – if
23:29
you take me – at a minimum, it would be literal infringement under – on theization
23:34
of the chief administrative law judge's holding on whether the accused product satisfied
23:40
the base surface limitation of lift or member.
23:42
Now, that's assuming that the court decides not to find lift or member subject to 112
23:47
§ 6.
23:48
If the court finds that lift or member subject to 112 § 6, there may be additional – depending
23:55
on the construction, on whether – yes, that's a little more elaborate than being
23:59
Judge Dyk
the accused products meet that that particular but the only but the only reliance on his testimony
24:05
was in connection with this lifter member issue that's correct yeah hard for me to see why green
24:13
Appellee Attorney (Clint A. Gerdine)
man could go beyond that um yeah and yeah for what the chief administrative law judge relied
24:21
solely on dr pratt's testimony for that one of that particular limitation um of course the
24:27
chief administrative law judge did rely on dr pratt's testimony for obviousness and the the
24:33
other limitations as well but there was additional evidence there that that the judge relied on as
24:39
well it wasn't solely dr pratt's testimony well you don't think those things need to be vacated
24:44
Judge Moore
and remanded uh the obviousness for example if one of the pieces of evidence that was relied upon
24:49
Appellee Attorney (Clint A. Gerdine)
was improper i i think it should be um because that is you know the evidence may uh may change
24:57
if
24:57
you don't have the battle of the experts anymore right you have one expert on one side analyzing
25:02
the evidence in a particular way and no expert on the other side analyzing the evidence for
25:09
obviousness on a particular issue and of course obviousness is analyzed from the perspective of
25:14
Judge Moore
one of ordinary skill in the yard well what precisely on obviousness did mr or dr pratt offer
25:19
testimony on what was the nature of his testimony as it pertained to obviousness so one example and
25:27
Appellee Attorney (Clint A. Gerdine)
we raise this in our brief in connection with uh the commission's finding of obviousness based on
25:34
the petasini reference and the issue in petasini is uh whether it has a main storage chain so
25:41
there dr pratt testified um as to whether that that region above the piston is a uh would be
25:50
considered a main storage chamber or not on the other hand kofi's expert dr valley explained why
25:57
you know why that chamber is not a main storage chamber and why uh the construction of the volume
26:03
is uh the displacement volume is only the or the volume in the main storage chamber uh
26:09
limitation is anything outside of the displacement volume so that's another area where
26:14
uh this is the chief administrative law judge cited to dr pratt's testimony in finding that
26:20
Judge Cunningham
the claims were not obvious are there open factual issues for the experts to weigh in on with respect
26:27
to 112 paragraph six you mentioned there was no evidence in the record i just want to know if
26:31
you're contending there are any open factual issues to be considered there well i think the factual
26:35
Appellee Attorney (Clint A. Gerdine)
issue would be for example whether uh if it is 112 paragraph six um whether the the lifter member
26:41
that's disclosed in the uh the 71a patent is actually in the kofi products um if it's under
26:50
Judge Moore
the 112 paragraph six if um if you don't mind would you mind if i moved you to a different issue
26:58
yes um if i thought the commission aired by interpreting the safety contact as part of the
27:06
fastener driver mechanism what would be the impact on this case uh there would be no finding of
27:11
Appellee Attorney (Clint A. Gerdine)
infringement the honor the chief administrative law judge already found that there is no infringement
27:17
because the say the fastener driving mechanism did not contact the work surface to initiate
27:26
driving cycle that finding was then
27:28
reversed by the commission but there was already a finding that kia sarah did not
27:34
Judge Dyk
meet their burden of proof to show that that limitation was met when when the trigger is
27:41
activated it would have to be wouldn't it if the driving member would be in contact with the surface
27:47
i mean you wouldn't trigger the the uh force uh when it was uh inch or so above that
27:57
surface
27:59
Appellee Attorney (Clint A. Gerdine)
right that's not true your honor you may have a little bit of space in between so you have the
28:04
