[00:00:08] Speaker 03:
may please the court nice to see you it's been a while it's a pleasure to be here your honor the board's first principal error in this case was in adopting under the broadest reasonable interpretation standard the narrow construction of made to adapt uh... did made to uh... designed to adapt configured to construction

[00:00:34] Speaker 03:
even though the permissive claim language here suggests the broad capable of construction.

[00:00:48] Speaker 03:
is like this case only that it's an adapted to case and has handles the court and and and we constricted narrowly at the well that's correct uh... uh... what all britain argues is that genelec uh...

[00:01:04] Speaker 03:
said that the spec, like here, states the location of the handle components relative to the other components are sufficient to perform the functions.

[00:01:15] Speaker 03:
That's very different than what we have here.

[00:01:19] Speaker 03:
In GNLE, the claim recited that function, but it also recited those handles and then had a limitation about the travel between those two handles being in a linear path.

[00:01:31] Speaker 03:
What the court did is it went to the specification and looked and found the structure expressly recited that enabled those two handles to move from one position to another in that linear path.

[00:01:45] Speaker 03:
So, Giannelli held that those positional relationships between the handle and the first and second lever arms and the resistance mechanism, the court said that is the structure

[00:01:58] Speaker 03:
that makes this device adapted to perform that recited function.

[00:02:05] Speaker 03:
So it adopted the narrow construction.

[00:02:09] Speaker 03:
Then the court went on to say

[00:02:11] Speaker 03:
that the obviousness analysis should consider whether it would have been obvious to modify the structure of the PriorArt device to achieve the structure that was so adapted to.

[00:02:26] Speaker 03:
In other words, it was comparing structure to structure.

[00:02:29] Speaker 03:
But here it's very different.

[00:02:31] Speaker 03:
We don't have any disclosure in this specification of what is required structurally to meet

[00:02:41] Speaker 03:
these functional limitations.

[00:02:43] Speaker 04:
Why don't we look at the specification?

[00:02:46] Speaker 04:
Absolutely.

[00:02:48] Speaker 04:
It's not that long.

[00:02:49] Speaker 03:
It's not.

[00:02:50] Speaker 04:
Yeah.

[00:02:51] Speaker 03:
It's not.

[00:02:54] Speaker 04:
So I guess it's probably always the case that there's something you can point to it, something your friends on the other side can point to.

[00:03:00] Speaker 04:
So what's your best?

[00:03:02] Speaker 04:
Is it the adapted to permit configured to allow?

[00:03:08] Speaker 04:
Is that on your side or is that on their side?

[00:03:11] Speaker 03:
Well, all of them are on our side.

[00:03:13] Speaker 03:
It's the adapted to limitation.

[00:03:15] Speaker 03:
I mean, the board treated claim one as exemplary.

[00:03:19] Speaker 03:
So let's go to claim one, where we have first there is the configured to allow limitation, which allows a position of the guide catheter to be controlled by some or all of the three fingers.

[00:03:31] Speaker 03:
And that just tells you.

[00:03:32] Speaker 02:
Three fingers of one hand.

[00:03:34] Speaker 03:
One hand, that's correct.

[00:03:35] Speaker 03:
And that just tells you how the user can basically hold it.

[00:03:40] Speaker 03:
Where the rubber meets the road is in the adapted to permit limitation, where it says in addition to holding it with these one or more of these three fingers of the hand, it's adapted to permit the operator to manipulate the working device with the thumb and index finger.

[00:03:59] Speaker 03:
And this is in column six, starting at line five.

[00:04:03] Speaker 02:
And then also... Wait, wait, wait, wait, wait, wait.

[00:04:05] Speaker 02:
Adopted to permit the operator to position a thumb and index finger of the hand.

[00:04:11] Speaker 02:
That's correct.

[00:04:12] Speaker 02:
Now does that refer to the prior hand?

[00:04:14] Speaker 02:
Yes.

