[00:00:05] Speaker 03: We have one case on the calendar this morning, which we're going to have argued as two, an appeal and a cross-appeal. [00:00:14] Speaker 03: And we will not ask you to switch places unless you want to. [00:00:25] Speaker 03: The cases are Chamberlain Group versus the ITC and Tectronic. [00:00:32] Speaker 03: 2018, 2002, 2191, Ms. [00:00:37] Speaker 03: Vidal. [00:00:42] Speaker 00: Thank you, Your Honor. [00:00:44] Speaker 00: May it please the Court, Kathy Vidal on behalf of Chamberlain. [00:00:47] Speaker 00: There are two issues in the first appeal I'd like to address today. [00:00:50] Speaker 00: The first is the claim construction of the terms automatically indifferent, where the Commission imported limitations into those claims. [00:01:00] Speaker 00: an elevated policy over the contextual interpretation of the claims in violation of Smith-Kline. [00:01:07] Speaker 00: And the second relates to whether this court should remand for a 101 consideration should this court correct the claim construction and find infringement. [00:01:16] Speaker 05: On page 29 of the red break, the ITC says that there is no dispute that the accused TTI products infringed the 319 patent under the construction [00:01:28] Speaker 05: waltz on soil paths and disavow. [00:01:31] Speaker 05: Do you agree that if there's no disavow, TTI's products infringe? [00:01:36] Speaker 00: I do, and that's for the 319 patent, is that correct? [00:01:39] Speaker 00: Yeah. [00:01:39] Speaker 00: I believe this appeal that we're speaking of now is a 336 patent, but I do agree with that. [00:01:46] Speaker 04: Okay. [00:01:47] Speaker 04: I hope you're also going to address this other issue which the A.J. [00:01:53] Speaker 04: decided in your favor about the monitoring of these one plans. [00:01:58] Speaker 00: Yes, Your Honor. [00:01:59] Speaker 00: I will address that as well. [00:02:00] Speaker 00: If you'd like, I can address that first. [00:02:02] Speaker 04: Whatever you want. [00:02:03] Speaker 00: OK. [00:02:04] Speaker 00: OK. [00:02:04] Speaker 00: So why don't I start with a 101 issue, and then I'll move on to claim construction, and I'll address that as well as the other two terms. [00:02:09] Speaker 05: How does Judge Chen's recent opinion impact? [00:02:13] Speaker 00: Judge Chen's recent opinion in the Chamberlain case? [00:02:16] Speaker 00: Uh-huh. [00:02:17] Speaker 00: So interestingly, that is a case where Chamberlain is going to move for en banc review, because in that case, it actually very much aligns with this case. [00:02:26] Speaker 00: In both cases, [00:02:27] Speaker 00: There were findings below that the patent claims were non-obvious. [00:02:32] Speaker 00: In that case, the jury also found the patent claims novel. [00:02:37] Speaker 00: At the same time, in that case, [00:02:39] Speaker 00: the court decided to make those ALICE step two decisions itself, the factual findings itself. [00:02:45] Speaker 00: And that is an issue on which Chamberlain is going to seek additional review. [00:02:48] Speaker 00: In this case, we've got the same scenario where the ITC, the ALJ actually made a determination on 101. [00:02:57] Speaker 00: That was vacated by the commission. [00:02:59] Speaker 00: So as that issue rises to this court, under Alice step one, that's a legal issue. [00:03:04] Speaker 00: And this court could certainly find that the claims are patent eligible under 101 without remanding. [00:03:11] Speaker 00: But if this court does move to a step two inquiry, like the court did in the prior case, it's really incumbent upon this court to remand the case for further consideration under MyMail, under Attricks, and under the series of cases that MyMail cites. [00:03:26] Speaker 00: including Atlantic thermoplastics. [00:03:30] Speaker 05: That is correct. [00:03:32] Speaker 00: It's incumbent in the eyes of Chamberlain, and that's going to be the issue of the en banc and panel rehearing petition that will be submitted in two weeks in that case. [00:03:45] Speaker 00: That is correct that both TTI and the ITC have stated that this court should automatically remand for consideration. [00:03:56] Speaker 00: of the 101 issue. [00:03:58] Speaker 00: It is Chamberlain's position that remand isn't necessary, but that's only if this case resolves the 101 issue on Alice step one. [00:04:06] Speaker 00: If this court does move to Alice step two, then Chamberlain would agree with the ITC and the commission that those factual findings need to be determined for the first instance by the trier. [00:04:16] Speaker 04: Okay. [00:04:17] Speaker 04: I think you do well to turn to the infringement issue. [00:04:21] Speaker 00: Thank you, Your Honor. [00:04:23] Speaker 00: In terms of the infringement issue, there's three claims at issue. [00:04:26] Speaker 00: The first one is automatically. [00:04:28] Speaker 04: But talking about the monitoring thing, it seems to me that the A.J. [00:04:33] Speaker 04: got that wrong because the voltage input is not a sole determinant of force, right, because you also need current. [00:04:43] Speaker 04: So in terms of... Wait, wait, answer my question. [00:04:45] Speaker 04: Is that true? [00:04:47] Speaker 04: That the voltage... The voltage is not the sole determinant of force that you also need to measure current. [00:04:55] Speaker 04: Isn't that correct? [00:04:56] Speaker 00: It's a factor. [00:04:57] Speaker 00: It's a... It is some evidence of the force. [00:05:00] Speaker 00: Voltage is a factor. [00:05:01] Speaker 00: It's a factor. [00:05:02] Speaker 00: It's not a sole determinant. [00:05:04] Speaker 00: It's not a