INFINITY COMPUTER PRODUCTS v. OKI DATA AMERICAS, INC.
Oral Argument — 12/11/2020 · Case 20-1189 · 42:21
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Judge Prost
20-1189, Infinity Computer Products versus Okidata Americas.
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Mr. DeNovo, we're ready when you are.
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Appellant Attorney
Thank you, Your Honor, and may it please the court.
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We are here today to first address a technical misinterpretation of a passage from the prosecution
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history that conflates a passive link and the data that flows through that passive link.
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The second and related legal question before the court is whether a single alleged ambiguity
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from one paragraph in a 22-and-a-half-year prosecution history invalidates all subsequent
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issued and asserted claims, particularly where, as here, there's over 15 years of subsequent
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prosecution history, including an explicit definition of the very term at issue, passive
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link, offered by the applicant and adopted by the prosecutor.
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Judge Taranto
Mr. DeNovo, this is Judge Jurato.
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Can I ask you this?
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It seems to me, as I think Judge Stark said in his opinion,
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that in your colloquy at oral argument, you agreed that a skilled artisan, in order for
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this language to be definite, would need to know where the passive link ended and the
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computer began.
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If that's right, then there would seem to be a kind of analogy to Teva here, which is
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the claim language by itself.
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And I think I would say...
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I think that you are absolutely right in your 2004 express definition.
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Leave unclear the answer to that question, where one ends and the other begins.
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And you therefore need something to resolve the uncertainty.
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And the role of the prosecution history here is to search for something that resolves that
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uncertainty.
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And what you find when you look at it is actually something maybe not as stark as the letter.
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as in Teva, but you find something resembling an inconsistency, in any event, not a resolution.
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Why is that not what is going on here? Yes, thank you, Judge Taranto. So,
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Appellant Attorney
first of all, I think we need to appreciate that there is a distinction, and this is vital
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to the case, between the data flow and the link, and that these are different constructs. So a link,
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all of the links disclosed in the patent specification are cables, and these cables run
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from a facsimile machine to a computer, and all of the prosecution history, including the very
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office action response to which they allude on September 26, 2002, says that the link
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runs from the facsimile machine to the computer. In fact, if you look at the September
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statement,
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26th, 2002 example, it's even made more explicit because at the time they were arguing against a
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reference called Perkins. The principal embodiment of Perkins was that there was a box that sits in
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line between the facsimile machine and the computer, and the secondary one was a card.
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And the patent applicant was extremely explicit, saying that the computer begins at the interface.
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So I would respectfully posit, Your Honor, that even the very office action that they're
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talking about is completely explicit. It says that the passive link terminates at the computer
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interface. And in referencing this secondary embodiment of Perkins, what the applicant said
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is even though circuitry of device three, and this is again in reference to the second embodiment
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of Perkins, is placed in a card within a box containing the computer,
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so regardless of where the plastic box of the computer is, it is a peripheral device to the
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computer, i.e. not part of the computer, which processes data before it is transmitted to the
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I.O. bus. So going back to what the district court actually said is the office action response
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repeatedly mentions the I.O. bus as the endpoint of the link. If you look at what the citations by
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the district court to that statement are, is there's one citation,
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and you will never see anywhere in the prosecution history, including to that citation,
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any reference that the passive link ever went to the I.O. bus. What was actually said is the
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following, Your Honor. The non-intercepted data, I'm sorry, I'm hearing a slight echo,
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the non-intercepted data enters through the serial type connector port of the computer.
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So the very passage that the district court relies on says that the connector port of the computer,
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so that's what it is.
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Judge Taranto
This is the passage at Joint Appendix 2201?