safety contact element and then you have the bottom of the fastener driving mechanism which
28:09
is a little bit higher it's possible and this is how koki's tools operate where when you initiate
28:16
the safety contact element there is a little bit of space in between the bottom of the fastener
28:22
Judge Dyk
driving mechanism and the work no no my question was when you trigger the uh pneumatic
28:29
pressure the um driving mechanism is in contact with the surface right no it's not only the safety
28:38
Appellee Attorney (Clint A. Gerdine)
contact element is there's a there's a little bit of space in between okay while you're into your
28:46
Judge Moore
rebuttal time would you like to save some yes please thank you mr gary oh you're back there
29:06
Appellant Attorney (Amol A. Parikh)
no problem good morning may it please the court it's turning first to uh issue of dr pratt's testimony
29:23
commission to not abuse discretion here excluding his testimony for proving infringement
29:29
under the doctrine of equivalence consistent with the case precedent the doctrine of equivalence
29:38
proving infringement of doctrinal equivalence requires particularized testimony from a person
29:42
of ordinary skill in the art here was undisputed that dr pratt did not meet this level of power
29:48
narrow design however on the other hand regarding literal infringement and validity the commission
29:54
decided to use expression in allowing him his testimony for those purposes rather in the same
29:59
precedent describes that literal infringement is more of a straightforward uh simple manner
30:06
here it was okay it was not abusive discretion to allow in his testimony presenting the accused
30:13
products the accused product literature the relevant prior art for the alj and the commission
30:20
to compare the claim limitations to this prior art or to the
30:24
accused products accused product literature to determine invalidity or little infringement here
30:31
Judge Moore
let's turn into uh before before you turn you don't think that's a little weird that we that you
30:39
allowed his testimony on literal infringement which is from the vantage point of the skilled
30:43
artisan but did not allow his testimony from doe which is also from vantage point of a skilled
30:48
artisan he's qualified under one and not the other uh certainly i understand the question your honor
30:55
i don't envy your position right now i don't know how you can stand here and argue that this
31:01
really disparate split the baby sort of approach is a good idea for the law yeah i think the facts
31:07
Appellant Attorney (Amol A. Parikh)
here are just very unique uh in this case luckily for us this isn't a factual question is it
31:12
Judge Moore
i'm sorry there's this isn't a factual question right it's abuse of discretion and there's no
31:16
there's no question that he does not qualify as a skilled artisan is that correct
31:20
right there's an ordinary skill in the art as he does not have ordinary skill in the art correct
31:25
he absolutely does not have any years of working experience in the drive tool industry which is
31:31
required for a skilled artisan what was power narrow design okay he does not have any years
31:37
Appellant Attorney (Amol A. Parikh)
of experience right correctly admitted to that that he didn't qualify well why do
31:40
Judge Dyk
you distinguish between why did the commission distinguish between his testimony about doctrine
31:46
of equivalence and his testimony about level infringement why is he allowed to testify as
31:52
to the latter but not performance right because
31:56
Appellant Attorney (Amol A. Parikh)
The doctrine of equivalence, consistent with this court's precedent, again, requires a person of ordinary skill in the art to opine on the range of equivalence on a limitation-on-limitation basis that has inherent complexities and difficulties that just aren't a part of federal infringement or invalidity or other issues.
32:16
This is why it's required here and why, again, the facts of this case are very unique, for he excluded for that purpose of doctrine of equivalence but permissible non-abuse of the correct discretion to allow him for below infringement and invalidity.
32:33
Again, here the issues of below infringement and invalidity, again, were comparing the accused's product literature or the prior literature to the claim limitations, I think as stated by the ALJ at Appendix B.
32:48
So, again, if you're able to make that comparison.
32:51
Judge Cunningham
How do you distinguish Sundance?
32:53
Yeah.
32:53
Appellant Attorney (Amol A. Parikh)
I'm sorry?
32:54
Judge Cunningham
How do you distinguish Sundance?