factor. [00:05:05] Speaker 00: There are other factors that are considered in the equation. [00:05:07] Speaker 00: That's correct. [00:05:08] Speaker 04: So voltage is not the determinant. [00:05:12] Speaker 00: Voltage is a factor that is considered, and it is an indication of the force. [00:05:19] Speaker 00: And so it meets the claim limitations because it's an indication. [00:05:23] Speaker 00: It's not the only indication. [00:05:25] Speaker 04: The force depends on other factors as well. [00:05:29] Speaker 04: It's not a one to one correspondence between voltage and force, right? [00:05:33] Speaker 00: there is a relationship between voltage and force but you're right the other parameters could change and that could impact the reading of the force but it is it is a factor that is indicative of force depending upon whether the other the other factors are set. [00:05:57] Speaker 00: So voltage [00:05:59] Speaker 00: It's one of the factors that the ALJ found related to force. [00:06:08] Speaker 03: Is there an equation where a constant is involved? [00:06:18] Speaker 00: In terms of the relationship between voltage, there are other parameters as well that can vary. [00:06:23] Speaker 00: And there's not a one-to-one correspondence, but that's not required by Reed. [00:06:30] Speaker 04: Do you agree that if we determine that voltage doesn't correspond to force within the meaning of the claim that there's no infringement? [00:06:38] Speaker 00: If this court agrees that voltage does not meet the claim limitation, if it doesn't meet the limitation of the claim, then of course there's no infringement. [00:06:52] Speaker 00: Moving on to automatically, which is one of the other terms that the ALJ construed, for automatically the court construed that as always or guaranteed. [00:07:03] Speaker 00: In terms of that construction, the court determined that automatically had to have some meaning in the claim, and that if the court did not construe, if the ALJ did not construe the term as always or guaranteed, then that term would be superfluous and would have no meaning. [00:07:18] Speaker 00: That is not the case if the term automatically were removed from the claim term Then the claim term would basic basically read on the prior art because the entire claim could be performed manually So that basis on which the court determined that automatically meant always are guaranteed had no basis the second basis on which the court determined that automatically meant always and guaranteed was because the court determined that for automatically [00:07:46] Speaker 00: to happen in response to a parameter. [00:07:49] Speaker 00: It had to always happen in response to a parameter, or there wouldn't be the appropriate relationship. [00:07:55] Speaker 00: And on that, I'd like to direct this court to an analogy. [00:07:57] Speaker 00: In a garage door opener, everyone would concede that the garage door opener opens the garage door automatically. [00:08:05] Speaker 00: You push the clicker, and the garage door opens. [00:08:08] Speaker 00: You push it again, and it returns. [00:08:10] Speaker 00: But it doesn't happen all the time. [00:08:12] Speaker 00: In fact, in the 1990s, [00:08:14] Speaker 00: There were beams installed in... Mechanically. [00:08:18] Speaker 05: It opens the door mechanically. [00:08:21] Speaker 05: It doesn't necessarily open the door automatically. [00:08:26] Speaker 00: When the button is pushed, the response is an automatic response where, yes, mechanically the garage door opens or closes depending upon its initial position. [00:08:35] Speaker 00: So that is a ordinary definition of the term automatically. [00:08:39] Speaker 00: It doesn't have to open it all the time to meet the automatically definition. [00:08:44] Speaker 00: And it's the same corollary here. [00:08:46] Speaker 00: For example, with the garage door. [00:08:49] Speaker 05: If you push the button, manually push the button, isn't that manual? [00:08:54] Speaker 00: The signal is an automatic signal in the analogy. [00:08:57] Speaker 00: And it's the same here, where it's less automatic. [00:09:04] Speaker 00: And I would submit, Your Honor, that it's less automatic than automatically is used in the claims. [00:09:08] Speaker 00: In the claims, the term automatically is used to update the characteristic force. [00:09:13] Speaker 05: And in that case, there's even- It has to deal with some intervening obstruction, and it automatically [00:09:24] Speaker 05: then does not continue to move. [00:09:27] Speaker 05: Isn't that correct? [00:09:29] Speaker 00: In my analogy, that's correct. [00:09:31] Speaker 05: As opposed to your initial description was someone pushes the button. [00:09:37] Speaker 00: Correct. [00:09:38] Speaker 00: And the purpose of using the analogy is that in the claim term, the term automatically is used to connote that the process, the force is automatically updated as you go forward, but it doesn't have to automatically increase every single time. [00:09:55] Speaker 00: It doesn't have to do it always, and that doesn't have to be a guaranteed result. [00:09:59] Speaker 00: And the reason for that is, and the patent discusses this, that there may be certain circumstances in which you would not want [00:10:06] Speaker 00: the force characteristic to update. [00:10:09] Speaker 00: For example, you might have a very heavy garage door, and that may be shaking as it descends. [00:10:16] Speaker 00: And in that case, you'd want to postpone that analysis. [00:10:19] Speaker 00: So the fact that automatically doesn't happen every single time is not a basis to import limitations into