GRAMM v. DEERE & COMPANY
Oral Argument — 12/08/2025 · Case 24-1598 · 30:35
0:00
Judge Lourie
Our last case this morning is Richard Graham and Reaper Solutions versus Deere and Company, 2024-1598.
0:10
Mr. Young.
0:12
Appellant Attorney
Good morning, and thank you, Your Honors.
0:14
May it please the Court, the District Court erred by finding Claim 12 of the 395 patent indefinite
0:20
due to the lack of disclosed algorithm of the control means limitation.
0:25
The District Court's findings were based on two overriding errors.
0:29
First, the District Court erred by reading in an unclaimed function of controlling lateral position of the corn header
0:35
and subsequently limiting corresponding structure to Dialmatic No. 2, which includes a microprocessor
0:41
and also is capable of performing the unclaimed function.
0:45
Simultaneously, the District Court excluded Dialmatic No. 1, which does not include a microprocessor
0:53
but is capable of performing the claimed function.
0:56
The Court's second error occurred when it failed to recognize
0:59
that a person of ordinary skill in the art would have understood the specification
1:03
to disclose a three-step prose algorithm for the Dialmatic No. 2.
1:08
The means plus function claim of Claim 12, or limitation of Claim 12, rather,
1:13
recites a control means for raising or lowering the header in accordance with said first signal
1:18
in maintaining the header a designated height above the soil.
1:21
I will refer to this as the claimed function.
1:24
The District Court was aware of the correct means plus function claim construction methodology
1:29
in this case, and it cited Williamson, including for its recognition that the means plus function claim
1:34
covers only the structure corresponding to the claimed function.
1:39
The District Court also understood that it should first identify the claimed function
1:42
and then identify what structure, if any, corresponds to it.
1:46
Judge Reyna
You're no longer arguing that the District Court erred by conducting the means plus function out of order, correct?
1:53
Is that still your argument?
1:54
Appellant Attorney
We understand that the Court understood the order.
1:57
We believe that the Court misapplied the order.
2:00
In which it should have applied those steps.
2:03
And that's demonstrated by the fact that the Court's first focus was on identifying
2:09
a specific commercially available structure that had the capacity to control lateral position.
2:15
If it had gone through the correct steps, it would have looked for and identified the claimed function first.
2:20
Judge Cunningham
Can you pass to a specific JA page where you contend that the Court erred in terms of its application steps?
2:26
Appellant Attorney
Yeah, absolutely.
2:28
Appendix 30.
2:30
This is the primary page.
2:32
On Appendix 30, the Court eliminated Dial-O-Matic No. 1
2:37
because it lacks the capacity to control lateral position, whereas Version No. 2 does not.
2:45
And the District Court's order hinged on that finding.
2:50
That passage was very consequential because it limited the scope of the corresponding structure,
2:55
which then paved the way for the Court's indefiniteness finding.
3:00
But the District Court...
3:00
The District Court was informed through the testimony of Appellant Expert Mr. Smith
3:04
that a person of ordinary skill in the art would have understood that Deere, John Deere sold,
3:11
combines incorporating two types of head controllers, exemplified by Dial-O-Matic 1 and Dial-O-Matic 2.
3:17
Judge Cunningham
Let me take a step back here.
3:19
Did the parties agree, in my understanding as they did, that control means is a means plus function term?
3:25
Appellant Attorney
Correct.
3:25
Judge Cunningham
And did the parties also agree on the corresponding structure?
3:29
I think that you indicated that.
3:30
I'm taking a separate briefing that at least the parties, I'm taking this separate,
3:33
I'm stepping away from what the Court did, but did the parties also agree on the corresponding structure?
3:39
Appellant Attorney
Yes.
3:39
Yes, Your Honor.
3:40
The parties agreed that there was a controller interface, a head controller, and a hydraulic control means or system.
3:48
Judge Cunningham
Okay.
3:48
So what do you contend is the proper corresponding structure to the right function here for this limitation that is in dispute?
3:59
Appellant Attorney
All three of those.
4:01
All three of those, but in particular, the dispute in this case is focused on the head controller.
4:05
And the dispute is focused on the head controller because the patent specification specifically refers to Deere controllers
4:12
or controllers on Deere combines.