32:57
Appellant Attorney (Amol A. Parikh)
Again, I think Sundance, again, didn't involve doctrine of equivalence here.
33:02
Doctrine of equivalence just has inherent complexities and difficulties that require that particularized testimony as stated in Aquatext.
33:11
Judge Moore
But Sundance does involve infringement and validity.
33:16
Appellant Attorney (Amol A. Parikh)
Correct, but...
33:17
Judge Moore
And it says expressly...
33:19
And it says expressly that where an issue calls for consideration of evidence from the perspective of one of ordinary skill in the art is contradictory to Rule 702 to allow a witness to testify on the issue who is not qualified as a technical expert in that art.
33:33
Appellant Attorney (Amol A. Parikh)
Correct.
33:34
Again, here he did not meet the specialized nature of power nail design.
33:38
He did meet...
33:39
He was at the level...
33:40
He did have generalized fastener driving mechanism.
33:44
I mean, fastener driver tools experience.
33:47
Again, it's very quirky.
33:49
There's a lot of feedbacks here, I admit, but not abuse of discretion.
33:54
Sorry.
33:54
Judge Moore
But, again, it's not the facts that bother me.
33:57
It's the failure to follow the law.
34:01
I guess, I'll be honest, I guess I thought in Sundance we made it really clear that to be, to give testimony on infringement or validity, you had to, at a minimum, be an ordinarily skilled artisan.
34:13
And he's not.
34:16
Appellant Attorney (Amol A. Parikh)
Right.
34:16
That was admitted to.
34:17
But, again, here, under the particular facts.
34:20
The...
34:21
The infringement here, the invalidity, what he provided, again, was little more than what the ALJ and Commission did here as fact finders in comparing the accused product literature, the accused products, to the claim limitations at issue.
34:36
Again, it's stated in those pages 182, 183, that he was able to do it for multiple claim limitations to basically make that comparison and make the determination of infringement.
34:51
Thank you.
34:52
Good.
34:52
And this issue was pretty well covered in our briefing.
34:55
Judge Dyk
Well, is your theory that his testimony on little infringement wasn't related necessarily to power nail drivers and concern more generally things that he wasn't expert in?
35:13
Appellant Attorney (Amol A. Parikh)
I just think, again, under the unique facts of this case, it was more of a straightforward, simpler approach in just comparing.
35:22
I mean, I think it's not just a matter of the claim limitations to the accused products, the accused literature, and the prior literature in this case that was able to make that comparison as a fact finder.
35:36
Judge Moore
I mean, here's the problem in this case.
35:39
It's not your problem.
35:40
The problem in this case is that one of the parties messed up here by not objecting and or rejecting the level of skilled art that was proffered by Kaya.
35:54
And once that had become binding in the case, you live and die by your own litigation choices.
36:02
You know, that, I mean, we ought not to mess up the entire law because one party screwed up and accepted a fact finding on the level of skill in the art that probably isn't exactly the right fact finding here.
36:18
I mean, I'll tell you what, I don't let Dr. Pratt testify.
36:23
But I wouldn't have ever agreed to that level of skill.
36:25
And once they agreed to it, he's out.
36:29
And that's the way I see it.
36:30
It's hard for me to see it any other way than that.
36:33
And I really think that what you're asking me to do to uphold would mess up the law really badly.
36:38
And it would create the mischief and havoc that I tried very hard in Sundance to eliminate.
36:45
Appellant Attorney (Amol A. Parikh)
I understand the court's perspective on this.
36:47
Again, it's covered pretty well in our briefs that there was a distinction here, not abuse of discretion, and excluding it for doctrine of equivalence.
36:56
But allowing it in for little infringement, given under the particular lens of this case and the issues here.
37:03
Judge Moore
Well, do you want to reach out?
37:04
Are there any other issues you wanted to cover today?
37:06
Appellant Attorney (Amol A. Parikh)
Oh, yeah, sure.
37:07
Turning to the issue of driven position, and Christchurch Council makes the argument that somehow the second embodiment broadens the scope of the term driven position.