the claim and to say that the term automatically has to mean always in guaranteed versus without human interaction. [00:10:33] Speaker 03: Guarantee rebuttal time. [00:10:34] Speaker 03: We can save it for you. [00:10:35] Speaker 03: Thank you, Your Honor. [00:10:39] Speaker 03: Thank you. [00:10:42] Speaker 02: May it please the Court, discussion so far is focused almost entirely on claim construction. [00:10:46] Speaker 02: However, the ALJ was never asked to actually construe these claims. [00:10:49] Speaker 02: Both parties essentially relied on the plain and ordinary meaning of claim terms, and so what the ALJ did was apply the plain and ordinary meaning in the context of this patent. [00:11:02] Speaker 02: In particular, so let me say that this is not a case for de novo review. [00:11:08] Speaker 02: It's review for substantial evidence regarding the second part of the infringement analysis. [00:11:14] Speaker 02: And there is substantial evidence to support both the commission's findings regarding this term different, the application of that term, and the application of the automatically phrased. [00:11:23] Speaker 02: I want to start with different because we've heard a lot about automatically so far. [00:11:27] Speaker 02: Chamberlain's own expert admitted that the accused products do not use different processes to increase the characteristic force value or decrease that value. [00:11:39] Speaker 02: Chamberlain's expert admitted they use the same function, using essentially the same contents of the lines of code, to both increase and decrease the force value when that first or second condition is met. [00:11:51] Speaker 02: And that's in the appendix pages 13073 [00:11:55] Speaker 02: To 7-7, hearing transcript 181, line 1, 183, line 9, page 189, line 7 to 19, and page 196, line 12 to 197, line 1. [00:12:08] Speaker 02: So these admissions constitute substantial evidence that the accused products do not use different processes for increasing or decreasing these force values. [00:12:18] Speaker 02: Chamberlain didn't discuss the conditions that the differences that they allege make the processes different, but I want to briefly go through them. [00:12:28] Speaker 02: For example, Chamberlain alluded, and it's brief, that the timer is somehow a difference between these processes. [00:12:35] Speaker 02: The timer, however, only predates or starts the processes. [00:12:40] Speaker 02: Yeah, it starts the process, but it's not part of the process itself. [00:12:43] Speaker 02: And again, their experts admit to that. [00:12:46] Speaker 02: Chamberlain referred to the motor phases. [00:12:49] Speaker 02: Those are also conditions that start the processes. [00:12:52] Speaker 02: They are not part of the process itself. [00:12:54] Speaker 02: And as for the offsets that Chamberlain discusses in the briefs, those are added to the force value after it's determined. [00:13:00] Speaker 02: It's not part of the calculation of the force value. [00:13:04] Speaker 02: Let me then turn to the substantial evidence that supports the Commission's findings that the QIES product do not automatically increase or automatically decrease the force value. [00:13:16] Speaker 02: What counsel left out today is that the claim refers specifically to increasing or decreasing the force value when a specific condition is met. [00:13:26] Speaker 02: And these are algorithm-based claims. [00:13:29] Speaker 02: For example, I can figure 6, which is on Appendix Page 721, and discuss in Column 7 and 8 of Appendix Page 737. [00:13:39] Speaker 02: Algorithms are basically sets of instructions, maybe mathematical operations, or if-then statements, or so forth. [00:13:45] Speaker 02: So in that context, when a condition is met triggers a specific result, and Fig. [00:13:50] Speaker 02: 6 gives an example of that. [00:13:54] Speaker 02: In this case, however, Chamberlain admits on page 58 of its reply brief that applying the same monitored parameter and condition to the same determination process can yield contradictory results. [00:14:09] Speaker 02: Its expert, Dr. Doreen, also testified that the characteristic force value may increase, decrease, or stay the same when the same conditions apply to the same determination process. [00:14:20] Speaker 02: And that's in the appendix pages 130, 78 to 80, hearing transcript, page 200, line 3 to 203, line 15, and 204, line 1 to 207, line 20. [00:14:32] Speaker 02: So these admissions, again, constitute substantial evidence. [00:14:36] Speaker 02: that the accused products do not increase or decrease the force value when that specific condition is met. [00:14:45] Speaker 02: We can talk a little bit about Broadcom because that was discussed at length by the ALJ. [00:14:51] Speaker 02: Broadcom is not a case about claims instructions as much as it is about infringement. [00:14:56] Speaker 02: And it simply stands for the proposition that if you find infringement, then finding a non-infringing mode of operation or non-infringing feature does not defeat infringement. [00:15:06] Speaker 02: But it's worth noting that even in Broadcom, it recognizes that some claims can use broad language like corresponding. [00:15:13] Speaker 02: Some claims can use more specific language like equal to. [00:15:16] Speaker 02: This is a case that's closer to an equal to type situation. [00:15:20] Speaker 02: When a condition is met, then a specific result follows. [00:15:24] Speaker 02: Chamberlain, however, as I said, admits that different results can follow from the same conditions, the same parameter, using the same process. [00:15:33] Speaker 04: Before you run out of