[00:00:26] Speaker 05: Our next case is Corning Optical Communications versus Pandoit Corporation, 2018, 1903, 05, and 2058. [00:00:37] Speaker 05: Mr. Wilcox. [00:00:47] Speaker 00: Thank you, Judge Lurie, and may it please the court. [00:00:50] Speaker 00: Jason Wilcox on behalf of Corning. [00:00:52] Speaker 00: The board's obviousness determinations in these consolidated appeals turn on a number of legal errors. [00:00:57] Speaker 00: But given the limits of time, I would like to focus on two issues today. [00:01:00] Speaker 00: The first is the board's erroneous claim construction of the fiber optic module limitation, which cuts across all three patents. [00:01:08] Speaker 00: And the second is the board's error in ruling that Corning had not established commercial success for the 938 patent. [00:01:14] Speaker 02: Let me back up to your first point. [00:01:17] Speaker 02: You say it cuts across all three patents, but I don't see you arguing that it applies to the 148 in light of the additional prior art that's cited there. [00:01:28] Speaker 00: Well, we do think it applies to the 148 patent because the board's motivation to combine analysis turned on its belief that the Smirha reference disclosed a fiber optic module. [00:01:40] Speaker 00: It says that at appendix 35, appendix 32, and appendix 33, [00:01:45] Speaker 00: And we think that under a proper construction, that SMIRHA would not qualify as a fiber optic module because the SMIRHA component is not removable and the SMIRHA component is not fully enclosed. [00:01:56] Speaker 02: But even if that's true, you've got, as it relates to the 148, you have a totally different reference that seems to satisfy those two requirements, don't you? [00:02:07] Speaker 00: Well, we do have the Coburn reference, and that reference does seem to satisfy at least the enclosed requirement. [00:02:15] Speaker 00: But once again, you have the motivation to combine inquiry that's going on. [00:02:18] Speaker 00: And in that inquiry, the board's reason for why you would combine Smerha with Coburn was, well, both of them disclose fiber optic modules. [00:02:27] Speaker 00: Now, if the board's claim construction is wrong about that, then [00:02:31] Speaker 00: uh... before things are wrong that smear hot doesn't disclose a model it's all have to go back and at the very least we do it's motivation to combine analysis to determine whether there is actually motivation to combine these two references uh... but even if the chorus concerns about the one four eight and for the two two six and they're certainly no question that the board's determination turned on [00:02:51] Speaker 00: what it means for a fiber optic module and its determination that, quote, a module is a structure encompassing enclosed or unenclosed fiber optic adapters or connectors. [00:03:02] Speaker 00: And we think that that is inconsistent with the ordinary meaning of what a module is. [00:03:06] Speaker 00: We think it's inconsistent with the consistent description and the specification. [00:03:10] Speaker 00: Every example and every embodiment across all three patents talks about a fiber optic component that is removable and separately installable. [00:03:18] Speaker 02: Well, I still want to make sure I understand [00:03:21] Speaker 02: what the claim construction arguments relate to. [00:03:24] Speaker 02: So it doesn't seem they relate to the 148, even based on the way you do your own briefing. [00:03:31] Speaker 02: But putting that one aside, the board specifically found that it does not apply to the 938 either. [00:03:39] Speaker 02: That in other words, nothing about what a module is or isn't actually is claimed. [00:03:45] Speaker 02: So if that's the case, then why does it matter if the module is completely enclosed or removable if it's not part of what is actively claimed? [00:03:55] Speaker 00: Well, I think that for the 938 patent, the module matters because it is part of what's actively claimed. [00:04:01] Speaker 00: What the claims say is they say it is a, you know, [00:04:04] Speaker 00: at least one guide system configured to receive at least one fiber optic module. [00:04:09] Speaker 00: So the guide system has to be configured to receive a module. [00:04:12] Speaker 00: It can't be configured to receive something else. [00:04:14] Speaker 00: So that limitation is doing work in that patent and is specifying what the guide system has to support. [00:04:20] Speaker 00: And as this court has said in cases like Bicon and others, you try to get meaning to every word in the claims. [00:04:28] Speaker 00: And the board is essentially just reading out the fiber optic module limitation. [00:04:31] Speaker 02: But you can't have a system that [00:04:33] Speaker 02: that could receive a fiber optic module that's not fully enclosed and yet still be configured to receive a fiber optic module? [00:04:42] Speaker 00: Well, I think that under the proper length construction of fiber optic module, no. [00:04:46] Speaker 00: If it's not configured to receive a fiber optic module that's fully enclosed and it's independently removable and installable, then it's not a fiber optic module as claimed in these patents. [00:04:55] Speaker 04: What do you mean as