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Appellant Attorney
Yes, Your Honor. So that very passage that they claim is an ambiguity is not,
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because the intercepted data enters the computer at the connector port,
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according to that passage. And so we've used the example of traffic, vehicular traffic across a
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tunnel or bridge. Yes, the bridge has a beginning and an end, and these are well-defined, but the
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vehicular traffic,
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passes through it. Another example that occurred to me is if we had a claim directed to a kinkless
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hose and said that the non-intercepted water flow allows you to water your vegetable garden,
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no one would understand that statement to mean that you have to shove your hose into the
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vegetable's roots. There's a distinction between that which traverses the passive link and the
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the
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the
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the link itself. And so all of the prosecution history, and interestingly, Okidata agrees with
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the exception of this sole example, but to my understanding that all of the prosecution history
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indicates that the passive link starts with the facsimile machine and ends at the computer
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interface or port. Computer interface is the precise language of Claim 27 that was under
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discussion in this very office action. So there is no ambiguity where the passive link begins or ends,
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and the only confusion, unfortunately, was the confusion between data transfer, data flow and the cable or passive link.
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In the words of the patent specification the data transmitted can be received as a picture.
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So this just sort of reinforces that that the what we're talking about with the data flow, and again, of course, on the beginning
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of that is a facsimile machine,
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so you have a picture,
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that has
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nothing to do with the physical construct that is the passive link. Again, the passive link and
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the embodiments are simple cables, and there is no repeated reference. There's not a single
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reference that the passive link goes to the IO bus. And just to differ, Your Honor mentioned
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TEVA. In that case, the claims did not identify any or provide any assistance in terms of
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what the meaning of the molecular weight might be. There were multiple molecular weights.
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We put this in our reply brief, but for example, the 574 patent claim one has two different
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elements. The first is establishing the communication path, namely the passive link,
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and the second is transferring data from the fax.
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So these are different things. There is no...
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Judge Taranto
Can I ask a perhaps quite minor question? Chief Judge Stark noted that in the reexamination,
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the PTAB had no occasion to attend to this question of what to make of the September
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2002 distinction of Perkins. The reexaminer did, because RICO raised that to the reexaminer,
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and the reexaminer...
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Evidently, did not find that to be a problem. If the reexaminer had thought that there was
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an inconsistency between what was then being argued and what had been said in distinguishing
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Perkins way back in 2002, what could the reexaminer have done in a reexam proceeding in which
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indefiniteness is not one of the permissible grounds?
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Appellant Attorney
Well, that's a good question.
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Your Honor, I do know that the reexaminer may say that there was a lack of written description
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or made some other finding that it was unclear. There was insufficient information within
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the intrinsic record. But first of all, the preliminary or the main prosecution, this
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issue was never raised. There was no confusion expressed by any prosecutor in this 22 and
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a half years.
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And then there was the...
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Explicit definition adopted during reexamination and on appeal. And I would point out...
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Judge Taranto
How do you think that that explicit definition resolves this question of where one thing ends
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and the other begins?
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Appellant Attorney
Well, that explicit definition coupled with the PTABs walking through figures 2B, 2C, 2D, and 2E,
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which the 2E, incidentally, the PTAB concluded did not show.
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It did not show a passive link between the facsimile machine and the computer.
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Each of those...
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And if you look at those diagrams, what you will see is an RJ11 cable or an RS222 cable
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that is between a facsimile machine box and a computer box.
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And that is the extent of the passive link.
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And the PTAB walked through with that passive link definition.
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And the PTAB went in hand and said, each of these three is a passive link.
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So taking head on what a passive link is and where it begins and ends, and this one is
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not a passive link.
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And in answer to your question, I think in terms of what the role of the definition is
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in the convol versus compact case, post-grant prosecution history can be highly relevant
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in terms of...
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Judge Taranto
Oh, I think my question was...
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I assume it was...
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I'm assuming it can be, but it's not clear to me that the language in the definition
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advances the ball at all on figuring out where one ends and the other begins.
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Appellant Attorney
Okay, Your Honor, I appreciate the question.
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So the first is that the patent speaks to the PC being a conventional PC.
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And so in each instance, the conventional PC is depicted in figures 2B through 2C as
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a box.
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It's called a PC-type computer.
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And those...
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The outside...
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Or the external-facing portion of that computer would be an interface or port.
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And unlike in TEVA, there's also disclosure, for example, at column 8, line 11, that the
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PC begins at an RS-232 connector.
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So here we have all of the intrinsic record with the claimed exception of this prosecution
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history passage, which in fact is not...