time, would you address the monitoring issue that we discussed? [00:15:39] Speaker 04: It seems to me it's a pretty good argument that the commission got that one wrong, and that voltage does not correspond to force. [00:15:48] Speaker 02: Right. [00:15:48] Speaker 02: First of all, we have two independent bases for non-infringement, which I just discussed. [00:15:53] Speaker 02: So regardless of how the monitor parameter comes out, all right. [00:15:59] Speaker 02: But as far as the monitor parameter specifically, that parameter is what's called the UC work step. [00:16:05] Speaker 04: Voltage does not correspond to force, right? [00:16:08] Speaker 02: But in this case, what Chamberlain has identified is that parameter is the motor phase. [00:16:13] Speaker 02: It's a phase of a motor. [00:16:14] Speaker 02: It's an instruction in the code. [00:16:17] Speaker 02: Now that instruction may correlate to a voltage. [00:16:20] Speaker 04: I'm trying to answer one question. [00:16:21] Speaker 04: Voltage does not correspond to force because force depends on current as well, right? [00:16:29] Speaker 02: Yes, but there is, if not a one-to-one correspondence, at least a general correspondence. [00:16:35] Speaker 02: With four given voltage and everything else staying the same, there can be a correspondence. [00:16:39] Speaker 04: It doesn't affect, but it doesn't correspond to. [00:16:44] Speaker 02: I would agree it affects. [00:16:45] Speaker 02: And I think affects can indicate a correspondence if there's a general correlation. [00:16:54] Speaker 02: In the time I have left I just say on the 101 issue this court's held many times that the Commission does not reach a final determination on an issue that's not going to affect the outcome of the violation finding then the proper procedure is to remand the case back to the Commission to make a determination of the issue if it reverses the violation Thank you very much. [00:17:15] Speaker 03: Thank you, Mr. Berkshire Mr.. White or tectronic [00:17:26] Speaker 01: Good morning, Your Honors, and may it please the Court. [00:17:28] Speaker 01: Let me pick up with your questions, Judge Dyke, on the alternative grounds for affirmance. [00:17:33] Speaker 01: So I think you hit the nail on the head with that one, is the thing that Chamberlain identified as the monitored parameter is not indicative of force. [00:17:42] Speaker 01: And in fact, it's not even a monitored voltage. [00:17:45] Speaker 01: So the thing that they identified as the monitored parameter is actually a number that just counts up from 0 to 17 every time the door opens or closes. [00:17:54] Speaker 01: It's a number that goes 0 to 17 each and every time, regardless of whether the door is going up or going down. [00:18:00] Speaker 01: It indicates, as Mr. Brescher said, a phase of the motor. [00:18:03] Speaker 04: Well, the argument though, putting that to one side, is that voltage corresponds to force, right? [00:18:09] Speaker 01: I don't even think that's the argument. [00:18:10] Speaker 01: I think that they're trying to say is that in the judge, if you look at the initial determination from the judge, is you have some indication, some indication of what the force may be based upon the number of the UC work step. [00:18:23] Speaker 01: It's not even based upon a monitored voltage. [00:18:26] Speaker 01: He's just saying you have some idea as to what the force may be. [00:18:29] Speaker 01: But there's evidence and testimony from both experts that there's no correlation between the number of the UC work step, which just tells you about the motor phase, [00:18:38] Speaker 01: versus the force applied. [00:18:40] Speaker 01: We covered that in our brief. [00:18:41] Speaker 01: Dr. Doreen admitted that. [00:18:43] Speaker 01: He admitted it's just that was Chamberlain's expert. [00:18:45] Speaker 01: It's just a number that sequences regardless of the direction of travel. [00:18:49] Speaker 01: The numbers never change. [00:18:50] Speaker 01: They always go 0 to 17. [00:18:52] Speaker 01: And he said that there's established in the code at the time of the writing. [00:18:55] Speaker 01: And there's just simply no correlation whatsoever between the UC work step and the amount of force applied at any given time. [00:19:02] Speaker 01: So I think you're right on the money there in that the commission got that one wrong. [00:19:05] Speaker 01: And that's a separate independent basis to affirm the decision in our favor. [00:19:11] Speaker 01: Any other questions on that for you, Your Honor? [00:19:16] Speaker 01: Sounds like no. [00:19:17] Speaker 03: Please proceed. [00:19:18] Speaker 01: Thank you. [00:19:20] Speaker 01: So I want to then turn to the issues of both the different and automatic, which are the other two issues that were raised in this case. [00:19:27] Speaker 01: I think Mr. Brescher addressed the issue of the difference in the code, being no difference at all that it's the exact same function that performs the process of either increasing or decreasing every time you go through there. [00:19:39] Speaker 01: He also addressed the fact that the UC work step number and the timers are issues that go into the condition, whether the condition's met, [00:19:45] Speaker 01: They have nothing to do with the actual process for increasing or decreasing. [00:19:49] Speaker 01: The only other thing I wanted to touch on there was there was another issue that was raised in Chamberlain's reply brief for the first time, and this was on page 67, that they say the accused processes use different sources for computing the offset. [00:20:02] Speaker 01: It wasn't something