[00:04:14] Speaker 02:
So it's the same hand?

[00:04:15] Speaker 02:
Same hand.

[00:04:16] Speaker 02:
Okay, keep going.

[00:04:17] Speaker 03:
Okay.

[00:04:18] Speaker 03:
Via a portion of the working device immediately adjacent to the handle opening and to control.

[00:04:23] Speaker 03:
So it's adapted to manipulate and it's adapted to control the suction.

[00:04:27] Speaker 03:
So we've got here the three limitations, the position limitation,

[00:04:33] Speaker 03:
we've got the manipulation limitation and we've got the suction limitation and those are all expressed in permissive language to permit to allow

[00:04:46] Speaker 03:
that to be done and so it's this permissive language that is the first and most important way to distinguish GNLE.

[00:04:57] Speaker 03:
GNLE had a specific structure to do something so that when when the operator pushed

[00:05:03] Speaker 03:
Because of the structural relationship between the elements, it resulted in a certain result.

[00:05:13] Speaker 03:
And that function was that you would push between one handle and another and you would get that linear path.

[00:05:20] Speaker 03:
This is not like that.

[00:05:21] Speaker 03:
This does not refer to the relationship between structures of the accused device.

[00:05:27] Speaker 03:
What this refers to is the relationship between

[00:05:32] Speaker 03:
one on one and the structure and how the operator uses it so that's why the board's first error here

[00:05:41] Speaker 03:
in broadly construing this by basically reading out.

[00:05:45] Speaker 03:
It said, this case is controlled by Giannelli.

[00:05:48] Speaker 03:
But Giannelli had some big differences.

[00:05:50] Speaker 03:
And the first big difference is that Giannelli didn't have the permit and allow language, which is very permissive.

[00:05:59] Speaker 03:
There's other issues with Giannelli as well.

[00:06:03] Speaker 02:
Well, wouldn't the opposite of permit be prevent?

[00:06:09] Speaker 03:
No, in this case, the opposite of permit is to do.

[00:06:13] Speaker 03:
And so in other words, instead of just permissive.

[00:06:17] Speaker 02:
Well, OK.

[00:06:18] Speaker 02:
So in effect, what you're saying is when a surgeon is doing surgery and using this device, it would mandate that he do something with the device

[00:06:31] Speaker 02:
as he's doing his operation.

[00:06:34] Speaker 03:
What it would show is that that's the way that the device is used.

[00:06:39] Speaker 01:
So if we took out the permissive language, the configured to or all this permissive language and instead it just said, for instance, it is

[00:06:53] Speaker 01:
controlled by some or all of three fingers of one hand.

[00:06:57] Speaker 01:
It is, not configured to, it is.

[00:07:00] Speaker 01:
Does that make the limitation to one hand?

[00:07:02] Speaker 03:
No.

[00:07:03] Speaker 03:
Well, it makes the limitation so that the use would be one hand

[00:07:11] Speaker 03:
But that doesn't end the claim construction analysis here.

[00:07:15] Speaker 03:
The one thing that Aspects and Mann Machine and GNLA all made clear is that what the court has to do is look in construing these claim limitations not only to the language of the particular configured to or adapted to language, but the entire limitation

[00:07:32] Speaker 03:
the entire claim and the entire specifications.

[00:07:36] Speaker 04:
Tell us the language.

[00:07:39] Speaker 04:
What would they have had to have said?

[00:07:40] Speaker 04:
Would they have had to say the negative and we do not cover more than one hand?

[00:07:45] Speaker 03:
What would be sufficient?

[00:07:47] Speaker 03:
What you do is you take the claim language and then like Giannelli did, you go to the specification to see what did the patentee mean by this language.

[00:07:59] Speaker 03:
And there can be a number of different constructions to this.

[00:08:03] Speaker 03:
actually has five different lines.

[00:08:05] Speaker 04:
So you're saying the claim language that we've been talking about for the past four minutes isn't dispositive of anything then.