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Is actually corroborative.
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And I would conclude, Judge Stronto, by simply mentioning that the only person of ordinary
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skill of record, Dr. Leavitt, testified consistently with Infinity's position.
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There was also another person of ordinary skill who testified in a related case on behalf
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of a defendant consistently with Infinity's position.
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And there is no evidence...
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There is no evidence from a person of ordinary skill in the record that would corroborate
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this technical misunderstanding adopted by Okie Data and subsequently by the district court.
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And unless there are any questions, I'll...
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Judge Clevenger
Mr. Denoble, Mr. Denoble, Judge Clevenger, you were talking about Patton speaking to
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a conventional computer.
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The conventional computer would also include such a thing as Perkins, the card that was
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inside the computer?
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Appellant Attorney
Well...
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So, in the context of this particular...
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Yes, that's a yes-for-no type question.
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Well, the Perkins card would not be present in a conventional computer.
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Absolutely not.
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Why not?
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Well, all of...
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What Perkins says...
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Judge Clevenger
The Perkins...
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Can't things be put in a conventional computer and not make the computer non-conventional?
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Appellant Attorney
So, there's two embodiments of Perkins.
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The one is...
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What I would call...
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Well, he calls it a device three in both instances, that the first is sitting in line
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between...
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Judge Clevenger
That's true.
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And that's not a problem for you.
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The problem for you is your Achilles heel is the card that's inside the computer.
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Right.
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And that was a directly addressed...
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That's not necessary for you to argue that the computer doesn't begin until the end of
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the card, if you will.
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Appellant Attorney
Right.
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And that was what was said in the very same prosecution history passage.
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What the applicant said very clearly was, I don't care where the plastic case of the
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computer is, the computer begins at the computer interface.
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So, the claim itself said computer interface.
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And what the patentee said during the prosecution history, this very same passage, is that a
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card that is plugged into the computer interface is not part of the computer.
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Who said that?
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The patentee said that.
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At, and I can read you the precise language, hence, even though the circuitry of device
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three is placed in a card within the box containing the computer, so clearly the computer is a
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separate thing in the box, it should be regarded as a peripheral device to the computer, which
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processes the data before it is transmitted to the IO bus of the computer.
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So, the very same passage on which they rely, and the computer interface language is a separate
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thing, which addresses, Your Honor, this issue that you're raising, and throughout the
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entire prosecution history.
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Judge Taranto
I'm sorry, this is Judge Taranto, I'm sorry, I know your clock is run, but didn't what
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you just said highlight the problem rather than resolve it?
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Because that is what figures 2B through D do not seem to show at all.
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Appellant Attorney
Well, exactly.
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We do not show in figures 2B or through D a device, so I think the distinction maybe
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that's missing here is that in the 811 patent, what they, in the figures 2B, 2C, and 2D,
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what is discussed is an internal card.
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So that is not something that is plugged in like Perkins.
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Every embodiment of Perkins has analog coming in and digital.
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A digital coming out, and a processor, and a fax modem that processes the data before
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it is transmitted to the computer.
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So figures 2B, 2C, and 2D do not have that, because they explicitly, there is an internal
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device in those figures.
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And in addressing...
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I think the...
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The implication of your question is, doesn't this play into the IOBUS argument, again,
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we have to differentiate the data flow and the permissive ability.
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And the real benefit, I think it bears out saying, and I appreciate the court's indulgence
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on time.
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Please cut me off whenever you've had enough of my discussion.
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But the real benefit here is that the passive link doesn't require all this processing.
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And what Perkins showed, and was...
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First of all, it required analog transmission, and this was specifically found by the PTAB,
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that Perkins was not a validity problem relative to Claim 27, even as it existed at that time.
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And it was amended four times subsequently, that all of the Perkins had analog coming
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in and digital coming out, and that was not what was claimed.
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The benefit of the claim was that there was digital from the facsimile machine to the
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interface of the computer.
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And that was clearly...
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Judge Prost
I think I'm going to cut you off here, because we're getting a little beyond what the line
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of questioning was.