4:16
A person of ordinary skill in the art understood at the time of the patent that there were two different types of Deere controllers,
4:23
one of which consisted generally of circuitry and a relay, the other of which consisted generally of circuitry and a microprocessor.
4:31
In place of a relay, if you don't mind.
4:34
Judge Lourie
So you maintain that the disclosure in the patent concerning the lateral position does not disqualify that from being structure supporting the claim?
4:51
Appellant Attorney
The requirement or the language about controlling lateral position has no relevance to determining what structure performs the claimed function.
5:04
Judge Cunningham
Maybe just taking a step back.
5:06
What do you contend is the right function?
5:09
And why don't you walk us through briefly where we can see the support for that being the correct function here?
5:14
Appellant Attorney
Yeah, the correct function, the claimed function is for raising or lowering the header in accordance with said first signal
5:23
in maintaining the header at designated height above the soil.
5:26
And that can be found in claim 12, column 8, lines 51 through 53.
5:49
Judge Lourie
Which column?
5:50
Appellant Attorney
Column 8.
5:51
Column 8.
5:52
Claim 12, column 8, lines 51 through 53, I believe.
6:02
So when a person of ordinary skill in the art understands that there are two Deere, two types of Deere head controllers,
6:08
they understood that that was exemplified by dial-o-matic number 1 and dial-o-matic number 2.
6:12
As I mentioned before, dial-o-matic number 1 consisted primarily of circuitry with a relay.
6:17
Dial-o-matic number 2 consisted primarily of circuitry with a microprocessor in place of the relay.
6:24
Now, it's undisputed in this case that both versions 1 and versions 2 perform the claimed function of raising or lowering the header.
6:30
Mr. Smith testified that version 1 is corresponding structure for the claimed function, and his testimony was unrebutted.
6:38
Deere's fact witness, Dr. Miller, also acknowledged this much, stating that dial-o-matic 1, quote,
6:45
controls the height of header above the ground, and that can be found at appendix 2474, paragraph 8.
6:51
Judge Cunningham
Now, just for semantics purposes,
6:54
referring to version 1, that's the same as dial-o-matic 1?
6:57
Appellant Attorney
Yes, yes.
6:58
So dial-o-matic number 1, version 1, dial-o-matic number 2, version 2.
7:02
I apologize for the confusion there.
7:04
Judge Cunningham
I just wanted to make sure we're all on the same page.
7:05
Appellant Attorney
No, understood, understood.
7:07
Now, notwithstanding the evidence before the court,
7:09
the district court determined that the corresponding structure was limited only to dial-o-matic number 2
7:14
because of its capacity for controlling lateral position.
7:18
Judge Lourie
Two and three required algorithms, right?
7:21
Appellant Attorney
Two and three both include...
7:24
Are microprocessor-based.
7:26
Judge Lourie
Right.
7:26
Appellant Attorney
So, yes.
7:29
Because they have microprocessors instead of circuitry, yes, they do require algorithms.
7:33
Judge Lourie
So they were not adequate structure, supporting structure for the means clause.
7:39
So you're relegated to one, right?
7:43
Appellant Attorney
No, they are adequate structure because a person of ordinary skill in the art would have understood
7:47
the specification disclosed as an algorithm, a prose algorithm, a three-step prose algorithm,
7:53
which would...
7:54
Which provides the algorithm necessary for...
7:57
Judge Lourie
But that's not what the court decided, right?
7:59
Appellant Attorney
Correct.
8:00
The court did not decide that.
8:01
Judge Lourie
Right.
8:01
In fact, the court decided the contrary.
8:05
Appellant Attorney
The court did decide the contrary.
8:07
And in doing so, the court applied the wrong law, or incorrect law, I should say.
8:11
This court issued its SISVL decision in early October of 2023.
8:16
Appellants promptly provided that decision to the court.
8:19
Judge Reyna
So, let's go back to what you were talking about.
8:24
So, the district court erred by adding structure that was not necessary in order to perform the claim function.
8:33
Appellant Attorney
That's correct.
8:33
And that narrowed the scope of corresponding structure.
8:37
Judge Reyna
And you claim that that was the error, the addition of additional structure.