37:20
However, again, language mirrors each other.
37:24
If you look at appendix pages.
37:26
Pages 355, column 12, lines 56 through 65 states, in this configuration, displacement volume 76, and the main storage chamber 74 are at their largest combined volumes, while the cylinder venting chamber 94 is at its minimum volume.
37:42
Turning to the corresponding written description for figure 20, the second embodiment, it's pretty much mirrored.
37:50
Appendix page 362, column 26, lines 43 through 53.
37:54
And in this configuration.
37:56
Pages 355, column 12, lines 56 through 65 states, in this configuration, displacement volume 76, and the main storage chamber 74 are at their largest combined volumes, while the cylinder venting chamber 492 is at its minimum volume.
38:05
Again, the exact same configuration for both figures, figure 3 and figure 20, the first embodiment, second embodiment, indicating that driven position is consistently defined as the bottom most traveled position or the bottom position.
38:20
It has the same exact configuration for the tool.
38:23
Judge Moore
Mr. Carradine, would you mind if I asked you to address?
38:26
The commission's position on the lifter member, and in particular, what do you think should, suppose that this panel found it was a 112.6 term, okay?
38:39
We disagree with the commission's finding and say it is a 112.6 term.
38:43
What should happen then in this case?
38:47
I think Judge Dyke was asking some questions about whether it would actually have any impact on the outcome or not.
38:53
Does it create fact issues?
38:56
Is there anything that the commission would need to look at in the first instance?
38:59
Appellant Attorney (Amol A. Parikh)
Yes, well, of course, arguably that that should not be the case.
39:02
If that was the case, it should be remanded.
39:05
Judge Dyk
I don't understand what the difference is here.
39:08
If it's literal infringement, the theory is this part of the specification describes what a lifter member is, and if it's 112.6, the corresponding structure is the same thing.
39:20
What difference does that make?
39:21
Appellant Attorney (Amol A. Parikh)
I think if you go to appendix pages 178 to 179, where the ALJ goes,
39:26
the testimony from each expert explains that the lifting pins for the accused products are on an interface, and basically the plane of the driver teeth is the same plane.
39:42
Judge Dyk
Okay, but that's not really answering my question.
39:44
My question is, if it's literal infringement, this part of the specification describes what the lifter member is.
39:51
If it's 112.6, the same part of the specification describes what the car is.
39:56
The corresponding structure is.
39:57
What difference does it make whether it's 112.6 or literal infringement?
40:00
It's the same structure in either event.
40:05
Appellant Attorney (Amol A. Parikh)
Right.
40:07
There was no finding there on infringement or doctrine.
40:13
Judge Dyk
Well, it doesn't require a finding.
40:14
I mean, it's the same portion of the specification.
40:17
One that says this defines what it is for purposes of literal infringement, and the other one is this is the corresponding structure for 112.6.
40:26
It's the same thing.
40:28
One that says this defines what it is for purposes of literal infringement, and the other one is this is the corresponding structure for 112.6.
40:30
Appellant Attorney (Amol A. Parikh)
Again, the accused product and the patent are a little different structurally.
40:35
It would have to be a remand for analysis just to determine that there was the equivalence found in that instance.
40:44
Judge Moore
So to make sure I understand your argument, you're saying it's a factual question while the claim construction may be question of law.
40:54
And when you look, if this is 112.6, at what the corresponding structure is, that's a question of law.
41:00
But under literal infringement, whether something's equivalent to that structure is a question of fact, and the commission has not yet addressed that.
41:08
Appellant Attorney (Amol A. Parikh)
Correct.
41:08
That was never addressed since it wasn't.
41:09
Judge Moore
And so the commission needs to address that.
41:12
Appellant Attorney (Amol A. Parikh)
Correct.
41:12
Okay.
41:13
Again, I would argue vehemently that that should not be the case here.
41:17
The patentee first recited structural structure in the claim itself.
41:24
It recited structural components that the lector member is interconnected to.
41:29
Approximately.