[00:08:11] Speaker 04:
That's correct.

[00:08:12] Speaker 04:
So you're saying okay we haven't disposed of it by looking at the claim language so now let's move on to the spec.

[00:08:17] Speaker 03:
That's correct.

[00:08:18] Speaker 04:
So tell me what in the spec disposes of it in a way that includes more than one hand.

[00:08:24] Speaker 03:
Okay.

[00:08:28] Speaker 03:
In the specification, that supports the broad construction and in fact requires the broad construction because it discloses a handle structure again that merely allows for performance of the recited function.

[00:08:43] Speaker 01:
That's just repeating the claim language.

[00:08:45] Speaker 01:
That's not anything different than saying this claim language is broad and permissive.

[00:08:49] Speaker 01:
Is there anything specific that limits it or doesn't limit it to one hand?

[00:08:54] Speaker 03:
Yes, and what the board did was it looked at page appendix 15.

[00:09:02] Speaker 03:
So if we go to page appendix 15 and what the board said, this was the structure that is necessary or required to perform the claimed functions.

[00:09:13] Speaker 03:
So the board in its analysis at page 15... I'm not really interested in looking at the board's analysis.

[00:09:20] Speaker 01:
I want you to point me in the specification, something that supports your construction that it can mean more than one hand.

[00:09:30] Speaker 03:
Well, we cited eight examples of permissive language.

[00:09:34] Speaker 01:
Is that just repeating the permissive language from the claims?

[00:09:37] Speaker 03:
Correct.

[00:09:38] Speaker 03:
And then what we did... What else?

[00:09:40] Speaker 01:
Is there anything else in the permissive language of the claims?

[00:09:56] Speaker 01:
And under summary, the first sentence is, this disclosure provides an apparatus system and method for manipulating a surgical catheter and working device with a single hand.

[00:10:07] Speaker 01:
It doesn't say capable of being used by a single hand, it says with a single hand.

[00:10:12] Speaker 01:
And then when we look back at that claim language, it's also, at least the first time, says single hand.

[00:10:17] Speaker 04:
And everything else that follows, the bottom of what the board cited too is the bottom of paragraph, column four, three paragraphs in five.

[00:10:28] Speaker 04:
We're talking about one hand throughout the entire specification.

[00:10:33] Speaker 03:
And what all of those descriptions are,

[00:10:37] Speaker 03:
is functional descriptions or non-limiting descriptions instead of saying this is the structure.

[00:10:45] Speaker 03:
The board was very clear in conceding at the appendix 9 and 10, spanning that, that it was the specifications figures that actually disclosed the corresponding structure.

[00:11:01] Speaker 03:
Remember, let's take a step back here.

[00:11:03] Speaker 03:
What is going on in this case?

[00:11:05] Speaker 03:
Like the Supreme Court said in Hallibur, what the patent owner has done here is choose to use conveniently functional language at the point of novelty.

[00:11:17] Speaker 03:
So they're using functional language at the point of novelty.

[00:11:21] Speaker 03:
This court has come up with a number of different ways to try to deal with that number of different lines of cases.

[00:11:30] Speaker 03:
And what this court did is it went to the aspects man, machine, Giannelli line of cases to decide whether this was capable of or the much more narrower standard.

[00:11:43] Speaker 03:
And in all those cases where they found that the narrow standard applied, they found that there was a structural relationship that they would then, that would identify how this was adapted to.

[00:11:56] Speaker 03:
If you look at the disclosure in the specification, it simply says you can, for example, size the handle so that it performs these functions.

[00:12:07] Speaker 03:
It identified an angle between 0 and 90 degrees, but that's not limiting.

[00:12:11] Speaker 01:
I'm not sure I follow this argument.

[00:12:13] Speaker 01:
It seems to me that even if it's phrased in purely functional terms, if it's clear from the specification and the claims all read together, which we have to do, that this invention is limited to use by a single hand, then that's relevant, whether it's in functional language or not, or whether the prior art discloses only one hand, when this is only one hand.