claimed? [00:04:56] Speaker 04: Because the claim doesn't say that. [00:04:59] Speaker 00: Well, the claim doesn't explicitly say that it has to be fully enclosed or it has to be independently installable and removable, but... It doesn't say any of that, does it? [00:05:08] Speaker 00: It doesn't say that explicitly, but for fiber optic module... So why do you say it? [00:05:12] Speaker 00: So I... Thank you, Judge Plager. [00:05:14] Speaker 00: I think that starting with the removable requirement, I think that that flows from the ordinary meaning of what a module is. [00:05:20] Speaker 00: What makes a module modular is that it's separately removable and installable. [00:05:24] Speaker 00: It's a separate component. [00:05:26] Speaker 04: Always, in every situation, every module has to meet that standard that you've just articulated. [00:05:33] Speaker 04: You couldn't have a module in any capacity anywhere in the world that doesn't meet that standard. [00:05:39] Speaker 04: Is that what you're telling us? [00:05:41] Speaker 00: Well, I don't think I have to go that broad, Judge Plager. [00:05:43] Speaker 00: I do think that's the ordinary meaning, but I don't think I have to go that broad because if you look at the specification in these patents and what a person of ordinary skill in the art would understand once they've read this specification, [00:05:52] Speaker 00: They would understand that any module that practices this invention does have to meet those requirements. [00:05:57] Speaker 04: You want us to read that requirement in from the written description, is that what you're saying? [00:06:03] Speaker 00: So I don't want you to read it in from the written description. [00:06:05] Speaker 00: I want you to do like what this court did in Pride Mobility and in Fernetix and in Erdetto, where it looked at the specification and it said every example and every embodiment of the specification has this requirement. [00:06:16] Speaker 00: That's a consistent description in the specification. [00:06:19] Speaker 00: And then it said there's no counterexamples in the specification. [00:06:22] Speaker 00: And this court concluded from that consistent usage that that is what the claims require. [00:06:27] Speaker 02: What I don't understand is if you thought this requirement was so important to the 938, why didn't you ask for claim construction as to that term for the 938? [00:06:37] Speaker 00: Well, I think we did ask for claim construction on that term for the 938. [00:06:40] Speaker 00: We had a heading in our patent owner response. [00:06:43] Speaker 00: It was called claim construction. [00:06:44] Speaker 02: But the only argument was as to the 226 or to the other one, right? [00:06:49] Speaker 00: In front of the board? [00:06:52] Speaker 00: So in front of the board, at appendix 4464, we asked the board to construe fiber optic module. [00:06:59] Speaker 00: And we said that the patent uses the term fiber optic module to describe a modular cassette within a housing and components that are disposed through the walls and extend into the interior of the housing. [00:07:11] Speaker 00: We had an entire claim construction argument on this. [00:07:13] Speaker 00: We gave the board a definition. [00:07:15] Speaker 00: The board decided that it wasn't a limitation of the claims, which we think is erroneous. [00:07:20] Speaker 00: But it isn't that we didn't present the issue to the board. [00:07:23] Speaker 00: And the same is true for the other two patents. [00:07:26] Speaker 00: At appendix 813, we offer our construction for the 148 patent. [00:07:31] Speaker 00: And at appendix 8148, we offer our construction for the 226 patents. [00:07:38] Speaker 00: And so we've talked a little bit about removable and installable. [00:07:41] Speaker 00: I'd also like to talk about the fully enclosed requirement, because I think those are two separate requirements. [00:07:45] Speaker 00: And if I win on either one, that gets me at least a remand to the board on all three patents. [00:07:50] Speaker 00: So for the fully enclosed requirement, once again, you have 50 figures in the specification across these three patents. [00:07:57] Speaker 00: And there are different specifications that show it in every instance is fully enclosed. [00:08:02] Speaker 00: And that's not a coincidence, Your Honor. [00:08:03] Speaker 00: If you look at a pending patent, [00:08:07] Speaker 00: Column 2, lines 6 through 10 of the 148 patent, and columns 2, lines 7 through 10 of the 226 patent, they talk about how one of the advantages of the invention is it makes it easier to route the connectors and the jumpers through the equipment. [00:08:23] Speaker 00: Well, Panduit itself has admitted that fully enclosed modules are what make that possible. [00:08:29] Speaker 00: In the 148 patent IPR, for example, it told the board [00:08:32] Speaker 00: that the reason a skilled artisan would have fully encased Samir Ha's panel sections was to reduce clutter. [00:08:39] Speaker 00: And that's exactly why all of the modules here need to be fully enclosed, to provide that neat routing and organization that the patent talks about as one of its advantages. [00:08:47] Speaker 00: And you can also see that in the