41:30
A fine mover and a driver member.
41:31
Also, the patentee act is his own lexicographer and specification, defining over and over that lector member is a rotary, linear lifter, has the rotating structural component, and having a second structural component of a face with lifter pins.
41:50
This is throughout the specification.
41:54
Judge Dyk
Do you have another question for the governor?
41:56
Okay.
41:57
Appellant Attorney (Amol A. Parikh)
Can you give me a quick point on initiating the driving cycle?
42:00
Judge Moore
Sure.
42:01
I'll give you a minute to address it.
42:02
You're way over your time, but go for it.
42:03
If you want to address it, go for it.
42:06
Appellant Attorney (Amol A. Parikh)
I would stress, again, consistent throughout specifications, particularly for the second embodiment, it's consistently defined that the safety contact element is part of the tool.
42:16
It's an extension of the bottom of the tool.
42:20
The exit portion of the—
42:21
Judge Dyk
Why is it the exit end?
42:23
It may be certainly part of the tool, but why is it the exit end?
42:27
That's how it's expressly defined.
42:29
The exit end would be the driving mechanism.
42:31
Appellant Attorney (Amol A. Parikh)
Right.
42:31
That's not how it's described in the specification.
42:33
I think if you go through both embodiments, particularly if you go through the appendix page, it's going to be 564, columns 11, line 60 through column 12, line 18.
42:49
Judge Dyk
Tell me what part of the specification tells me the exit end isn't the driving mechanism, that it's the safety mechanism.
42:58
Appellant Attorney (Amol A. Parikh)
It's all throughout the specification.
43:01
Particularly—
43:01
One of the—
43:02
Yeah.
43:03
If you go to the second embodiment, the appendix page, it's going to be 571, column 26, lines 10 through 39.
43:12
In the middle of that section there, it says, two independent actions must occur in a specific order.
43:30
These two actions are pressing the nose of the safety contact element against the solid surface and depressing the trigger actuator.
43:37
The trigger actuator will cause the trigger switch 437 to change state, which is one condition that will start—
43:43
The safety contact element 418 has an upper arm 434 that would be moved as the nose 419 is pushed into the tool 401.
43:57
This upper arm will actuate another sensor, which the illustrator invited as a small limit switch.
44:01
Judge Dyk
It doesn't even use the term exit end, right?
44:04
Appellant Attorney (Amol A. Parikh)
Right, but it defines it earlier that this extension, the safety contact element, is part of the exit portion.
44:13
Of the faster driving mechanism.
44:16
That's defined at—
44:18
Shown in figure 16, also defined at 568, column 20, lines 7 through 17.
44:29
This whole bottom portion includes the exit and the faster driving mechanism, the extension of the safety contact element, which has a nose.
44:37
It's depressing that nose against the workpiece that initiates the driving cycle.
44:43
Judge Moore
I guess one of the things—
44:45
When we talked about—
44:45
Exit end of the mechanism, I don't see how that isn't the exit end of the tool.
44:53
Appellant Attorney (Amol A. Parikh)
Right, but it defines the safety contact element as part of the tool.
44:57
Judge Moore
Right, so the exit end of the mechanism has to be the exit end of the tool, right?
45:05
Appellant Attorney (Amol A. Parikh)
Again, in that section in those figures, 568, column 20, lines 7 through 17, it's defining a whole bottom portion of that tool.
45:18
Right, so—
45:21
Basically defines that the area of the second embodiment, tool 401, which a fastener is released, is indicated approximately by the reference number 417, which is the bottom of the faster exit portion.
45:36
Judge Moore
So, counsel, here's kind of part of my problem with this particular construction, is that the parties agreed that the word mechanism refers to fastener driver mechanism.
45:48
I don't think that's right.
45:50
I don't think it can possibly be right in light of claim 9, the dependent claim.
45:54
Which refers, for antecedent basis, back.
45:57
It says, said exit end of the tool.
46:00
It can only be referring to the end of the mechanism itself, i.e. the whole tool, not just the end of the fastener driver means.