[00:12:41] Speaker 03:
With all due respect, that's flat out wrong.

[00:12:44] Speaker 03:
This claim is directed to specific functional limitations.

[00:12:49] Speaker 03:
And it is those limitations that should be read upon the prior art.

[00:12:54] Speaker 03:
And the question is, do we construe them broadly as capable of or narrowly under this standard?

[00:13:03] Speaker 03:
And in order to construe them narrowly, your problem isn't that.

[00:13:09] Speaker 02:
The board, for example, at nine, says the specification explains when they're rejecting your argument that the user holds handle 350 and then after certain fingers, using certain fingers, while the forefinger and thumb are left free to manipulate a working device into the opening 318 and so on.

[00:13:33] Speaker 02:
It's actually directly tied to the device.

[00:13:39] Speaker 03:
we're not

[00:13:43] Speaker 03:
that it be used one-handed.

[00:13:45] Speaker 03:
We've conceded that.

[00:13:47] Speaker 03:
I understand.

[00:13:47] Speaker 02:
Our position is that these claim limitations that issue... But what they're responding to is your argument that the specification fails to identify any particular structure that allows slash permits the handle be used in the claim manner.

[00:14:02] Speaker 03:
What we're saying is different, Your Honor.

[00:14:04] Speaker 03:
It's more subtle and it's applied to the Aspects Man-Machine GNLE cases.

[00:14:08] Speaker 03:
The standard there is does the

[00:14:10] Speaker 03:
Does the disclosure describe structure that is required to perform the recited function?

[00:14:18] Speaker 03:
And we say no, the specification doesn't describe that because as the board said twice, necessary or required, no.

[00:14:31] Speaker 03:
It says you may do this, you may do this, you may do this.

[00:14:33] Speaker 03:
The only structure, the only place

[00:14:36] Speaker 03:
where the structure appeared is in the example of figures 3 through 15.

[00:14:41] Speaker 03:
And there is no case from this court or any others that I have seen where a mere example can define what a functional statement is.

[00:14:52] Speaker 03:
The courts have all looked at this to say, is there a structure that enables this functional relationship?

[00:14:58] Speaker 03:
And if so, what we're going to do is compare it.

[00:15:01] Speaker 02:
Why don't you let your opposing counsel explain that?

[00:15:04] Speaker 02:
Because if you're leaving, that's an interesting

[00:15:06] Speaker 02:
Now you're going to hear her say what the patent says.

[00:15:19] Speaker 00:
Good afternoon, Your Honors.

[00:15:20] Speaker 00:
May I please the court?

[00:15:21] Speaker 00:
I'm Ashley Moore, representing Dr. Albritton.

[00:15:24] Speaker 02:
Would you go right to that?

[00:15:26] Speaker 00:
Yes, if you would repeat your question, Your Honor.

[00:15:29] Speaker 02:
Well, I'm just saying, I'm not repeating your question.

[00:15:34] Speaker 02:
I want you to discuss what your opposing counsel just said about the failure to have any description within the patent and just relying on the illustrations.

[00:15:43] Speaker 02:
Right, yes, Your Honor.

[00:15:46] Speaker 00:
So the specification, it does disclose and it is supporting the narrow construction.

[00:15:51] Speaker 00:
We have a specification that describes the size and the position of the handle relative to other components.

[00:15:58] Speaker 00:
And this is just like the GNLE aspects in man-machine interface cases.

[00:16:02] Speaker 00:
We have figures three to six.

[00:16:04] Speaker 00:
Of course, we have figures, as most patents do, that describe exemplary handle structures that show the size and position of each of the components of the handle relative to other components.

[00:16:14] Speaker 00:
We also have the related descriptions from figures three to six that go into the detail of the one-handed three fingers, the middle, the ring, and the pinky finger that grip the handle, and then the thumb and index finger being in close proximity to the handle opening.