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But we'll reserve some time for rebuttal, and let's hear from the other side.
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Appellant Attorney
Thank you so much, Chief Judge.
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Judge Prost
Thank you.
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Appellee Attorney
Yes.
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May it please the court, this is Mark Labgold, on behalf of the defendant, Appalee Okidata
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Americas.
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The simple issue, in its simplest terms, I should say, is whether the position's taken
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by the applicant during prosecution with regard to the computer's endpoint of the applicant
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coined term passive link was inconsistent with the positions the patent owner took with
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respect to the same computer endpoint during the reexamination of the 811 patent claims.
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The district court found that during prosecution, as the court's already noted, there...
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Judge Prost
Mr. Labgold, can a patentee change its mind?
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I mean, why doesn't the latter statement control its mind?
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Well, this is over a period of years, and why is he precluded from changing his mind?
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Appellee Attorney
Well, certainly, a patentee could change its mind, and the patentee could have taken different
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arguments at different points in time, but, Your Honor, the issue was, when the patentee
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in this point changed its mind, it took a completely inconsistent position that changed
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the endpoint of the passive link.
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There's nothing wrong with changing your mind.
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Judge Prost
Well, in your view, that would create a problem of validity with respect to Perkins at the
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end of the day, right?
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Appellee Attorney
It does create...
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It's not a question of whether it creates the position of validity at the point in time.
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There's a definitional point with... to overcome the prior art, and so that's with Perkins
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during prosecution.
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During reexamination, when confronted with a totally different issue...
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...about whether or not they could antedate Kenmochi, that endpoint changes.
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So the question for the public is, looking at the intrinsic record as a whole, how do
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I know where it ends?
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Because there's no disclaiming, there's no explaining, there's no harmonizing, because
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there simply is no ability to harmonize it.
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One of ordinary skill in the art...
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Judge Prost
Well, just...
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Please.
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Well, if you just take a...
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This is Judge Post again.
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If you just take a step back...
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Shouldn't we defer to the PTO on that?
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And shouldn't we say it's the PTO's job on round two to reconcile the two and give any
20:36
deference to them if it's clear that, for whatever reason, I understand this was an
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ex parte proceeding, but they didn't see a disparity or discrepancy between the two positions?
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Appellee Attorney
Well, as I believe it was, Honorable Judge Toronto, that raised that question.
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It raised the point, and asked the question of my opposing counsel, is indefiniteness is
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not something which the court could address, I mean, which the PTAB could address at that
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point in a reexamination.
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I'm sorry, but it could have re-raised Perkins, couldn't it?
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They could have re-raised Perkins.
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I don't think that would have been a problem.
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You think Perkins would not have been a problem, or you don't think that would have been a
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Judge Taranto
301 problem?
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Appellee Attorney
No doubt.
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I think that...
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I'm sitting here trying to figure out.
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The PTAB could have re-raised Perkins.
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They could have remanded it, and they could have instructed them to take it in light
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of Perkins.
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I do believe they could do that, and that they did not do.
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But they did not address the indefiniteness issue, because...
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Judge Prost
Let me ask you another more general question.
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You know, we deal with prosecution histories in a lot of cases, and unfortunately, sometimes
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we are forced to conclude that they're full of inconsistencies, and so we can't rely heavily
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on them.
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So the question for us is, when is indefiniteness created?
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Is it your view, just as kind of a legal matter, that to create indefiniteness, you need a
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clear disclaimer or lexicography, or is the standard softer than that?
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Appellee Attorney
We don't need a disclaimer.
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In this case, I do believe there is a disclaimer, which occurred.
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In this case, we have a lexicography issue, where the passive link wasn't defined.
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The passive link wasn't defined.
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The passive link doesn't fall in the specification.
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Passive link was introduced after several arguments were unsuccessful.
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Notably, when you look at figure 2E of the 811 patent, it's undisputed that that has
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an intervening device, and that's what Perkins showed.
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Now if you take that intervening device and you put it on a card internally, that's what
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Perkins showed as its internal, which the passive link language...
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...was introduced to overcome.