46:09
So, what does this court do in a situation where the parties stipulate the word mechanism refers to one thing, but the claim language, to me, means it's referring to something else?
46:23
Appellant Attorney (Amol A. Parikh)
Right.
46:24
I don't think there's really a disconnect here, because, again, the spec refers to an exit portion, which encompasses this exit end, all these elements are part of the bottom of the tool, the safety contact element, the exit end of the faster driving mechanism.
46:40
That's all part of the tool.
46:42
It's all this bottom portion referred to in these figures, figures 1 and figure 16, which is consistent in supporting the claim language, so that you cannot divorce the safety contact element.
46:54
From the rest of the tool.
46:55
It's all part of it, and that's consistent with the claim language.
46:59
Judge Moore
Okay.
47:00
Anything further?
47:01
Okay.
47:01
Thank you, counsel.
47:04
We have some rebuttal time.
47:08
Mr. Shulman, you have two minutes left, but we'll restore your whole five minutes.
47:13
Appellant Attorney (Amol A. Parikh)
Thank you, Your Honor.
47:16
Judge Moore, I'm going to try to make you comfortable that you're not going to ruin the law.
47:21
Judge Moore
Oh, I know I'm not going to ruin the law.
47:26
Appellant Attorney (Amol A. Parikh)
I'm going to try to make you comfortable that if you rule in our favor, you're not going to ruin the law.
47:32
Your Honor, the expert testimony is reviewed for abuse of discretion, and the question is whether or not a particular expert can testify from the perspective of one having ordinary skill in the art.
47:43
And even in Sundance, what the court said is it is abuse of discretion to permit a witness to testify as an expert on the issues of infringement or invalidity,
47:53
unless that witness.
47:54
Is qualified as an expert in the pertinent art.
47:57
Not a person, not unless that expert is a person having ordinary skill in the art, but whether they are qualified as an expert, which a district court or the commission reviews and has discretion to determine.
48:10
After review, seeing everything about the expert, there's a reason why the district courts and commissions have discretion.
48:17
The district court could have looked at Dr. Pratt and indeed did for purposes of literal infringement and said, look.
48:24
He's got a lot of experience in pneumatic fastener drivers, not necessarily power nailers, but pneumatic fastener drivers.
48:31
And I believe that as the chief ALJ said that he could testify from the perspective of one of ordinary skill in the art to affirm that would not wreck the law in any way, shape or form what you've only what you would be doing is reaffirming that district courts and the commission have discretion to allow experts to testify.
48:53
If the.
48:54
District court believes that they could testify from the perspective of one having ordinary skill in the art and judge more.
49:00
As you said, I believe not to put words in your mouth, but I believe you said you would have let him testify, which reflects the fact that I also said I never would have agreed to the level of skill in the art.
49:09
Judge Moore
You screwed up, you accepted a level of skill in the art that excluded your own expert.
49:14
You must have been shocked when that happened and you came to that realization.
49:21
Appellant Attorney (Amol A. Parikh)
Our understanding, your honor, was that the literal.
49:24
Level of ordinary skill in the art is not the litmus test for expert testimony.
49:28
Judge Moore
That is that cannot possibly be your understanding.
49:31
That's absurd, your honor, that I you knew it was the level for aqua techs.
49:35
Is there any there's no room in aqua techs.
49:38
You got to be at least a level, an ordinarily skilled artisan, at least to offer that particularized testimony.
49:44
You knew that and you had to know it because aqua techs is crystal clear.
49:48
What you've asked this court to do is overrule binding precedent, which we can't do.
49:51
And so then now you're sort of.
49:54
Out of luck.
49:55
It ruled out four patents because you didn't have expert testimony on them.
49:59
Appellant Attorney (Amol A. Parikh)
Your honor, respectfully, I don't believe aqua techs holds that the person has to be literally or even at a minimum a person of ordinary skill in the art.