[00:16:30] Speaker 00:
Those are things that are claimed in the claims themselves, and of course are described in figures three to six and in the specification.

[00:16:38] Speaker 00:
We have a specification site that describes concavities to grip the handle with the claimed middle ring and pinky fingers.

[00:16:45] Speaker 00:
That's at appendix 127, column three, line 62 through 65.

[00:16:49] Speaker 00:
We have protrusions on the handle that aid the grip.

[00:16:52] Speaker 00:
That's on the same page at 365 through 67.

[00:16:56] Speaker 00:
We have the relative location of the handle opening on the handle itself.

[00:17:01] Speaker 01:
So you think all of this evidence is sufficient to show that what I think you would admit is pretty broad language about configured to and all that like which would normally not be limiting in the way you would say it is, but the structure you're doing it suggests that it actually can only be used by one hand, not that it's just configured to be used by one hand.

[00:17:24] Speaker 00:
So we agree with the narrow construction that it is configured to, made to, designed to be used by one hand and not simply capable of being used by one hand.

[00:17:34] Speaker 00:
That's the very meaning of the fingers of one hand and then the thumb and index finger of the hand, the antecedent basis.

[00:17:41] Speaker 04:
But don't the terms in the claim, starting with the claim, configured to allow and adapted to permit suggest the opposite result, the different result, the capable of that's broader?

[00:17:54] Speaker 00:
No, Your Honor.

[00:17:56] Speaker 00:
So in each of the GNLE aspects in man-machine interface cases, we had this very dichotomy.

[00:18:00] Speaker 00:
What does the word adapted to mean?

[00:18:03] Speaker 01:
And it can either mean configured to... Yeah, but the problem here is I think the board didn't look at the whole phrase, and that was, I think, a little bit of error, because it's not just adapted to.

[00:18:13] Speaker 01:
It's adapted to permit.

[00:18:14] Speaker 01:
It's configured to allow.

[00:18:16] Speaker 01:
And even if you

[00:18:17] Speaker 01:
normally think of adapted to do something as specific when it's followed by a permissive term like allow or permit.

[00:18:27] Speaker 01:
It seems to me that a traditional BRI look would not make that mandatory but permissive.

[00:18:33] Speaker 00:
So I would disagree.

[00:18:34] Speaker 00:
So in the aspects case, that claim language at issue, the adapted to claim language from aspects actually includes the word can.

[00:18:42] Speaker 00:
So it has permissive language in the very claim element construed by aspects.

[00:18:46] Speaker 00:
And that case still gave the narrow construction.

[00:18:49] Speaker 00:
So that claim element, it's at page 1340 of the aspects decision, is magnetic members... I get your position on that.

[00:18:58] Speaker 01:
That answer I don't find very convincing.

[00:19:01] Speaker 01:
Just assume I find configured to allow and adapt it to permit under a traditional BRI analysis is not mandatory, and that a traditional BRI analysis would agree with them.

[00:19:12] Speaker 01:
It seems to me what they're saying in response to some of my questions is, even though it's clear you use single hand, this was intended to be single hand, it's not sufficiently disclosed that this can only be used with a single hand by the structure.

[00:19:26] Speaker 01:
It's just pure functional language, which is not enough.

[00:19:30] Speaker 01:
What's wrong with that argument?

[00:19:32] Speaker 00:
Right, so I disagree.

[00:19:34] Speaker 00:
I do believe it is structural language, first of all, and I'd also point out the fact that if we're going to construe the words adapted to permit.

[00:19:41] Speaker 01:
Can you just answer my question, though?

[00:19:42] Speaker 01:
I get you disagree with that.

[00:19:45] Speaker 01:
My question, assuming that I don't think this is structural language, that normally without something more in the specification, I would read this more broadly.