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And there is an admission in the record that that overcame the rejection.
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And at column 6, at 6-11, referring to in the 811 patent, we have a discussion that
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figure 2B is on its own printed wiring cord.
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So again, it's a card that's been inserted.
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So figure 2B is the internal configuration of Perkins.
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Where 2E is the internal configuration of Perkins.
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Here's the external configuration of Perkins.
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And I would go so far as to say that there was no inconsistency, and there was no ambiguity
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at the close of the prosecution.
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The record is very clear that it ends at that I.O.
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bust, and even if you put the card on the inside, it's going to be considered this peripheral
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device.
23:56
And when, importantly, I think the court should look at the fact that the...
24:01
In the amendments, when the patentee was distinguishing Perkins, he doesn't refer to figures 2A, 2B, 2C, 2D, 2E.
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It's always with regard to 2F, 2G, and 2H.
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Now, what happens is it's in the re-exam when they're forced to antedate Kenmochi because they can't get around that prior art.
24:27
That's where the indefiniteness occurs.
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Judge Taranto
This is just Toronto, and the joint appendix is unfortunately rather long.
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I thought that there was, in fact, some reliance before re-examination on some of the figures, including in discussing Perkins before F.
24:52
Is that wrong?
24:54
Appellee Attorney
When they distinguish, for example, in the office action dated July 20, 1999,
25:02
this is Appendix 1305, there's a discussion regarding Claim 27.
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The amended Claim 27, the following denotes some significant differences between Perkins patent and applicant patent application.
25:17
It then goes through and it explains some details.
25:21
In contrast, the applicant can transfer digital signals between the facsimile transceiver and the computer in accordance with applicant specification,
25:28
numerous claims, and is delineated in figures 2A.
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2F, 2G, and 2H.
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Judge Taranto
I think maybe what I'm thinking about is the November 2004 invocation of 2B through D for priority for the passive link.
25:42
Is that an antedate schlenk or something?
25:49
Have I got that confused?
25:51
I'm sorry.
25:52
The dates sort of float around in my head.
25:56
This would be at 2245, according to my notes.
26:06
Appellee Attorney
Give me a moment to look at 2245.
26:09
Okay.
26:10
I think I know where you're referring.
26:11
This is in the table.
26:15
Oh, no.
26:17
That's not.
26:18
Unknown
Yeah.
26:20
Judge Taranto
This is the 2245 part of some document.
26:25
Received November 24, 2004, amendments, explanations, et cetera.
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It's your Exhibit 27.
26:34
And it says, yeah, right at the bottom of 2245,
26:41
inherent features of the 5G.
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258, shown in figures 2B, 2C, and 2D.
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This is all I seemingly to distinguish the schlenk and the whole wig.
26:58
That's not Perkins.
27:00
But is it?
27:02
Appellee Attorney
It's a different issue that's being raised here.
27:05
Okay.
27:05
And it doesn't address the same point.
27:09
They do rely on 2A and 2B, showing the bidirectional.
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But this is on the relationship of the isolation.
27:17
Of the, from the public network.
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And so.
27:22
Okay.
27:22
Judge Taranto
Can I just switch topics and ask you what, I guess I think of this as a practical question.
27:31
And this appears to have been conceded in the colloquy with Chief Judge Stark.
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But put aside the concession.
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If you're a company that wants to do something,
27:47
in the neighborhood of these claims, the claims that are at issue,
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and you want to do something that meets all of the other claim limitations in the claim,
27:59
so the digital and everything else,
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what as a practical matter would you be uncertain about
28:09
if you couldn't tell where the point of separation is between the passes,
28:18
limits, and the claim limitations?
28:19
Appellee Attorney
Well, the answer to that is in simple terms is that I'm saying that I've got all these other limitations in there.
28:27
Just like you've said.
28:28
Now I want to know, are there additional things that I can add which are present in my device that I want to market?
28:34
And as we're sitting around and saying, well, if we put it outside the box,
28:38
that clearly everybody agrees is going to be not a problem.
28:41
So let's just put it on a card and put it inside.
28:43
And so it looks like on the outside of the computer box, it's just a port.