prosecution history in Appendix 1244. [00:08:51] Speaker 00: There in the prosecution history, the board is talking about how, or we talk with the examiner about how [00:08:58] Speaker 00: It is inherent in a fiber optic module that it's enclosed. [00:09:01] Speaker 02: But didn't you admit during that prosecution that just two walls would be enough? [00:09:06] Speaker 00: So not during that prosecution, but there was an exchange in front of the board where there was a question about, well, housing. [00:09:14] Speaker 00: What exactly does it take to be a housing? [00:09:15] Speaker 00: And we did say that, at least in the abstract, a housing could have maybe only two walls or maybe just three, that it didn't necessarily have to be fully enclosed. [00:09:23] Speaker 02: So under BRI, where do we get fully enclosed? [00:09:25] Speaker 00: Well, I think that, number one, what we were saying at that statement was just in the abstract, not in the context of the specification of these patents. [00:09:33] Speaker 00: So I think as you get it from the specification of the patents. [00:09:36] Speaker 00: But if you think that the broadest reasonable interpretation of a module is it only has two walls, that is still enough to reverse the board here, because there's no dispute that the Smirha reference does not have those two walls. [00:09:51] Speaker 00: Panduit itself and its own expert told the board that Smirha uses open connections and that there's not an enclosure of any kind. [00:10:02] Speaker 02: Well, where in the spec do you get the language for the fully enclosed? [00:10:11] Speaker 00: So I think the two places you look in the specification, and I'll be frank upfront that neither of them use the exact word fully enclosed, are number one, you look at all the figures and the consistent usage, which [00:10:21] Speaker 00: This court has done in the past to look at and to say, well, when there's all these consistent examples, that's a strong indication that the claims don't cover something that does not have that property. [00:10:31] Speaker 00: And then I think that you look at column 2, line 6 through 10 of the 148 patent. [00:10:36] Speaker 00: And there's the exact same language of column 2, line 7 through 10 of the 148 patent, where the [00:10:43] Speaker 00: Patton says that one of the advantages of the invention is to provide neat routing and organization of jumper connections. [00:10:48] Speaker 00: And the way that you get that is through this fully enclosed structure. [00:10:52] Speaker 04: Mr. Wilcox, I may have missed it, but it just helped me to be sure. [00:10:56] Speaker 04: I couldn't find in the 148, the 938, or the 226 patents any specific written definition of this term. [00:11:12] Speaker 04: Am I correct? [00:11:13] Speaker 04: That is nowhere in those patents is there a specific definition by the patentee. [00:11:21] Speaker 00: I completely agree, Judge. [00:11:22] Speaker 00: There is no specific definition in the specification of these terms. [00:11:30] Speaker 00: That is exactly right, but as this Court has said in the cases that I won't repeat to you again, there doesn't have to be an explicit definition in the patent for you to look at the specification and understand what is being claimed by the description that is in the specification. [00:11:45] Speaker 00: The Court doesn't have any other questions about claim construction. [00:11:47] Speaker 00: I do want to turn just really briefly to the secondary considerations analysis. [00:11:51] Speaker 00: And when we get to the secondary considerations analysis, the board just wrote off the commercial success evidence that Corning presented as relatively weak based on a sole factor test that this court has rejected in cases like Continental Can, PPC Broadband, Polaris, WBIP. [00:12:07] Speaker 00: It didn't walk through any of the evidence. [00:12:09] Speaker 00: It just said, well, [00:12:11] Speaker 00: Your witnesses admit that the commercial success was partially responsible to this feature, or that it wasn't based just solely on this feature. [00:12:17] Speaker 00: And so that's enough to discount your evidence of commercial success. [00:12:20] Speaker 00: This court has consistently told the board that's not the proper analysis, and has remanded to the board to do the proper analysis. [00:12:28] Speaker 00: And it should do so, again, here, where the evidence is clear that the primary driving feature of this product, the reason the customers were clamoring for it, was because of the patented technology. [00:12:40] Speaker 00: That's undisputed. [00:12:41] Speaker 00: evidence from our witnesses at places like Appendix 68, 76 to 77 and Appendix 68, 58 to 59. [00:12:47] Speaker 02: Well isn't that part of the problem is what is exactly the overall technology? [00:12:52] Speaker 02: I mean the whole edge system is broader than just these drawers, right? [00:12:57] Speaker 00: So it is broader than just the specific system that is claimed in this patent but if you look at Appendix 68, 76 to 77 our witness walks through that and says that it is the patented features that help [00:13:10] Speaker 00: drive the functionality. [00:13:12] Speaker 00: He says that the massive spike in sales