8:43
Appellant Attorney
Correct.
8:43
The controlling lateral position language does not come from the claim.
8:46
It only comes from the specification, and it comes up one time.
8:50
The claim function has to be determined based on...
8:53
Based on what is recited in the claim.
8:55
By virtue of adding in a controlling lateral position, the court effectively failed to perform the first step properly.
9:04
Judge Reyna
And if we were to agree with that position, what's the impact on the remainder of the case?
9:10
Is that dispositive?
9:12
Appellant Attorney
The case has to go back.
9:14
Yes, the claim construction has to be fixed, and you have to vacate the indefiniteness finding.
9:20
Judge Cunningham
I think just as a follow-up to Judge Raina's question,
9:24
of issues that were raised here, if we were to agree with you that the district court erred in terms of adding in this additional function,
9:33
which then had some impact potentially on the corresponding structure,
9:37
which of the various issues that you raised do we actually need to decide here?
9:41
Appellant Attorney
We need to examine the court's claim construction, which was incorrect in this case for the reasons I've identified.
9:46
It failed to properly identify the claimed function and added in an unclaimed function of controlling lateral position,
9:54
and in addition to that, that impacted what embodiments were included within the scope of corresponding structure.
10:03
Scope of corresponding structure should have included Dial-O-Matic 1, which does not include a microprocessor,
10:10
and therefore does not require an algorithm, as well as Dial-O-Matic 2, which does include a microprocessor,
10:15
and therefore requires an algorithm, but the algorithm is there as a three-step algorithm in the specification,
10:23
and that's noted by appellant's expert, Mr. Smith.
10:26
Judge Cunningham
Which issues potentially do we not need to reach if we agree with you that there was an error in the claim construction?
10:34
Are there certain issues that we wouldn't have to reach as a consequence of that, is my question to you.
10:38
Appellant Attorney
I think if you reach those issues, that's at the core of everything that we've raised here,
10:46
is basically the court's failure to apply black letter law when it comes to means plus function claim construction.
10:55
Now, I mentioned before.
10:55
earlier that the court misapplied or failed to apply the proper case law with respect
11:00
to Mr. Smith's description of the algorithm in this case.
11:08
The Sisfeld Court applies here, and it came out about a month before the court issued
11:13
its claim construction order.
11:14
We provided a copy of that to the court immediately.
11:17
The Sisfeld Court decision explains that when a specification includes some structure, like
11:24
this one does, then the rule corresponding to NOAA Group 2 applies, meaning the specification
11:28
need not disclose all of the details of the algorithm.
11:32
The court further provided that an expert may testify about what the disclosures in
11:37
the specification would have meant to a skilled artisan.
11:41
Ultimately, the district court did not apply Sisfeld, and thus it did not recognize that
11:45
the specification need not disclose all the details of the algorithm to satisfy the definiteness
11:51
requirement, so long as what is disclosed would have been a specification.
12:07
Appellee Attorney
The court should not lose sight here of the ultimate question, which is whether or not
12:29
the 395 patent meets the quid pro quo for means plus function claiming by disclosing adequate
12:35
structure clearly linked to the claimed control means.
12:38
The answer to that question is simple.
12:41
It does not.
12:42
The district court here correctly found that claim 12 and its dependents fail to meet that
12:49
quid pro quo based on its findings, first, that the 395 patent specification does not
12:56
disclose, describe, discuss.
12:58
It does not disclose.
12:59
The argument is that the claimant is the systematic number one controller, and that
13:02
the specification does not provide any disclosure of an algorithm.
13:06
I want to start with the argument that Reapers Council makes about the district court's process
13:11
in identifying the function and the structure.
13:15
To your honor's question, Judge Reina, the district court did apply the process in the
13:20
correct order.
13:20
The only thing that appears in the district court's decision before its identification
13:24
of the claimed function is a summary of the party's arguments.
13:28
Then an appendix.
13:29
The appendix page 29, the district court recites the function straight from the claim.
13:34
Nowhere in the subsequent pages of its opinion or before that does the district court go
13:39
through a claim construction analysis or otherwise limit that function.
13:43
The place where this lateral...
13:45
Judge Reyna
There's no claim construction issue in this case.