that they raised before the ITC, and it wasn't something they raised in their opening brief, so we think that they've waived or forfeited that argument. [00:20:09] Speaker 01: But if you have any questions or concerns about that, I think they can be remedied very easily. [00:20:14] Speaker 01: The excess force threshold value is what is actually relevant to the offset. [00:20:22] Speaker 01: The offset is not used [00:20:24] Speaker 01: to calculate the characteristic force value, which is at issue here. [00:20:27] Speaker 01: So if you look at the claims, there's actually two different things. [00:20:30] Speaker 01: You increase or decrease the characteristic force value. [00:20:34] Speaker 01: And then a later requirement in the claim is that you then calculate an excess force threshold value. [00:20:40] Speaker 01: So there are two different things. [00:20:42] Speaker 01: And Chamberlain's expert before the ITC said that the offset value is only relevant to calculating the excess force threshold value. [00:20:51] Speaker 01: It had nothing to do with the characteristic force value. [00:20:53] Speaker 01: So you can see the difference in appendix 744, column 21, lines 1 through 2. [00:21:00] Speaker 01: That's where it deals with what that actual excess force threshold value is. [00:21:05] Speaker 01: And then if you look at Chamberlain's pre-hearing brief, which is appendix 9699, there they say that only after the expected value is loaded into the force back data is the excess force threshold generated by summing force back to the offset. [00:21:21] Speaker 01: So at Appendix 9699, Chamberlain said that the offset is used to calculate the excess force threshold to not use for the characteristic value here. [00:21:30] Speaker 01: So I just want to clear that up and make sure that there's no confusion about that. [00:21:34] Speaker 01: Both experts agreed on this. [00:21:36] Speaker 01: If you look at Appendix 27222, that's where Chamberlain's expert, Dr. Dyreen, explained how the offset's used. [00:21:43] Speaker 01: and it's only used for the excess force threshold. [00:21:46] Speaker 01: And then our expert, Dr. Heppi, testified the same at Appendix 29363. [00:21:50] Speaker 01: I want to turn now to the automatically term. [00:21:55] Speaker 01: We believe that Chamberlain's interpretation without human intervention obviously was waived. [00:22:00] Speaker 01: As Mr. Brescher said, it wasn't an issue that was raised below, wasn't addressed below, and therefore they waived it. [00:22:06] Speaker 01: In their reply brief at page 49, Chamberlain argues that it did contest the meaning of automatically, and it includes a passage from its pre-hearing brief, which they cite to as Appendix 9698. [00:22:18] Speaker 01: But if you look, I think that argument and that citation are misleading, because the very next sentence in their pre-hearing brief, again at Appendix 9698, says, the Federal Circuit has ruled time and again that infringement does not need to occur all of the time. [00:22:33] Speaker 01: And then the citation that they have is to Broadcom and others. [00:22:37] Speaker 01: So it's clear that in that portion, that it's pre-hearing brief, Chamberlain was advancing its part-time infringement argument. [00:22:44] Speaker 01: It wasn't raising the claim construction issue presented here for the first time. [00:22:47] Speaker 01: And it certainly wasn't proposing the claim construction that we've seen here for the first time in this appeal. [00:22:52] Speaker 01: So again, we believe that issue has been waived, has been forfeited, and even the section that Chamberlain cites in its reply brief does not support that it preserved that issue. [00:23:01] Speaker 01: Unless there's any other questions, I'm going to cede back the rest of my time. [00:23:05] Speaker 03: Thank you, Mr. White. [00:23:06] Speaker 03: Thank you. [00:23:07] Speaker 03: Ms. [00:23:07] Speaker 03: Vidal has a couple minutes for bottle time. [00:23:14] Speaker 00: Thank you, Your Honor. [00:23:14] Speaker 00: I'd like to address three points. [00:23:16] Speaker 00: I first wanted to get to the point about voltage and force and the relationship. [00:23:20] Speaker 00: And the reason I struggle with that question is because it's not force per se, it's force of the actual motor of the garage door opener. [00:23:27] Speaker 00: And if you look at the determination by the ITC, the ITC found credible testimony, and I'm reading from APPX 152 from both parties, explained that if one is given the value of [00:23:41] Speaker 00: UC work step, which was the parameter in the claim, one would have some idea of the current over time, which is applied to the motor, and thus an idea of the average force. [00:23:52] Speaker 00: So this was a determination made based on testimony before the ITC to which we would ask. [00:23:58] Speaker 00: That's correct. [00:23:58] Speaker 00: And that's all that's required by the claim. [00:24:02] Speaker 00: The claim says monitoring at least one parameter that corresponds to the force. [00:24:05] Speaker 00: So the current going into the motor does impact the force of that motor. [00:24:11] Speaker 00: And that is what the ITC determined. [00:24:14] Speaker 04: Yeah, but impact and correspond don't mean the same thing. [00:24:17] Speaker 00: There are other parameters to the point about are there other inputs, whether they're constants or otherwise there are, but there was a correspondence and that's what the ALJ found and that's what the commission affirmed. [00:24:30] Speaker 00: The two other points I wanted to address were just raised by Mr. White. [00:24:34] Speaker 