[00:19:53] Speaker 01:
What in the specification is good enough to tie it down to your specific language beyond what I pointed to, which your friend says is purely

[00:20:01] Speaker 00:
functional language So it's the concavities that allow you to grip the handle with the middle pinky and ring finger That is the protrusions on the handle that aid in the grip We have the relative location of the handle opening compared to the other components like the working device the suction opening the guide catheter and

[00:20:22] Speaker 00:
The suction opening itself, the second one, is also placed on the handle at a specific location.

[00:20:27] Speaker 01:
So are you saying that all the structure there makes it impossible to use this device with one hand or two hands?

[00:20:34] Speaker 00:
Does it render it impossible?

[00:20:36] Speaker 00:
I would say no, not impossible.

[00:20:39] Speaker 00:
Does it render it as claimed to be used?

[00:20:41] Speaker 01:
Sufficiently clear that you're only claiming one hand and that the broadest reasonable interpretation of this, what I find is permissive language, is still a single-handed device.

[00:20:51] Speaker 02:
Correct, Your Honor.

[00:20:51] Speaker 02:
Is it fair to say that it would render it dysfunctional if somebody was trying to use two hands on it during surgery?

[00:20:58] Speaker 00:
Yes, I believe so.

[00:20:59] Speaker 00:
That was certainly the intent was for it to be a single-handed use.

[00:21:02] Speaker 00:
That's in the title.

[00:21:03] Speaker 00:
It's in the technical field of the invention.

[00:21:05] Speaker 00:
It's repeated in the summary.

[00:21:06] Speaker 00:
And of course, all of the descriptions of the preferred embodiments are for a single hand.

[00:21:11] Speaker 00:
And all of the figure four relative descriptions of the locations and distances.

[00:21:16] Speaker 02:
It seems to me that the normal course of this invention, as it's described,

[00:21:20] Speaker 02:
is to allow the surgeon to use the other hand to do other things and that I say it would render it dysfunctional because

[00:21:28] Speaker 02:
if the surgeon decided to use both hands, which would be quite difficult given the description, that it would make the surgery much more difficult to do since they'd probably use their teeth for the scalpel.

[00:21:42] Speaker 00:
Yes.

[00:21:42] Speaker 00:
The traditional way that it would happen is you'd have to have a scrub nurse helping you.

[00:21:46] Speaker 00:
And that makes it much more difficult because in a nasal surgery such as the one that the 412 patent applies to, you have to use an endoscope to be able to see up into the nasal cavity.

[00:21:56] Speaker 00:
So otherwise, you're doing this blind.

[00:21:57] Speaker 00:
in which case you want to have one hand that's operating all of the instruments and another operating the endoscope so you can see where you are and see what you're operating on.

[00:22:07] Speaker 00:
And that, of course, is also described in the specification.

[00:22:10] Speaker 00:
We have the background talking about the two-handed device and having to shift devices back and forth between the two hands as compared to the single-handed device that is claimed in the 412 patent.

[00:22:23] Speaker 00:
If there are no other questions on that, I'd like to go back to this permissive language for a moment.

[00:22:28] Speaker 00:
We talk about the permissive language being in the claims and that that somehow mandates this broader construction.

[00:22:34] Speaker 00:
As I mentioned, the G the aspects case has similar permissive language can in the very adapted to claim element.

[00:22:42] Speaker 00:
The narrow construction was still adopted.

[00:22:45] Speaker 00:
And in G and L E we have specification sites.

[00:22:48] Speaker 00:
that are in the opinion itself that talks about the handle structure enabling a user to maintain bio-canical alignment and allowing for fairly consistent application at the shoulder.

[00:23:01] Speaker 00:
So there is permissive language in the G&LE specification.

[00:23:04] Speaker 00:
In fact, I counted them up.

[00:23:06] Speaker 00:
There's eight instances of the word allow as it relates to the claimed handle.

[00:23:10] Speaker 00:
There are five instances of the word enables, one instance of the word permit in the Giannelli specification.

[00:23:17] Speaker 00:
In that case, we still ended up with the narrow construction.