13:49
Appellee Attorney
Well, no.
13:50
The means plus function, identifying the function and the structure is a claim construction
13:55
issue.
13:56
But the district court got the function part right.
13:59
It stated correctly in the district court's opinion.
14:02
It never revisited that.
14:03
The place where this lateral positioning capacity comes up is in the identification of the structure.
14:10
And the district court, when it discussed that lateral positioning capacity, it was
14:15
not in the context of rewriting the function.
14:18
And I think it's helpful to kind of step back and look at what the district court did here
14:21
and the process that she went through.
14:24
She started with the claim function, and then Reapers Council identified this passage of
14:29
the function.
14:29
And then Reapers Council identified this specification at column 3, lines 33 through 52 as being
14:34
the key passage with the corresponding structure.
14:36
And in there is where you see this reference to a controller.
14:39
But there's no description in that passage of what that controller consists of.
14:43
It doesn't tell you what the parts are.
14:44
It doesn't say whether it's a microprocessor.
14:46
It doesn't say circuitry.
14:47
Unlike the SISFL case that they cite, it doesn't even mention software.
14:51
Judge Lourie
So you're saying the reference to the word lateral is irrelevant?
14:56
Appellee Attorney
Well, it's not irrelevant.
14:57
It was a clue for the district court.
14:59
When it got to the end of that passage, so Reapers knew it had a problem with the word
15:03
controller, right, Your Honor?
15:04
Because it was too vague.
15:05
So they said, this controller is actually a controller as in a deer combine, based on
15:12
the very last sentence of that passage.
15:14
So then the district court said, okay, well, that narrows the field for me.
15:17
I'm down to three controllers, because they're looking at Dr. Miller's declaration.
15:22
He's a retired deer engineer.
15:24
There were three deer head controllers available in 1997.
15:28
Now I need to figure out how to get them to the district court.
15:29
I need to figure out which one it is, because this court's precedent in ergo the care fusion
15:34
says just getting it down to three isn't enough.
15:37
Just saying it's something known in the art, and it could be any one of three options,
15:41
doesn't get you there in terms of the quid pro quo of means plus function claiming.
15:45
You need to have some direction.
15:47
And so the district court did everything in her power to give Reaper the benefit of the doubt,
15:51
and she went back to that passage, the one that's identified as the relevant passage,
15:56
and looked for clues as to which controller was being used.
15:59
And when she read it, it says that the controller, that key sentence,
16:03
this is the sentence that supposedly does the clearly linking, too,
16:07
says that the controller, the deer controller referenced later,
16:10
is one that has the capacity to do lateral positioning as well as height control.
16:16
And so she knew from that passage that the controller referenced later,
16:20
the one that Reaper said was the clearly linked structure,
16:22
had to be something other than the dilematic number one,
16:26
because all of the evidence before her showed that the,
16:29
the dilematic number one didn't have that capacity.
16:31
To use an analogy.
16:32
Judge Cunningham
But is that lateral positioning even necessary to the function of the claim limitation dispute here?
16:41
Appellee Attorney
No, it's not, Your Honor.
16:42
But that's a different question.
16:44
Judge Ebinger never got to the point of identifying the structure
16:48
because the algorithm requirement came in first.
16:52
So had she found that it was the dilematic number one
16:56
and had to go to the process of which,
16:59
which structure is necessary to perform the claim function,
17:01
perhaps parsing which components of the dilematic number one that would be,
17:06
that's where that would come in.
17:07
But she didn't even get there because once it was...
17:09
Judge Cunningham
Wasn't part of the reason she concluded it couldn't be dilematic version number one
17:13
is because of the controlling the lateral position statements
17:17
in the specification that she seemed to be pointing to in her decision.
17:22
Appellee Attorney
Yes, Your Honor.
17:23
She did look at that, but it's a clue as to which controller is referenced at the end.
17:27
If I might use an analogy, like,
17:28
let's say it didn't say lateral positioning here.
17:31
Let's say it actually said microprocessor.
17:33
The controller uses a microprocessor to adjust header height.
17:37
We would be talking about something that's more of a structure, right?
17:40
I think the confusion comes out because the lateral positioning
17:43
does have this functional feel to it,
17:45
but she didn't actually import a function in.