were a dex to all the customer's demand for the increased efficiency stemming from the system of independently removable and installable drawers that could be moved and installed from the rear. [00:13:24] Speaker 00: I see I'm into my rebuttal time. [00:13:26] Speaker 00: So if there's no further questions, I will save my time for rebuttal. [00:13:30] Speaker 05: Thank you. [00:13:30] Speaker 05: We'll give you three minutes of rebuttal. [00:13:34] Speaker 05: Mr. Malinda, good morning. [00:13:46] Speaker 01: Good morning, Your Honors. [00:13:47] Speaker 01: May it please the Court? [00:13:49] Speaker 01: I thought first we should talk about claim construction. [00:13:51] Speaker 01: And Judge O'Malley, you raised some issues relating to waiver. [00:13:55] Speaker 01: And the problem here is that there have been so many different claim constructions or variants of claim constructions in the record that it's actually sometimes hard to understand what is being argued by Corning and what isn't being argued. [00:14:07] Speaker 01: But one thing we know from their opening brief is that they did not argue that claim construction impacts the 148 patent. [00:14:14] Speaker 01: So that patent is off the table. [00:14:15] Speaker 01: They mentioned the 226. [00:14:17] Speaker 01: They mentioned the 938. [00:14:18] Speaker 01: And if you look at section 1B of their opening brief, then they try to resuscitate that in their reply brief, and that's too late. [00:14:25] Speaker 01: So that one is off the table. [00:14:27] Speaker 01: With respect to the issue of fully enclosed, as my opposing counsel conceded, they've really never argued this fully enclosed. [00:14:36] Speaker 01: They've argued various variants of enclosed or housing or other things, but never fully enclosed. [00:14:42] Speaker 01: And in fact, the board really kind of called them out on that, the oral hearing in the 226. [00:14:46] Speaker 01: And that said 8253 to 54, that, well, how many walls is enough? [00:14:51] Speaker 01: And then they said, well, at least two walls. [00:14:54] Speaker 01: So there have been all sorts of different. [00:14:55] Speaker 02: Because that relates to whether it's removable, right? [00:14:58] Speaker 01: That has to do with the enclosed issue. [00:15:01] Speaker 02: I understand that. [00:15:02] Speaker 02: Part of the reason they're arguing it has to be at least partially enclosed is so that they can remove it. [00:15:08] Speaker 01: Well, so that they can avoid. [00:15:10] Speaker 01: Or one can remove it. [00:15:10] Speaker 01: So that they can avoid smirha. [00:15:12] Speaker 01: Because they argue that's more housing. [00:15:13] Speaker 02: I understand that that was the point. [00:15:15] Speaker 01: I'm sorry. [00:15:15] Speaker 01: I'm sorry. [00:15:16] Speaker 02: That's the point for the legal strategy. [00:15:18] Speaker 02: What I'm saying is that in the patent, because I do have a hard time with your removable argument, because when it says it can be removed if desired, that doesn't say making it removable is optional. [00:15:31] Speaker 02: Because if it wasn't removable, you couldn't remove it if you desired to remove it. [00:15:36] Speaker 02: So does the point that there has to be some form of housing, some form of housing, [00:15:42] Speaker 02: go hand-in-hand with the question of whether it's removable. [00:15:46] Speaker 01: I don't necessarily believe that that's so, Your Honor. [00:15:48] Speaker 01: And maybe I can get to that in just a second. [00:15:49] Speaker 01: If I can just finish the waiver point, I'll come right back to the removability issue. [00:15:54] Speaker 01: The other issue is that removability was not even argued with respect to the 148 and the 938 either. [00:16:00] Speaker 01: I just wanted to put that out there for the court. [00:16:02] Speaker 01: That came up later in the 226. [00:16:05] Speaker 02: And so I just wanted to- So that's what I was trying to pin down. [00:16:07] Speaker 02: I get your argument on the 148. [00:16:10] Speaker 02: So let's move on. [00:16:13] Speaker 02: So then you say claim construction doesn't matter for any of these patents. [00:16:17] Speaker 02: So why specifically do you say it does not matter for the 938? [00:16:22] Speaker 01: Well, with respect to the 938, first of all, they never argued a claim construction. [00:16:26] Speaker 01: So first of all, they never argued it. [00:16:27] Speaker 02: Well, he just cited me to a place in the record where it seems like they did ask for it. [00:16:31] Speaker 01: Well, the board determined that they didn't. [00:16:32] Speaker 01: I mean, they made it. [00:16:33] Speaker 02: No, the board said it wasn't necessary. [00:16:35] Speaker 02: They didn't say you didn't ask for it. [00:16:39] Speaker 01: Well, they said that. [00:16:40] Speaker 01: Maybe we can go to the record there for the 938 patent. [00:16:42] Speaker 01: Let's go to 864. [00:16:47] Speaker 04: Several times the board said it didn't seem to them that it was necessary that they give a specific definition of the term. [00:16:58] Speaker 04: I'm sorry, Your Honor. [00:16:58] Speaker 04: Could you repeat that, please? [00:17:00] Speaker 04: Keep doing what you're doing. [00:17:01] Speaker 