00: One of them related to this so-called late discussion about the definition of automatically [00:24:40] Speaker 00: That arose in a very interesting way procedurally where it sounded like the position that was being taken initially by TTI was that there was no infringement because there was only infringement sometimes. [00:24:52] Speaker 00: So it sounded like an infringement position. [00:24:55] Speaker 00: It evolved into a claim construction position. [00:24:58] Speaker 00: CGI all along, once it evolved, took the position that automatically meant [00:25:01] Speaker 00: without human intervention and that was raised to the ITC not first time on appeal here. [00:25:06] Speaker 00: As to the code and whether it is different or not, if this court turns to the yellow brief at pages 65 to 66, it's very clear that the code is different when it actually comes to the process for increasing and decreasing the parameter. [00:25:21] Speaker 00: As to the point about [00:25:23] Speaker 00: The offset, it was mentioned here that that was first raised on appeal. [00:25:29] Speaker 00: That is not the case. [00:25:30] Speaker 00: If this court turns to the yellow brief at 68, you'll actually see an exhibit that was used below. [00:25:34] Speaker 00: And at the very bottom portion of that exhibit, you will see that the offset is different in the increasing determination process versus a decreasing determination process. [00:25:44] Speaker 03: Thank you, Ms. [00:25:45] Speaker 03: Vidal. [00:25:46] Speaker 03: Thank you. [00:25:46] Speaker 03: We will now move to the cross-appeal. [00:25:50] Speaker 03: And we'll hear from Mr. White. [00:25:57] Speaker 01: Thank you, Your Honors. [00:25:59] Speaker 01: Claim terms need not be given their plain and ordinary meaning when the patentee disavows the full scope of the claim term in the specification or during prosecution. [00:26:11] Speaker 05: In the grain break at 16, you say the parties fully briefed and argued the construction of the term wall console. [00:26:22] Speaker 05: Where? [00:26:25] Speaker 05: We looked in the record and I don't see a full... [00:26:31] Speaker 01: So we did. [00:26:33] Speaker 01: We had a claim construction process before the ITC. [00:26:38] Speaker 01: The judge issued a claim construction ruling finding that the law counsel required the passing of the effector. [00:26:45] Speaker 01: I'll see if I can find that for you in the appendix. [00:26:47] Speaker 01: And maybe I'll ask Will if he could look for that in the appendix. [00:26:51] Speaker 01: So we did argue we had a full claim construction hearing before the ITC judge. [00:26:56] Speaker 01: He issued a ruling on that. [00:26:57] Speaker 01: And then we moved for summary determination of no infringement based upon that. [00:27:01] Speaker 01: That was appealed to the commission. [00:27:02] Speaker 01: And then the commission changed that decision, said the wall counsel did not have to include the passive infrared detector. [00:27:08] Speaker 01: And then we were back before the judge and then had a full hearing on it. [00:27:11] Speaker 05: What was the effect of the board recently issuing a final written decision finding all but two of the dependent claims at issue invalid? [00:27:24] Speaker 05: So what is the effect for this appeal? [00:27:27] Speaker 05: Annie, could you mention it? [00:27:29] Speaker 01: Correct. [00:27:29] Speaker 01: So I think the issue on this appeal is that we've got still, they're going to try to say that the original version of the product infringed based upon the wired connection. [00:27:44] Speaker 01: I think that the board decision deals with some of that, but they left two claims in play, claims eight and 16 that required power to go from the head unit to the law counsel. [00:27:53] Speaker 01: And that did happen in the original version of the product. [00:27:56] Speaker 01: So I think for the redesigned product, which the commission has now found does not infringe, I don't think that the board decision really affects that. [00:28:05] Speaker 01: But for this appeal, dealing with the original version of the product, it still has some effect. [00:28:10] Speaker 01: That is still in play. [00:28:11] Speaker 03: Now, your appeal here is to the effect that wall counsel [00:28:18] Speaker 03: includes an passive infrared detector. [00:28:23] Speaker 01: Correct. [00:28:24] Speaker 03: And your justification for that is? [00:28:26] Speaker 03: Our justification is... We don't add language to claims. [00:28:31] Speaker 01: Correct. [00:28:31] Speaker 01: Understood. [00:28:32] Speaker 01: But if you look at the cases like PolyAmerica, like Ultimate Pointer, where you've got repeated statements throughout the specification saying that something is required, saying that something distinguishes the claims over the prior art, those statements, in effect, result in a disavowal of the claim scope. [00:28:50] Speaker 01: And we have that here. [00:28:51] Speaker 01: We have every single embodiment referring to a wall council with a passive infrared detector. [00:28:56] Speaker 01: We have the background of the invention disparaging not a design that didn't have an infrared detector, but disparaging a design that had an infrared detector in the head unit. [00:29:06] Speaker 01: So the distinction was not between no infrared detector and an infrared detector. [00:29:10] Speaker 01: The distinction was whether you have it in the head unit or in the wall console. [00:29:14] Speaker 01: So if you look the abstract, for example, you can start at the beginning of the pattern. [00:29:17] Speaker 01: The abstract. [00:29:18] Speaker 