17:47
She was just looking at that lateral positioning capacity as a clue.
17:50
Judge Reyna
But either way, wouldn't you agree that the claim language itself
17:52
does not mention or claim this last corresponding structure?
17:58
Or the lateral part?
18:03
Appellee Attorney
The claim language does not, in the functional language in the claim,
18:07
does not use the phrase lateral positioning.
18:09
You're correct, Your Honor.
18:10
But she did not import that in.
18:12
She just looked at that capacity as a clue as to which combine controller headers
18:17
were being referenced later in the passage.
18:19
Judge Reyna
But when she included that, then that affects the clock one, clock two descriptions.
18:27
Appellee Attorney
I'm sorry, Your Honor.
18:28
It affects the?
18:29
Judge Reyna
No, go ahead.
18:30
Go ahead.
18:31
Appellee Attorney
I would really like to answer your question.
18:34
It does affect which diplomatic controllers were envisioned by this passage.
18:38
But understand also that she was, Judge Ebinger was getting reaper the benefit of the doubt.
18:43
If all the passage said was three deer combines without any identification
18:46
of which one was being referenced, we would be in exactly the same position
18:50
as ergo be care fusion.
18:52
There, the claim term at issue, just like this one, was control means.
18:56
And the patentee pointed to the specification.
18:59
Where it referenced the clearly linked structure as a controller.
19:04
Exactly the same.
19:05
And the patentee had evidence from an expert that there were three potential controllers
19:10
out there that were known in the ARC.
19:12
Precisely the same facts we would have here if the district court hadn't done that additional
19:16
inquiry to try to figure out which controller was being referenced in that passage.
19:20
And these are not three controllers that are.
19:22
Judge Cunningham
Do you agree that the right claimed function here is what I think you point us to on appendix
19:27
page 29.
19:28
Mm-hmm.
19:28
Raising and lowering the header in accordance with said first signal
19:31
and maintaining the header at designated height above the soil.
19:34
Appellee Attorney
It is.
19:35
That is the claim function.
19:36
And that's exactly what the district court applied here.
19:38
She did not read in lateral positioning capacity into that function.
19:43
Judge Cunningham
Could that function be controller completed by the dalimatic version number one?
19:52
Could that function be the, could you repeat that, Your Honor?
19:55
I'm sorry.
19:55
Could that function be controlled by circuitry?
20:00
By the dalimatic version number one?
20:02
Possibly.
20:03
Appellee Attorney
But there's not clear evidence of the record of that.
20:06
So Dr. Miller does say that the dalimatic number one does header height, but he never
20:11
goes through and does a claim analysis where he says, he wasn't presented as an expert.
20:15
He was a fact witness.
20:16
And so he just went through and said what it does.
20:19
He didn't actually go to the claim function and provide testimony as to whether it meets
20:24
that function as stated in the claim.
20:26
And there's more words in that function than just height control, although that's the key
20:29
one.
20:30
But possibly, yes, we would, if Your Honors were to reverse, we would need to go back
20:35
and look at that question with the district court.
20:37
But I think there's another impediment to reversing, which is the fact that if Your
20:41
Honors don't accept the proposition that it's, it excludes dalimatic number one, that there's
20:47
some guidance as to which one of these deer combine controllers is referenced in the passage,
20:52
we're in exactly the same boat as ergo, which the district court gave, gave reefer the benefit
20:57
of the doubt on.
20:59
Are there, if there are no more questions on the floor?
21:01
As far as the fact function aspect, I'd like to turn to the algorithm.
21:03
So the district court made a correct finding, set of findings here that the specification
21:08
of the 395 patent does not disclose an algorithm corresponding to the dalimatic two or three.
21:14
That finding is based on not just the patent itself, but also testimony from Dr. Miller,
21:21
the retired deer engineer, and the source code for the dalimatic two and three, which
21:27
were attached to Dr. Miller's declaration.
21:32
In doing so, she also looked at Mr. Smith's declaration and rejected the prose algorithm
21:38
in there, and that finding was not in clear error.