50:09
What aqua techs says and what SCB says and what other cases have said is that the person must be qualified to testify from the perspective of a person having ordinary skill in the art.
50:20
And given the abuse of discretion standard.
50:23
When somebody has.
50:24
The educational requirement and an experience in clearly in adjacent area pneumatic fastener drivers for rivets versus power nailers.
50:33
It is not an abuse of discretion to allow that person to testify and it is abuse of discretion to when that decision is based on a clearly erroneous view of the law and the chief ALJ viewed aqua techs as the word of requiring that the expert literally be a person of ordinary skill in the art was not correct.
50:53
This court.
50:54
Has never said even if you take take a face value that it had to be a minimum which I don't believe this court has ever said it's never said the expert must literally be a person of an ordinary skill in the art that ruling was based on a clear error of law that is abuse of discretion and there is no wrecking of the law is completely consistent with aqua techs and with Sundance to say somebody who had experience in fastener pneumatic fastener drivers could testify from that.
51:20
Judge Moore
Do you agree it can possibly be okay for.
51:24
Itc to split the baby like they did here to exclude him from offering do we testimony while allowing him to testify on literal infringement or do you believe in assessing an expert's qualifications it probably ought to be all or nothing I believe it should have been all or nothing I believe it should have been all or nothing and him being in because he was qualified to testify I want to address a judge like you asked a question about the about the.
51:53
Appellant Attorney (Amol A. Parikh)
Lifter.
51:54
Member relied on by prep with in appendix one seventy nine one seventy eight seventy nine the chief the chief of the commission says the crux of the dispute is whether the lifting pins of the pinwheel are on its face surface so that was the
52:11
Lifter member it wasn't a complicated question is my friend suggest it was a very simple question are the lifting pins on the face surface and Dr.
52:22
Pratt's testimony whether he.
52:24
Was literally one of ordinary skill in the art wasn't that the issue wasn't so complicated that he couldn't testify as to whether the lifting pins were on the face and in fact the a l j relied on drawings from Dr.
52:36
Valley's presentation and again this is all in appendix one seventy eight one seventy nine what they relied on and they were fact relied he relied on a manufacturing schematic from the cookie tool he cited our at vote two one four C.
52:49
So it wasn't just Dr.
52:50
Judge Moore
Can I ask you to address just briefly because we're beyond your time but.
52:54
If the safety contact and the fastener driver mechanism are potentially separate components what happens to this case.
53:03
Appellant Attorney (Amol A. Parikh)
The if they are separate components well then the court affirms on the cross appeal because the exit end of the tool is a safety contact element and if you look at again appendix five twenty six to five twenty seven again judge thank you asked about what can it be triggered by the.
53:24
Judge Moore
You don't mean reverse.
53:26
Appellant Attorney (Amol A. Parikh)
You said the court affirms I'm pretty sure you mean the court reverses right and know affirms the firms on on the on the on the cross appeal because the data refers to cookies appeal if the if the court finds the safety that initiating the driving.
53:41
Member is is correct then we prevail on the seven one eight and I just wanted to point out to you judge dyke figures thirteen a and thirteen B.
53:54
Appendix five twenty six and five twenty seven.
53:56
He's.