04: No, go ahead. [00:17:02] Speaker 02: It just says, patent owner contends that claim one requires a fiber optic module. [00:17:07] Speaker 02: Patent owner's incorrect. [00:17:10] Speaker 02: And then he cited me to the portion of the record where they actually asked for a construction or proposed a construction for fiber optic module for the 938. [00:17:19] Speaker 02: So there at least was a request or a proposal, but the board said it's not necessary because we don't think it's claimed. [00:17:26] Speaker 02: So, I mean, we ought to all at least be on the same page of why you think it doesn't matter. [00:17:32] Speaker 03: Let's go to 4464 in the appendix. [00:17:38] Speaker 03: Why don't you take our word for that? [00:17:40] Speaker 02: Yeah, I just read it to you. [00:17:42] Speaker 03: OK, Your Honor. [00:17:42] Speaker 03: Take our word for it. [00:17:43] Speaker 03: OK, I'll take your word for it. [00:17:45] Speaker 03: It's a good idea. [00:17:46] Speaker 02: Sure. [00:17:47] Speaker 02: It just says it doesn't positively recite it, so therefore we don't need to construe it. [00:17:54] Speaker 01: That's correct, Your Honor. [00:17:56] Speaker 01: And in fact, that's the case with respect to both the 938 and the 226, is that this term is not being positively recited. [00:18:02] Speaker 01: It's part of a clause, for example, such as a tray configured to receive a fiber optic module. [00:18:08] Speaker 01: So in a case like that, the fiber optic module isn't positively recited. [00:18:14] Speaker 01: The tray is. [00:18:15] Speaker 01: And so that limitation isn't doing work. [00:18:18] Speaker 01: And that's what the board was getting at. [00:18:19] Speaker 01: And that's why it was citing that case law relating to positive limitations. [00:18:22] Speaker 01: The same exact reasoning also applies to the 226 with respect to the language in that particular package. [00:18:28] Speaker 02: Yeah, so let's look at that. [00:18:30] Speaker 02: Because the 226, the claims there have a lot more to them. [00:18:35] Speaker 02: So tell me why the claim construction does not relate to the 226. [00:18:39] Speaker 01: So if we go to the 226. [00:18:52] Speaker 05: Claim 32. [00:18:52] Speaker 05: Okay. [00:19:02] Speaker 01: Claim 32. [00:19:04] Speaker 01: It says providing access to a fiber-optic module and then comprising. [00:19:09] Speaker 01: So first of all, the board found that the preamble is not limiting. [00:19:13] Speaker 01: Okay. [00:19:13] Speaker 01: And I don't believe that's been contested. [00:19:15] Speaker 01: So then [00:19:17] Speaker 01: So then the next limitation relates again with fiber optic module. [00:19:20] Speaker 01: It says, imparting a force on a fiber optic equipment tray supporting one or more fiber optic modules. [00:19:26] Speaker 01: So again, it's the same type of situation, which is that the tray is being positively recited, but not the actual fiber optic module. [00:19:34] Speaker 01: So we sort of fall into that same situation, which is like the tray configured to receive. [00:19:38] Speaker 01: It's not that term that's doing the work, it's the tray that's doing the work. [00:19:42] Speaker 01: And so there's no basis for them to then construe that particular term as they've demanded. [00:19:47] Speaker 01: It just requires a module. [00:19:48] Speaker 02: But is there anything in SMERA that shows that there is anything that could fit into the trays? [00:19:58] Speaker 01: That could fit into the trays. [00:20:01] Speaker 02: I mean, in other words, if what you're saying is you need a tray configured to accept a fiber optic module, and then you describe how that tray works, [00:20:11] Speaker 02: Is there anything in SMERA that would satisfy those requirements? [00:20:16] Speaker 01: Well, what we have in SMERHA is we have a fiber optic module. [00:20:20] Speaker 01: And so, frankly, under either construction, we win, because what we have in SMERHA is a fiber optic module that is removable. [00:20:28] Speaker 01: And the way we know that is because in Figure 7, it's depicted independently. [00:20:32] Speaker 01: So that can slide in. [00:20:33] Speaker 01: And we can also remove it with very little force, because the patent talks about how flexible that is. [00:20:38] Speaker 01: With respect to the fully enclosed limitation, [00:20:41] Speaker 01: that they want to import. [00:20:43] Speaker 01: If you look at A536 to 37, what Dr. DiCusata showed was that he drew a red line around figure nine and showed how there is an inside, which also satisfies that fully enclosed as they read it. [00:20:55] Speaker 01: So really, under either constructions, it just doesn't matter. [00:20:58] Speaker 01: So we have positive limitation. [00:21:01] Speaker 01: You can check off those two patents. [00:21:03] Speaker 01: That's not mattering. [00:21:03] Speaker 01: And then you can also check them off because we win under even their construction. [00:21:08] Speaker 02: So why, if it was so unimportant to the board, did they bother to construe the term? [00:21:14] Speaker 01: So I think what they were trying to get across is that there just isn't a basis for them to be arguing to import these claim limitations. [00:21:20] Speaker 