21:42
In fact, Dr. Smith's prose algorithm, if you line it up side by side the way that Reaper
21:47
does in their reply brief with the Finisar case, you'll find that there are even fewer
21:52
words, phrases, different between that prose algorithm and the claimed function here.
21:58
And on top of that, the district court correctly found that the dalimatic two and three are
22:02
found at step two of Mr. Smith's alleged prose algorithm finds no corollary in the
22:07
specification at all.
22:08
That prose algorithm is based on piecing together different parts of the specification and a
22:16
phrase from the claim itself that has no corollary.
22:19
The notion that a person of ordinary, that the quid pro quo for means plus function claiming
22:25
was met here with an algorithm that has to be pieced together by an expert using disparate
22:30
parts of the specification.
22:32
And the claim is, it's just incorrect.
22:42
During Mr. Young's argument, he referenced the Sizzville case.
22:49
I want to just correct one thing about that case.
22:51
That case, in that case, the court, this court remanded for a determination of whether or
22:56
not there was structure because of reference to software and the specification was a sufficient
23:00
hook to make the expert declarations relevant.
23:03
That's not the case here.
23:05
The district court did look at the expert declarations.
23:07
She did make fact findings based on those rather than deciding on the patent itself.
23:15
And so it's a different situation.
23:20
And then, Judge Reyna, to answer, are there any further questions on the algorithm?
23:27
I wanted to go back to the question that you asked, Judge Reyna, which was about whether
23:31
there was any addition of structure by the district court's finding here with respect
23:36
to lateral capacity.
23:37
And again, the district court never got to the point of determining which structure was
23:41
necessary to perform.
23:43
The claim function, because the algorithm requirement was triggered, and therefore there
23:48
was no reason to go on to the structure analysis beyond that.
23:54
So because once you got to the algorithm requirement, the claim was indefinite, and there was no
23:57
further to go.
23:58
Judge Reyna
And then...
23:59
If we were to find that the court added structure beyond that that's necessary to the claim
24:05
function, then isn't it ergo that that impacts the algorithm analysis?
24:12
Appellee Attorney
The algorithm analysis is separate.
24:14
Apart from that, it's a predicate step before you get to...
24:16
Judge Reyna
No, but it's been reduced now to Dalamatic 1 and Dalamatic 2.
24:22
The addition of additional structure impacts the Dalamatic analysis or the algorithm analysis.
24:33
Appellee Attorney
If the district court had...
24:34
I think your question, Your Honor, is that whether the district...
24:37
If the district court had added additional structure, it would impact the analysis?
24:41
It would, but the district court never got to that point.
24:44
She just determined that the Dalamatic...
24:46
The Dalamatic referenced in column 3 could not be the Dalamatic number 1.
24:52
Therefore, it was Dalamatic 2 or 3, both of which required an algorithm.
24:57
One other issue that I think, Your Honor, would need to grapple with if you were to
25:02
agree with Reaper's counsel that 1, 2, and 3 are all covered by this claim is that this
25:08
precedent that they cite for the notion that if you have one structure that's got an algorithm
25:14
and a second structure that doesn't...
25:16
And that somehow meets the definiteness requirement and the quid pro quo, that all predates Nautilus.
25:20
I don't think Your Honors need to get to that question, but if there are three structures
25:27
disclosed in the specification and two of them are indefinite and vague, that is a problem
25:31
under Nautilus because the person of ordinary skill cannot determine with reasonable certainty
25:35
what the scope of the claim is because they have to determine the equivalence thereof
25:38
for each of those structures.
25:40
But just like Judge Ebinger, there's no reason to get there because either this claim is
25:44
invalid under ergo...
25:46
Or if you get to the point of figuring out which dial-o-matic is covered, it's not the
25:51
dial-o-matic number 1, it's the dial-o-matic 2 or 3, and those are both...
25:56
Those both clearly trigger the algorithm requirement and there's no algorithm here.
26:00
Judge Reyna
If you were considering dial-o-matic 1 in a vacuum, then there would be no triggering
26:07
of the algorithm requirement, right?
26:10
There's no requirement for an algorithm if you only have dial-o-matic 1.
26:15
Appellee Attorney
That's not true, Your Honor.
26:16
Judge Reyna
Well, a dial-o-matic is only circuitry and a relay.