01: mentions that an infrared detector is in the wall console. [00:29:23] Speaker 01: If you go to the background of the invention, it disparages prior systems that had the infrared detector in the head unit. [00:29:29] Speaker 01: It talks about the advantages of having it potentially in the wall console. [00:29:32] Speaker 01: The summary of the invention, let's start there. [00:29:35] Speaker 01: The very first sentence of the summary invention says, a passive infrared detector for a garage door opener. [00:29:42] Speaker 01: And then it goes on to say that the infrared detector is contained in the wall control unit. [00:29:48] Speaker 01: So if you are looking at this, what does this patent cover? [00:29:52] Speaker 01: You look at the summary of the invention, the very first words, the very first sentence, emphasize the importance of this passive infrared detector. [00:29:58] Speaker 01: If you look at the description of the drawings, [00:30:01] Speaker 01: It says, figure one is a perspective view of a garage, including a movable barrier operator, having associated with it a passive infrared detector in a wall control unit, and embodying the present invention. [00:30:13] Speaker 03: Now, there is a patent in this family with, I think, the same spec that had infrared detector in the title. [00:30:24] Speaker 03: And that is not in this title. [00:30:26] Speaker 03: What is the effect of that? [00:30:28] Speaker 01: That's correct. [00:30:29] Speaker 01: And that's the parent patent. [00:30:30] Speaker 01: It actually had it in the claims as well. [00:30:33] Speaker 01: So I don't think that that has an effect here in meaning that it can't. [00:30:38] Speaker 01: That doesn't mean that the claims here can't require it. [00:30:41] Speaker 01: Excuse me. [00:30:42] Speaker 01: And in fact, there's case law that suggests that where you have in a parent application a term mentioned in every claim, and then you take it out of [00:30:53] Speaker 01: the claims and the continuation, there's an argument that it's inherently there. [00:30:58] Speaker 01: It's inferred to be there because it was so commonly used. [00:31:03] Speaker 01: So that's the Saunders Group case, which is 492F1326. [00:31:06] Speaker 03: In other words, that was the title of what column? [00:31:11] Speaker 01: Correct. [00:31:11] Speaker 01: So in that case, you had a parent application that had a specific requirement, pneumatic cylinder, [00:31:19] Speaker 01: that was in every single claim in the parent application. [00:31:23] Speaker 01: They filed a continuation application. [00:31:25] Speaker 01: And they took the term out of some of the independent claims, but not all of them. [00:31:28] Speaker 01: And in that case, the Federal Circuit said, well, that's an indication that it's not required in the claims where it's omitted from. [00:31:36] Speaker 01: But here, I think, is the key passage from Saunders. [00:31:39] Speaker 01: And this is on 1332. [00:31:40] Speaker 01: The statement is, had they omitted the limitation from all the claims, [00:31:46] Speaker 01: It might be argued that the limitation was assumed to be present and did not need to be explicitly recited. [00:31:52] Speaker 01: That's the exact situation we have here. [00:31:54] Speaker 01: The parent application included the term passive infrared detector in all of the claims. [00:31:59] Speaker 01: It's replete throughout the specification. [00:32:02] Speaker 01: And then here when they filed the continuation, it didn't need to be recited expressly. [00:32:06] Speaker 01: It was found to be assumed to be in the claims. [00:32:11] Speaker 01: So I think that is exactly the situation we have here in that reasoning, or at least that passage from Saunders applies. [00:32:17] Speaker 01: If we look at the detailed description of the preferred embodiment, I think that's also instructive. [00:32:22] Speaker 01: There the passage says the wall control 60, as may best be seen in figure four, includes a passive infrared sensor 100. [00:32:31] Speaker 01: So at every step of the process, from the abstract to the background to the summary of the invention to the detailed description and every single figure, [00:32:39] Speaker 01: It repeatedly and consistently says that there's a passive infrared detector in the wall console. [00:32:46] Speaker 03: Other embodiments than the preferred embodiment? [00:32:50] Speaker 01: There are not. [00:32:51] Speaker 01: There are no other embodiments. [00:32:52] Speaker 01: There's no embodiments without the passive infrared detector. [00:32:55] Speaker 01: Every single figure refers to them. [00:32:57] Speaker 01: It's shown in Figure 1, described in Figure 1. [00:33:00] Speaker 01: It's shown explicitly in Figure 4 and described in Figure 4. [00:33:04] Speaker 01: Now, Figures 2 and 3 don't show it exactly, but if you look at the descriptions of Figure 2, for example, it says it's a simplified block diagram showing the relationship between major electrical systems of a portion of the garage door operator shown in Figure 1. [00:33:18] Speaker 01: So it's not surprising that Figure 2 and Figure 3, which only show a portion of the system from Figure 1, may not have the infrared detector in them, but it's only a portion of Figure 1 which indisputably has the infrared detector in the wall console. [00:33:30] Speaker 01: So when you have these types of descriptions where you've got consistent recitation, even just in the specification alone, [00:33:38] Speaker 01: We know from Ultimate Pointer, we know from the Pacing Technologies case, and we know from statements in PolyAmerica that those statements