01: And I'd like to get to both of your questions to my opposing counsel on that point. [00:21:25] Speaker 01: So first of all, I think we can all agree that there's no trace of this term [00:21:29] Speaker 01: of either fully enclosed or removable in the claims. [00:21:34] Speaker 04: But isn't the whole point of this invention that you will have a module that can be easily removed? [00:21:43] Speaker 04: Isn't that the whole point? [00:21:45] Speaker 04: Take it off the tray? [00:21:46] Speaker 01: Well, I don't believe that's the whole point, Your Honor. [00:21:48] Speaker 01: And in fact, I'd like to go to the 938 patent [00:21:50] Speaker 01: The language I'd like to direct you to is that. [00:21:52] Speaker 04: I mean, I hate to go back to something as basic as the invention that's being claimed. [00:21:57] Speaker 04: But if you look at it, it looks to me like, yeah, the point is you want to be able to remove these modules. [00:22:08] Speaker 01: Understood, Your Honor. [00:22:08] Speaker 01: But we have a definition in the spec. [00:22:12] Speaker 01: This is where I'd like to challenge my opposing counsel on this point in column 5. [00:22:16] Speaker 01: If we look at the 938, identical language in the 148, it says, [00:22:19] Speaker 01: that fiber optic modules should be construed very... What line? [00:22:23] Speaker 01: Oh, this is line 32. [00:22:26] Speaker 01: I'm sorry, 52. [00:22:27] Speaker 01: And it says, the fiber optic modules can be fiber optic adapter modules or any other type of fiber optic modules or fiber optic apparatuses, including those that support fiber optic connections. [00:22:41] Speaker 01: So that is a very broad way of looking at what a fiber optic module is. [00:22:45] Speaker 04: I think technically the board [00:22:48] Speaker 04: position seems to be supportable as a technical matter. [00:22:53] Speaker 04: But its position seems to be sort of irrelevant to what's being claimed as an invention. [00:23:00] Speaker 04: Now, unfortunately, they didn't claim it. [00:23:03] Speaker 04: And unfortunately, they didn't define it. [00:23:06] Speaker 04: But nevertheless, it looks to me like removability is somewhere in that whole concept, isn't it? [00:23:13] Speaker 01: Well, I think it was intentional that they didn't define it, that they didn't claim it because they wanted to have very broad claims. [00:23:19] Speaker 01: And now they're backtracking and saying, oh, wait a second, we've got bang on pieces of prior art and we want to get around them. [00:23:24] Speaker 01: And so I think that's really what the issue is. [00:23:25] Speaker 01: They wanted to claim this very broadly. [00:23:27] Speaker 01: Otherwise, they wouldn't have put this sentence in column five in the patent. [00:23:31] Speaker 01: And I should also say that the examiner here during prosecution of the 148 patent also discusses this. [00:23:38] Speaker 01: So I'm just going to read you a quote. [00:23:39] Speaker 01: This is from A1319 through 1320. [00:23:43] Speaker 01: where the examiner addresses this issue. [00:23:45] Speaker 01: And what the examiner said is that the broadest reasonable interpretation, which is what we apply here in this case, would include the dictionary definition for a module, which is defined by the Merriam-Webster's dictionary as, quote, any in a series of standardized units for use together. [00:24:00] Speaker 01: That's what the examiner is saying. [00:24:01] Speaker 02: Well, we've said repeatedly that BRI and the dictionary do not equate. [00:24:04] Speaker 02: It's got to be reasonable within the bounds of the spec. [00:24:09] Speaker 01: Agreed, Your Honor. [00:24:11] Speaker 02: what the invention is. [00:24:14] Speaker 01: And we just saw in the specification in column five that the patent is defining a module very broadly, just as the examiner did under the broadest reasonable interpretation, which is exactly what the board applied here. [00:24:27] Speaker 01: The board was not going to limit these claims. [00:24:29] Speaker 01: And to the extent there's any doubt about this, we have to remember that we are controlled by BRI here. [00:24:34] Speaker 01: And so if there's any doubt on this point, we should apply that standard. [00:24:38] Speaker 01: And we do have [00:24:39] Speaker 01: a reasonable basis for doing that, as did the board, which is the support here in the specification, the claims themselves, which we also have to look at because we're not supposed to be importing limitations into the spec, and then thirdly, the prosecution history. [00:24:52] Speaker 01: So we have three different types of intrinsic evidence that amply support what the board did, which was not read these limitations into the claims. [00:25:00] Speaker 02: OK, before you're done, let's talk about the objective indicia. [00:25:04] Speaker 02: I mean, there certainly was some language in the board opinion that, you know, [00:25:09] Speaker 02: has to give you pause, like, well, it's OK, because the obviousness was strong. [00:25:15] Speaker 02: So therefore, we can just discount this. [00:25:17] Speaker 02: That seems like doing exactly what we've said repeatedly you're not supposed to do. [00:25:22] Speaker 01: So maybe we could just