53:56
shows that that the trigger is triggered by the actuation of the safety contact element i know
54:01
it's a it's a flow chart but um you'll see in the diamond shapes the safety contact element
54:07
is what triggers driving and we identify in changes 27 i think that maybe you misunderstood
54:12
Judge Moore
my question okay i'm sorry uh if if i don't think the district court or the itc got the safety
54:19
contact element construction right what happens to this case struggling with that your honor
54:28
Appellant Attorney (Amol A. Parikh)
because the question is what is the exit end of the tool and and the safety contact element is
54:34
at the exit end of the tool so the question that the commission asked is what is the exit end of
54:40
the tool the commission found that the exit end of the tool is that safety contact it's number
54:45
and so in the drawing that in fact that koki has in their brief it's 419 the part that actually
54:50
Judge Dyk
touches the tool if but if i think what judge moore is asking is what are we what relief do we
54:57
grant if we agree with the itc erd in this respect i'm sorry did they get in here at the second part
55:06
of your question if the itc erd with respect to the uh exit end construction what do we do does
55:15
Appellant Attorney (Amol A. Parikh)
that mean there is non-infringement i believe there would have to be a remand then because
55:19
there was then then this court would have
55:21
to issue a claim construction that has never been tried um you'd be asking because again the safety
55:27
contact element is not the claim limitation the claim limitation is exit end of the tool
55:32
i don't know what this court would construe exit end to mean um and if it's a brand new construction
55:39
Judge Moore
i suppose we'd have to your ideas is if if we disagree with the commission's construction the
55:44
Appellant Attorney (Amol A. Parikh)
appropriate course of action would be to vacate depending on what how you disagree with it yes
55:50
Judge Moore
okay all right thank you
55:53
mr schulman ms uh mr parikh i'll restore your three minutes of rebuttal time
56:08
Appellee Attorney (Clint A. Gerdine)
thank you your honor um so to answer your last question um if the if this court finds that
56:16
the exit end of the mechanism is what's required to contact the work surface in
56:21
order to initiate the driving cycle this court should reverse um so uh my colleague said that
56:30
the claim that the work surface is required to initiate the driving cycle this court should reverse um so uh my colleague said that the claim
56:31
that the work surface uses the phrase exit end of the tool in order to initiate the driving cycle this court should reverse
56:34
that torment that very very strongly that's not correct
56:35
he is by I judge where you recognize that claim 100 is not the correct term
56:39
Judge Moore
nine does right or claim claim said claim nine says claim nine does right or claim one
56:43
Appellee Attorney (Clint A. Gerdine)
so protest suerde change fabricate η
56:45
that the organization himself or this is the organization as stressed and it has been
56:46
from an exit end of the mechanism and the response was successful
56:50
the parties agreed that the mechanism of an desenvolvment uh behavior the mechanism
56:53
in that limitation refers to the fastener the reason no
56:56
i use the�the asserted claim not the tool is not an assertive claim the claim nine is not an assertiveì
57:02
9 is not an asserted claim. But claim 9 actually, and we address this in our brief, if the patinee
57:09
wanted to use the phrase exit end of the tool, they knew how to use the phrase exit end of
57:15
the tool. But that's not what they used in claim 1. In claim 1, they specifically chose
57:19
to use exit end of the mechanism, which the parties agreed is exit end of the fastener
57:24
driving mechanism. And the claim specifically identifies that the fastener driving mechanism
57:30
is just the hollow cylinder and the main storage chamber. And then it separately recites the
57:35
safety contact element as a separate limitation, which is also consistent with the specification.
57:41
And I believe the ITC pointed you to a part of the specification where it talks about
57:47
the exit end of the tool. But there's another part of the specification, Appendix 568, which
57:55
differentiates between the bottom of the fastener exit portion of the tool and the
58:00
fastener driving mechanism, and the bottom of the safety contact element. What claim
58:06
1 is directed to is the... there's a logic flow diagram at appendix 575, column, which
58:19
is column 33, lines 42 to 47. And there it says, the step determines whether or not the
58:24
safety contact element has been pressed against a solid object to an extent. And in this,
58:30
extent that actuates a sensor, which means that the tool is now pressed against the surface.
58:36
And what it's referring to there, the tool being pressed against the surface, is the
58:41
bottom of the fastener driving mechanism, not the bottom of the safety contact element.
58:46
So we don't dispute that you have to actuate the safety contact element.
58:51
The question is, how far does the safety contact element have to be actuated?
58:57
And in Claim 1, it refers to this embodiment where the tool itself, the fastener driving
59:03
mechanism, has to be in contact with the work surface in order to actuate the driving mechanism.
59:11
And with that, I see my time is up, so unless the panel has any additional questions.
59:17
Judge Moore
Okay, no.
59:18
We thank all counsel.
59:19
This case is taken under submission.