28:48
And this is there.
28:49
So that can't be infringement.
28:50
Well, that is infringement if you've used the guidance of the prosecution history during prosecution,
28:57
but that would not be infringement if that was the question being asked,
29:02
looking at the definition as it turns out from the reexamination.
29:05
So there is a practical significance as to whether or not something can, in fact,
29:11
some processing element, some intervening apparatus, some intervening device,
29:16
intervening circuitry that intercepts, modulates,
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demodulates, or processes signals, or another way they put it,
29:22
an active component between the fax machine and the computer.
29:27
And so in one instance, I can just get around it.
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I'll just put it in the box.
29:32
But that runs you into the conflict.
29:36
Did I answer your question?
29:38
Judge Prost
Yes, it does.
29:38
Thank you.
29:39
Can I shift gears a little?
29:41
And this question may seem in the weeds to you,
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but it's not in the weeds for people who are thinking about having to write opinions.
29:49
Computer is a familiar.
29:51
The way the case was presented to Judge Stark,
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he had two terms, passive link and computer,
29:59
and found them kind of independently indefinite each term.
30:05
Computer is a familiar term with an ordinary meaning.
30:08
So I'm wondering if it's necessary to hold computer indefinite
30:13
if we hold passive link indefinite.
30:16
And the second question I have is that one could have just as easily,
30:22
talked about the entire phrase,
30:25
which includes both passive link and computer,
30:29
and not sort of divvied up passive link,
30:32
and then computer is a separate category.
30:34
So could you just give me your view on both of those questions,
30:37
both of those points?
30:39
Appellee Attorney
Absolutely.
30:40
And thank you, Your Honor.
30:41
And I don't want to sound like a conspiracy theorist,
30:43
but you actually, it's like you listened in on a conversation,
30:46
because my first concern was when my colleagues raised
30:51
that they wanted to have the term computer interpreted,
30:54
is that as a general matter, this court has been very clear.
30:57
When you say computer, it's a generic computer.
31:00
So how are we going to ask this court to say that the computer is indefinite?
31:03
And the concern was is that because of the fact that it's the passive link,
31:10
as it's defined as what its ends are, have to be relative to something.
31:15
Now, in hindsight, the way you phrased it is,
31:18
would it have been easier to interpret it,
31:22
as the entire phrase,
31:23
that the two terms only get linked to each other
31:26
because of the fact of the definition of where the computer starts
31:30
and where the computer stops.
31:32
So in the normal sense, you know, it is a computer,
31:36
and it's described as a general computer.
31:38
It's like there's nothing special about it.
31:41
But it's that connection to it,
31:43
because most people would normally think that it's like,
31:46
oh, I plug it in.
31:47
What does it mean I plug it in?
31:49
And that's where the problem arises.
31:52
And it's the question that Judge Stark asked,
31:54
which was answered in the affirmative,
31:57
was, you know, is it, am I correct for someone to understand
32:03
with one of ordinary skill in the art,
32:05
for these claims to be definite,
32:07
one of ordinary skill in the art has to be relatively certain
32:10
of what the endpoints are.
32:13
And the answer was yes.
32:15
And so that framed up the issue that those endpoints are important.
32:20
And so I think,
32:22
I suppose you could find passive link by itself indefinite,
32:25
if it's indefinite with the explanation,
32:27
because it didn't say where it was supposed to end.
32:32
And it's kind of a, you know,
32:35
they became strangely inextricably linked.
32:38
But I understand exactly what you're saying,
32:40
and I sympathize with you,
32:42
because I had the exact same question as how best we should be framing it
32:45
to the court.
32:46
And so it is not in the woods.
32:50
Judge Clevenger
Judge Clevenger, what's your answer?
32:52
Why is computer,
32:55
if an ordinary computer can include Perkins' card,
33:04
then why is computer indefinite?
33:07
Appellee Attorney
Well, again, I think this is a unique situation,
33:11
and I think it may be belt and suspenders.
33:14
So if the term passive link is found to be indefinite
33:20
because its endpoints cannot be discerned as to where they,
33:25
what they're doing,
33:26
what the endpoint is on the computer end,
33:28
then that would solve the problem.