look at the board's opinion just for a second. [00:25:26] Speaker 01: We can walk through it. [00:25:28] Speaker 01: So in the opening pages of the board's decision relating to secondary considerations, I'm around A67. [00:25:36] Speaker 01: First, the board talks about how important secondary considerations are. [00:25:39] Speaker 01: So it did not give this short shrift. [00:25:41] Speaker 01: It followed this court's guidance on how important they are. [00:25:43] Speaker 01: For example, the court says on the bottom of A67, objective evidence of non-obviousness plays an important role as a guard against the statutorily prescribed hindsight reasoning in the obviousness analysis. [00:25:54] Speaker 01: And then they cite several cases about how it must always, when present, be considered, et cetera. [00:25:59] Speaker 01: So the board was fully aware of the importance of this. [00:26:02] Speaker 01: So then if we turn to what the board actually did with respect to [00:26:06] Speaker 01: So the first thing it did on the bottom of page 68 was it said that the patent owner has established a presumption of nexus. [00:26:14] Speaker 01: And the reason is because they showed that the features in the Edge product embodied the claimed invention. [00:26:21] Speaker 02: Right. [00:26:22] Speaker 02: And then it goes on to say that the petitioner offered nothing to rebut that. [00:26:25] Speaker 02: And then it still turns around and essentially says, but it's rebutted anyway. [00:26:30] Speaker 01: Right. [00:26:30] Speaker 01: And so I think what the board could have said with a little more clarity here was that [00:26:35] Speaker 01: We didn't rebut the fact that, yes, they did the exercise of checking off each claim limitation and finding it in the edge product. [00:26:41] Speaker 01: That we did not rebut. [00:26:43] Speaker 01: So that's what the board is referring to here. [00:26:45] Speaker 01: Because later, we certainly did present rebuttal evidence on the issue of commercial success. [00:26:50] Speaker 01: And in fact, I'll give you the appendixes A4648 through A4650. [00:26:58] Speaker 01: And one of the pieces of evidence which we presented to rebut that presumption of nexus was, according to employee Mr. Kelly's testimony, that the claimed features were only partially responsible for the commercial success. [00:27:12] Speaker 02: Well, haven't we said expressly that it doesn't have to be the sole factor? [00:27:17] Speaker 01: 100%, Your Honor. [00:27:19] Speaker 01: But it doesn't have to be the sole factor. [00:27:21] Speaker 01: But you can take into account the fact that if it's only partially responsible, that may diminish its weight. [00:27:26] Speaker 01: And that's what the board did here. [00:27:27] Speaker 02: expressly say that we give it very little weight because it's not the sole factor? [00:27:32] Speaker 01: And it was entitled to do that because Mr. Kelly said there were at least 10 reasons why this device was commercially successful. [00:27:37] Speaker 01: That's from his deposition testimony. [00:27:39] Speaker 01: So he said that. [00:27:40] Speaker 05: The board said we accord the arguments regarding copying some weight. [00:27:47] Speaker 05: But they give little weight to industry praise. [00:27:50] Speaker 05: So they gave some weight. [00:27:52] Speaker 01: Well, Judge Larry, if you turn to A-70 on commercial success, it says, [00:27:56] Speaker 01: For this reason, we did not accord substantial weight to patent owners' commercial success evidence. [00:28:00] Speaker 01: And that was because Mr. Kelly testified, well, they're one of many factors here beyond the claim features. [00:28:05] Speaker 02: But again, it's expressly said we're not giving up substantial weight because it's not the sole reason. [00:28:09] Speaker 02: But we've repeatedly said it doesn't have to be the sole reason. [00:28:11] Speaker 01: It didn't say it was because it wasn't because. [00:28:13] Speaker 01: So what Conan O'Kan said was, you can't disregard completely evidence of commercial success just because it's partially responsible for the commercial success, those claim features. [00:28:24] Speaker 01: That's what the board, what the board here did, was completely consistent with Continental Can. [00:28:28] Speaker 01: It didn't throw that evidence out the window. [00:28:30] Speaker 01: It just said it isn't titled to much weight. [00:28:32] Speaker 01: That's a big difference. [00:28:33] Speaker 01: Because Continental Can says, do not disregard evidence of commercial success even when the claim features are only partially responsible for the success. [00:28:41] Speaker 01: You can't just completely disregard it. [00:28:43] Speaker 01: And that's exactly what the board did here, was not completely disregard it. [00:28:47] Speaker 01: It took it into account and said it wasn't worth much. [00:28:49] Speaker 01: And then later it said, [00:28:50] Speaker 01: It looked at all of the secondary considerations and concluded, look, you've got a very weak case of secondary considerations. [00:28:57] Speaker 01: You've got a very strong case of obviousness. [00:28:59] Speaker 01: I'm going to weigh those two and look at that. [00:29:01] Speaker 01: And it compelled