[00:23:20] Speaker 00:
So a permissive language in the specification is not controlling here.

[00:23:27] Speaker 00:
And of course, this makes sense.

[00:23:29] Speaker 00:
There are lots of embodiments that are frequently described in the specifications.

[00:23:35] Speaker 00:
Not all of them are claimed.

[00:23:36] Speaker 00:
That's the script pro case that we mentioned in our red brief.

[00:23:40] Speaker 00:
So it is not always the case where every single bit and every single purpose of the invention has to be claimed.

[00:23:47] Speaker 00:
And of course, of the very significant portion of the briefing by appellant, they only mention one case on this subject.

[00:23:55] Speaker 00:
It's eye for eye.

[00:23:56] Speaker 00:
And it does not stand for the proposition that permissive language somehow mandates a broader construction.

[00:24:02] Speaker 00:
So in I4I, first of all, there's no configured to, adapted to permit or allow claim language that was at issue.

[00:24:09] Speaker 00:
Instead, I4I simply stands for the purpose of unclaimed benefits of an invention not being read into the claims.

[00:24:17] Speaker 00:
And so this is a very distinct proposition than

[00:24:21] Speaker 00:
taking claim language and construing it to have a certain purpose or exclude a certain purpose.

[00:24:27] Speaker 00:
For that reason, we also believe it's inappropriate to mandate the broader construction just based on permissive language.

[00:24:35] Speaker 00:
And I'd also like to address the fact that if we're looking at this broader claim term now, configured to permit, adapted to allow, that claim construction was not presented to the board below and it has been waived by the appellant here.

[00:24:51] Speaker 00:
So in the petition, we did not have any evidence or any request for a claim construction of the adapted to or configured to elements and then

[00:25:02] Speaker 00:
The decision asked for such briefing.

[00:25:05] Speaker 00:
We provided our proposed construction of adapted to and configured to and then in reply, we didn't see any definite construction from the appellant and we got nothing at the IPR hearing.

[00:25:19] Speaker 00:
that suggested we should be construing the words allow or construing the words permit even though apparently now on appeal it is essential for us to do so that was never anything that was discussed before the board below in which case it would be inappropriate for us to take it up here in the first instance that argument has been waived unless there any questions on that I'd like to talk about structure for just a moment

[00:25:46] Speaker 00:
Okay, so we do believe that these claims recite structure.

[00:25:51] Speaker 00:
They are constructural when you consider all of the cases that we've cited.

[00:25:55] Speaker 00:
We have the Venizia case, which claims sleeves adapted to be fitted over an insulating jacket.

[00:26:02] Speaker 00:
That court said that there's nothing wrong in terms of defining structure, in terms of the interrelationship of components or attributes they must possess.

[00:26:12] Speaker 00:
Giannelli said that the location of the handle portion relative to other components provides the structural attributes that render it a structural limitation, not a functional limitation.

[00:26:23] Speaker 00:
And then the MMI, man-machine interface, and Ulrich cases that we've cited to your honor, those adapted to elements were used to distinguish over the prior art, in which case they must have been structural in order for them to be used as distinguishing factors over the prior art.

[00:26:41] Speaker 00:
The cases hold so because they define the claims and the specification define how the parts are interconnected, show how they are structured and dimensioned, they show structural attributes of components or they give the relative location of those components.

[00:26:57] Speaker 00:
As I mentioned, the 412 does these very things.

[00:27:01] Speaker 00:
We have the adapted to language that

[00:27:03] Speaker 00:
tells us how the components are interconnected with the handle, handle opening, working device, suction control, et cetera.

[00:27:10] Speaker 00:
We have the relative dimensions and locations of components mentioned in figure four and the related descriptions.

[00:27:16] Speaker 00:
And then we have the structural attributes that say the thumb and index finger are in close proximity to the openings and that there is easy motion of the thumb and index finger toward and away from the opening.

[00:27:29] Speaker 00:
And unless your honors have further questions, I'll see.