33:31
Judge Clevenger
Oh, no, but it's indefinite because on the one hand,
33:37
the passive link ends at the port on the computer,
33:41
and on the other hand,
33:42
it ends inside the computer on the far side of the card.
33:46
Exactly.
33:48
So on either one of those hypotheticals,
33:51
why does that make computer indefinite?
33:55
Appellee Attorney
And I would agree.
33:56
I agree with you.
33:57
Judge Clevenger
The computer doesn't care where the passive link opens,
34:03
starts, or stops.
34:05
In some computers, it would stop at the port on the outside
34:09
if there wasn't a card inside.
34:11
In other computers, if they are conventional with a card inside,
34:15
it would stop on the far side of the card.
34:20
So computers are clear.
34:23
Appellee Attorney
I wholeheartedly agree with you.
34:25
Judge Taranto
This is Judge Toronto.
34:27
Can I just ask you?
34:29
What do you say very specifically about Mr. DeNovo's argument
34:36
that if you look at the language of the September 2002 filing
34:42
that gave rise to the problem,
34:48
that it actually does not ever say that the passive link
34:52
goes all the way to the input-output.
34:56
In fact, it's being misread,
35:01
because the language is only about the data flowing.
35:05
It doesn't say that the passive link actually goes all that way,
35:09
and that, indeed, other language in that same document
35:14
seems to reiterate that the passive link ends at the interface.
35:19
Appellee Attorney
Well, the way the passive link has to be defined is
35:24
it's an intervening device, intervening circuitry,
35:27
intervening apparatus.
35:29
It's an active component that intercepts, modulates,
35:31
demodulates, or processes signals.
35:33
So there is an inconsistency, because what happened was,
35:38
and it was not just talking about the data.
35:40
I mean, it has to talk about the data in the context
35:42
of the data flows through the passive link.
35:45
But remember, what we were, this is in response to,
35:48
is that we have a situation where that intervening device
35:53
was put onto a card and put inside the computer.
35:57
And in response to that, the applicant made clear that
36:00
even if you put
36:01
it inside, it doesn't matter, because the passive,
36:05
what we're talking about is there's no non-intercepted signal.
36:09
There's no interrupted link between the facsimile machine
36:15
and the IO bus.
36:17
And it's very clear that that's, when you look at the context
36:20
in which it had to obviate that internal configuration
36:24
of Perkins, and when you look at Perkins,
36:28
and you look at the language in column nine,
36:30
for example, the facsimile device,
36:32
may be provided on a card for location in the computer.
36:35
I mean, it's exactly, we're talking the same thing.
36:38
And so, what does it mean that it's at the end of it?
36:41
It had to be the IO bus, and they distinguished it.
36:44
They say it explicitly.
36:48
Judge Clevenger
Sir, as Judge Clevenger, are these claims
36:51
necessarily limited to a physical cable connection
36:55
between the fax machine and the computer,
36:59
or would a wireless connection between the two be within
37:02
the scope of the claim?
37:04
Appellee Attorney
No, it's always in discussion of a physical connection.
37:08
I don't think that there's any way that that would happen,
37:16
wirelessly.
37:17
Judge Clevenger
Technically possible, it's just you say
37:19
the patent's limited to the physical connection.
37:26
Appellee Attorney
And having not looked at the terms of claims,
37:29
and because this isn't an issue, it's presented,
37:32
I would think it would raise additional issues, Your Honor,
37:36
simply because there would need to be a receiving device,
37:39
and that would be a signal processing device,
37:40
But if there was a fax machine inside the computer,
37:42
which processed the signal before it got to the computer?
37:45
Judge Taranto
It might be stuck on the outside.
37:49
Appellee Attorney
Yeah.
37:50
Even if it's stuck on the outside,
37:52
it's still intervening between the fax machine and the computer.
37:56
It would be a signal processing device that would be the,
37:59
I don't think it could actually work in a wireless fashion.
38:02
I think it actually has to be a direct connection now that I think it through.