a conclusion that the claims would have been unpatentable as obvious. [00:29:08] Speaker 05: Thank you, counsel. [00:29:09] Speaker 05: And as you see, your red light is on. [00:29:23] Speaker 00: Thank you, Judge Lurie. [00:29:24] Speaker 00: I'd like to start saying two quick points about waiver, and then I'll move on to talk about removability and secondary considerations. [00:29:30] Speaker 00: On the 148 patent and whether we ever raise that in our opening brief, if you look at page 33 of our opening brief, we say that claims 32 through 36 of the 226 patent and every challenge claim of the 938 and 148 patent all require a fiber optic module, and then immediately start talking about why the board erred and walked through our claim construction. [00:29:48] Speaker 00: So we were arguing about the 148 from the outset. [00:29:50] Speaker 00: What we weren't arguing in our opening brief, and what we're not arguing now, [00:29:53] Speaker 00: is that that entitles us to an outright reversal for the 148 patent. [00:29:56] Speaker 00: We said that gets us at most a remand for that patent, unlike the 226 and 938, where we think if you agree with our claim construction, that gets us an outright reversal, and there's no reason to remand. [00:30:05] Speaker 00: On the fully enclosed point, I direct the court to appendix 8236, where Panduit itself acknowledged that our claim construction, quote, [00:30:13] Speaker 00: necessarily requires an enclosed housing. [00:30:15] Speaker 00: So everyone understood below we were arguing about an enclosed housing. [00:30:19] Speaker 00: Turning to removability, I think you're exactly right, Judge O'Malley, that you need to look at what the specification is saying and that the broadest reasonable interpretation standard expressly takes that into account. [00:30:31] Speaker 00: That's what this Court has said in cases like Henry Smith and power integrations, that the broadest reasonable interpretation is not just the broadest possible interpretation, but the broadest reasonable interpretation in light of the specification. [00:30:42] Speaker 00: Now, there was also some language from column five that my colleague on the other side discussed and said that it was definitional language that undercut us. [00:30:50] Speaker 00: But if you look at the next two sentences below that, and we're looking at column five, roughly lines 52 to 61, it says right after the language he quoted that both the fiber optic modules and the equipment trays are rear installable. [00:31:07] Speaker 00: And then in the very next sentence says, both the equipment trays and the fiber optic modules supported therein [00:31:12] Speaker 00: are independently translatable about the chassis for installation, access, and removal. [00:31:18] Speaker 00: And or removal. [00:31:19] Speaker 00: Yeah, it was and or removal. [00:31:21] Speaker 00: I said and removal. [00:31:22] Speaker 00: I apologize, Your Honor. [00:31:25] Speaker 00: So as soon as it goes to what he's calling definitional language, it immediately turns around and says, but don't lose sight. [00:31:30] Speaker 00: It's got to be independently removable and installable. [00:31:32] Speaker 00: That's what we mean by fiber optic module. [00:31:38] Speaker 00: Turning to secondary considerations, [00:31:41] Speaker 00: What the board did here is exactly what this court has reversed in cases like WBIP and Polaris and PPC broadband. [00:31:48] Speaker 00: Judge Lurie, to your point about the language they used, the board used very similar language in those three cases. [00:31:55] Speaker 00: And this court still said that it needed to be remanded and it needed to do the proper analysis and show that it was actually considering our secondary considerations and not just writing it off because of a belief that it had to be the sole factor. [00:32:10] Speaker 00: And the evidence wasn't rebutted here. [00:32:12] Speaker 00: Now, I think that you have to remand anyway, because the board didn't engage in any of the analysis that he was talking about about these factual findings. [00:32:19] Speaker 00: That's part of the problem. [00:32:20] Speaker 00: So under the APA, you're missing the reason decision making. [00:32:23] Speaker 00: But if you look at appendix 68, 76 to 77, our vice president talks about how the massive spike in sales was due to that. [00:32:32] Speaker 00: He talks about how it was the primary selling point. [00:32:34] Speaker 00: We have appendix 5969 where customers were quote clamoring for the technology. [00:32:39] Speaker 00: This is not a case where [00:32:41] Speaker 00: The evidence was given little weight. [00:32:44] Speaker 00: And the board properly looked at it and said, oh, well, a host of factors were out there. [00:32:47] Speaker 00: And we can tell that all these other things really matter, not the patented technology. [00:32:50] Speaker 05: Counsel, as you can see, your red light is on. [00:32:53] Speaker 05: So thank you. [00:32:54] Speaker 00: Thank you, Judge Dorey. [00:32:55] Speaker 05: The case will be submitted. [00:32:57] Speaker 05: And we have the same parties in the next case. [00:33:01] Speaker 05: And I would like you to switch so we are in the proper position.