[00:27:38] Speaker 03:
The waiver argument is belied by Appendix 2247-50.

[00:27:44] Speaker 03:
Both Venezia and Giannelli found in the specification structural relationships between components of the structure that was claimed by the invention here.

[00:27:58] Speaker 03:
You've got a relationship... Give me those page numbers again.

[00:28:00] Speaker 02:
I'm sorry.

[00:28:01] Speaker 03:
The waiver argument is belied by Appendix 2247 through 2250.

[00:28:07] Speaker 03:
The Venizia and Giannelli cases

[00:28:13] Speaker 03:
are decided upon the disclosure of structural relationships between components.

[00:28:19] Speaker 03:
I've explained the structural relationships in Gianelli.

[00:28:22] Speaker 03:
In Venizia, it was two sleeves, one adapted to fit over the other, that performed the function.

[00:28:29] Speaker 03:
Here, we've got supposedly a functional description in the spec of how a user interacts with the device, not how structure of the device interacts.

[00:28:38] Speaker 03:
That's not a structural requirement.

[00:28:42] Speaker 03:
Let's look back at what this case is really about because that's what puts it into perspective.

[00:28:48] Speaker 03:
This case, this court has five different ways of dealing with functional statements in apparatus claims.

[00:28:56] Speaker 03:
This is an apparatus claim.

[00:28:57] Speaker 03:
The board read it as if it was requiring a step

[00:29:01] Speaker 03:
in a method claim but by requiring a specific recitation of function, contrary to Enrae Schreiber.

[00:29:08] Speaker 03:
This court has instead said you look at statements of function in an apparatus claim either as a mere intended use

[00:29:16] Speaker 03:
as capable of, and we argued the first two, as made to, designed to, or configured to, which requires a disclosure of structure, either in the claim or in the specification.

[00:29:29] Speaker 03:
This Court has also had configuration versus capability cases

[00:29:34] Speaker 03:
Once again, in the cases that find configuration instead of mere capability, the court looks for a specific configuration that is discussed, and then this court has its section 112 paragraph 6 cases.

[00:29:50] Speaker 03:
in all of those cases a critical component is what what is the structure that's disclosed for performing the function and where do you find it here the only disclosure of that structure is in figures three through five that's where the board conceded

[00:30:08] Speaker 03:
pages 9 and 10 of its opinion that one finds the structure.

[00:30:13] Speaker 03:
At paragraph 15, the board floundered around and discussed things that didn't disclose a structural relationship.

[00:30:20] Speaker 03:
They discussed how a user operates the device, an angle that was non-limiting, or a structural relationship that wasn't disclosed as far as

[00:30:30] Speaker 03:
where the structure was with relationship to these claim limitations.

[00:30:35] Speaker 03:
For example, they disclosed that the hole, the suction hole, had to be in line with the suction line in the device.

[00:30:45] Speaker 03:
Didn't say anything with where on the handle that would be placed.

[00:30:50] Speaker 03:
And what it did by doing that is it left all of those supposedly structural disclosures

[00:30:57] Speaker 03:
to a functional description, and that doesn't meet Giannelli aspects man machine and in fact it doesn't meet the configuration of configuration versus capability cases and it doesn't even meet the paragraph 112 6 standard either so the bottom line is that

[00:31:20] Speaker 03:
We're not arguing that this device wasn't intended to be a one-handed device.

[00:31:24] Speaker 03:
The claim limitations, though, are what should be the focus of the analysis here.

[00:31:29] Speaker 03:
The board erred by first construing those limitations narrowly, and then by not, in applying those, comparing the structure that identified for performing the functions, but instead looking for express recitation of the device being able to perform that function in the prior art.

[00:31:48] Speaker 03:
No line of the Federal Circuit's five different lines of cases applies that approach.

[00:31:53] Speaker 03:
Thank you.

[00:31:54] Speaker 03:
We thank both sides and the case is submitted.