38:06
Yeah.
38:07
Okay.
38:08
Thank you.
38:08
Otherwise, it's an intervening device.
38:09
Thank you.
38:11
Judge Prost
Thank you.
38:12
Thank you, Your Honor.
38:13
We will restore Mr. DeNova.
38:15
We'll restore three minutes of rebuttal,
38:17
and I think that keeps the time pretty even.
38:19
So that's good.
38:20
Proceed with your rebuttal.
38:22
Appellant Attorney
Thank you, Your Honor.
38:24
So first, I just wanted to point out,
38:27
because there seems to be some discussion or interest in the notion
38:33
of the one-line disclosure in Perkins that it can be in the computer.
38:38
And so I would point out that,
38:41
what the applicant understood by this one-line disclosure,
38:44
and it's one of those sort of patent lawyer techniques
38:48
where they say at the end of their patent immediately before the claims,
38:51
by the way, we could put it in the computer.
38:53
And so what the applicant was left to guess about that is that it was a card,
38:58
because a Perkins card was a unique card.
39:00
It was nothing that anyone had ever put in a computer before.
39:04
It was a device that had special processors,
39:07
and that that was plugged into the computer interface.
39:10
And so that's how the patentee addressed that,
39:14
by saying that plugging it in the box,
39:17
it still is not part of the computer.
39:19
It is a peripheral to the computer,
39:21
was the language adopted by the patentee.
39:23
And this was a distinction that was noted in the patent application,
39:27
in the specification.
39:29
So, for example, if you look at the 811 patent,
39:32
column six, lines 24 through 37,
39:36
they talk about the present invention is mounted upon its own printed form,
39:40
a printed wiring board internal to the computer.
39:43
That's my editorial, but it's a printed wiring board
39:45
and arranged within the PC type computer
39:48
and is electrically connected to the internal facsimile modem.
39:53
And it says, alternatively,
39:55
it may be placed on a printed card of approximately a credit card size
39:59
for insertion in a bus slot, i.e. a computer interface.
40:04
So that second embodiment of figure 2D
40:08
is more approaching Perkins.
40:10
But that is not what is claimed.
40:12
What is claimed is a passive link
40:16
and the endpoints were always crystal clear.
40:18
And I appreciate, Judge Stronto,
40:20
you're asking that very critical question
40:22
because there is never a single instance
40:24
where the passive link endpoint is defined as an IO bus.
40:30
And I would direct the court's attention to Appendix 2158,
40:34
where it says the digital signal enters the RS-232
40:39
or parallel type connector.
40:40
And there's, again, 2158.
40:45
And finally, just to address one comment
40:49
that I think Judge Stronto may have raised,
40:52
Perkins was discussed by the PTAB in the decision on appeal.
40:57
And so there was some discussion by the district court
41:01
that this would have been nugatory.
41:02
And I agree with Chief Judge Prost's analysis.
41:06
And frankly, we would invite that analysis
41:08
under Sections 102, 103.
41:10
It's not an issue.
41:10
And the PTAB specifically said,
41:15
we find unavailing the examiner's allegations
41:19
that statements made during the prosecution
41:23
to overcome a rejection of Perkins
41:25
allegedly conflict with what was made in this proceeding.
41:28
Judge Taranto
What's the citation for what you're reading from?
41:32
Appellant Attorney
2692.
41:34
Perkins did not teach or suggest
41:37
a direct transfer of digital signals
41:39
in light of its analog only
41:42
emphasis on original configuration
41:43
to overcome a prior art rejection.
41:46
So there's explicit finding by the PTAB
41:50
that the Perkins reference did not anticipate,
41:55
contrary to the nugatory dicta from the district court,
41:59
did not anticipate even Claim 27,
42:01
which, again, is not a claim that is asserted.
42:04
They were amended four times or more
42:08
in subsequent prosecution
42:10
in accordance with Judge Prost's
42:12
point.
42:13
Unknown
Okay.
42:14
Judge Prost
Thank you.
42:16
We thank both sides and the case is submitted.
42:19
Appellant Attorney
Thank you, Your Honor.