26:20
It's not a processor.
26:21
Appellee Attorney
It's not a microprocessor, but the testimony in the record, if you look at Appendix 578,
26:28
this is from the Indiana briefing...
26:30
Judge Reyna
But it's not a processor like dial-o-matic 2.
26:33
Appellee Attorney
It's not a microprocessor, but Dr. Lucas's testimony was that even though it was circuitry,
26:39
it did implicate an algorithm.
26:41
And you can look at Appendix 578 for that discussion.
26:45
But that wasn't the focus.
26:46
The focus in the Iowa court, because there was this other problem with the dial-o-matic
26:50
number 2 and 3, and there are many problems with this patent.
26:55
I mean, I want to just leave you with the ultimate question, which is whether the quid
26:58
pro quo for means plus function claiming was met with the 395 patent.
27:03
And there are many aspects of this patent that are vague.
27:06
The district court here was methodical in the way she analyzed it, giving Reaper the
27:10
benefit of the doubt at every step.
27:11
And she came to the conclusion, which I hope you'll agree with, that this claim is indefinite
27:15
due to the failure to do so.
27:16
And that's why I'm here today to discuss adequate structure for the control means.
27:18
Thank you, Your Honor.
27:20
Judge Lourie
Thank you, Ms. Levickson.
27:22
Mr. Young has some rebuttal time.
27:26
Appellant Attorney
Yes, thank you, Your Honor.
27:29
First of all, with respect to the algorithm, I'd just like to point out that the district
27:35
court rejected Mr. Smith, who was an expert in this case, rejected his testimony about
27:40
the PROS algorithm.
27:41
And in reaching that conclusion, reaching her conclusion that the PROS algorithm did
27:47
not, let me step back, what she said was the PROS algorithm simply restated the claimed
27:52
function of the patent.
27:54
And in reaching that conclusion, the district court relied on, contrary to Sisfel, she ruled
28:01
contrary to Sisfel with states that the adequacy of the disclosure in the specification, that
28:06
is the algorithm here, must be viewed on the skilled artisan's perspective.
28:12
Her section dealing with the algorithm, appendix 34 to 37.
28:18
Doesn't even mention person of ordinary skill, doesn't mention skilled artisan, doesn't cite
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to anyone other than her own opinion.
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She completely ignores the testimony of our expert, who was the only person who provided
28:32
any perspective of a skilled artisan.
28:36
Judge Cunningham
If we were to consider vacating and remanding here, what would be left for the district
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court to do upon a remand?
28:45
Appellant Attorney
It would have to fix its claim construction.
28:47
With respect to the corresponding structure, the corresponding structure in this case has
28:52
to be Dialmatic 1 and Dialmatic 2.
28:54
Judge Rainey, you properly noted that if Dialmatic 1 is corresponding structure, then there is
29:01
no indefiniteness problem, because you don't have to have that.
29:04
The Serrano case establishes that.
29:06
The Serrano case involves discrete logic or a microprocessor under software control, and
29:11
in that case, this court did not require an algorithm.
29:15
There's also not an algorithm necessary.
29:17
But there is one that exists in the specification for Dialmatic 2, and Mr. Smith explained why.
29:24
The court, in discounting that testimony, simply relied on her own view of the specification
29:31
without considering the perspective of a skilled artisan.
29:35
Additionally, in doing so, she recharacterized both the claimed function and the specification
29:40
by using terms such as control process, signal reception, translate, signal production,
29:47
none of which are in the patent anywhere, none of which were used by any of the parties
29:53
or any of their witnesses.
29:54
So the court did not rely in any way, shape, or form on a person having the perspective
29:59
of a skilled artisan.
30:01
I would simply note, Judge Cunningham, you asked earlier if Dialmatic 1 does, in fact,
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perform the claimed function.
30:08
It does.
30:09
If you look at Appendix 2474, Deere's fact witness, Mr. Miller, states that it does in
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paragraph 8.
30:19
I would also note that under Qualcomm, circuitry does not trigger an algorithm requirement,
30:27
contrary to what Deere's counsel has indicated.
30:30
And I see my time's out.
30:32
Judge Lourie
Thank you.
30:33
Both counsel, the case is submitted.