alone are sufficient to show disavowal. [00:33:47] Speaker 01: We don't need to go any further than that. [00:33:49] Speaker 01: Now, here we think that there are additional supporting statements, including from the prosecution history, that support the disavowal. [00:33:55] Speaker 01: But I would argue that you don't even need to get there. [00:33:57] Speaker 01: The statements from the specification are so clear and so unambiguous that following Ultimate Pointer, following PolyAmerica, following pacing technologies, that the claims must be limited to having a passive infrared detector in the wall console. [00:34:08] Speaker 03: You think this is an, this invention is patent? [00:34:15] Speaker 01: I do. [00:34:16] Speaker 01: I do. [00:34:16] Speaker 01: When you look at everything from the abstract, I'd say I would go back to the first statement of the summary of the invention. [00:34:23] Speaker 01: The first statement in the summary of the invention says a passive infrared detector for a garage door operator. [00:34:28] Speaker 01: I don't think you can get any clearer, more definitive statement than that. [00:34:32] Speaker 01: And if you don't mind. [00:34:34] Speaker 04: I just wanted to clarify my understanding of your response to Judge Wallach's earlier question. [00:34:38] Speaker 04: As I understand it, the result of the IPRs helps you on the workaround product, but not on the accused product, because claims 9 and 16 or something like that survive, right? [00:34:51] Speaker 01: Correct. [00:34:52] Speaker 04: And so what's the status of the appeal from the IPRs? [00:34:55] Speaker 01: So it's not been set for argument yet, but we have briefed it. [00:34:59] Speaker 01: And the briefing is complete? [00:35:00] Speaker 01: I believe it is, yes, at this point, Your Honor. [00:35:02] Speaker 01: And you are correct. [00:35:03] Speaker 01: So the original design include a fully wired connection from the wall council to the head unit that allowed power to go back and forth. [00:35:10] Speaker 01: The redesign is outside the scope of that, so there's no issue. [00:35:12] Speaker 01: But it doesn't help us with the original design. [00:35:15] Speaker 01: Your Honor, you're correct. [00:35:17] Speaker 01: I'd like to reserve the rest of my time. [00:35:19] Speaker 03: You can save the rest for you. [00:35:22] Speaker 03: Mr. Brechner. [00:35:30] Speaker 02: Thank you. [00:35:31] Speaker 02: I'd like to start by answering a question that came up about where the commission's claim construction wall council shows up. [00:35:37] Speaker 02: It's actually in an earlier opinion by the commission, in which the commission reversed the ALJ's summary determination of non-infringement. [00:35:44] Speaker 03: But when you look at the patent, passive infrared detector as part of the wall control unit is all over this patent. [00:35:53] Speaker 03: It essentially says this invention is, and there are no alternative embodiments. [00:36:00] Speaker 02: Well, respectfully, I'd have to disagree. [00:36:02] Speaker 02: First of all, as the panel pointed out, the claims make no mention of the infrared detector. [00:36:08] Speaker 03: But the question is, doesn't wall control unit in the claims mean, in light of what's in this specification, with the PID? [00:36:20] Speaker 02: Well, no, because not every embodiment discloses this infrared detector. [00:36:25] Speaker 02: For example, only one of the figures, Figure 4, expressly shows an infrared detector and shows it in the wall console. [00:36:31] Speaker 02: None of the other figures, and I think there's another 18 figures, show an infrared detector. [00:36:37] Speaker 04: Yeah, but what Mr. White said is the other figures are showing only a portion of Figure 1. [00:36:43] Speaker 02: Well, figure one shows a wall console that doesn't show an infrared detector in it, even though it does show another type of detector, an obstacle detector that's near the door. [00:36:52] Speaker 02: Figure two shows the wall console in a schematic, but it doesn't refer to an infrared detector. [00:36:58] Speaker 02: Now, there are references in the specification that refer to that detector, but it's not in any of the figures itself other than figure four. [00:37:06] Speaker 02: So someone skilled in the art would look at these figures in the spec and say, well, maybe I can put it in, but maybe I can leave it out. [00:37:13] Speaker 02: And then that also brings up this point about what the invention is. [00:37:17] Speaker 02: And we have to look at the wording of the specification very carefully. [00:37:21] Speaker 02: It doesn't say the invention is putting a detector in the wall console. [00:37:26] Speaker 02: It says a principal aspect of the present invention or another aspect of the invention. [00:37:34] Speaker 02: is to include a detector in the wall console. [00:37:37] Speaker 02: Well, that suggests there can be other embodiments, or even leave the detector out altogether, or perhaps position it someplace else in the garage other than in the wall console. [00:37:46] Speaker 03: Summary of the invention. [00:37:48] Speaker 03: Passive infrared detector includes a garage door opener, includes a section connected to a comparator. [00:37:57] Speaker 03: Both the detector and the comparator are controlled in a wall control unit. [00:38:05] Speaker 03: A brief description. [00:38:07] Speaker 03: Figure 1 is a perspective view, including a barrier operator with a PID in a wall control unit and embodying the present invention. [00:38:19] Speaker 03: The tail description is a preferred embodiment. [00:38:22] Speaker 03: There is no non-preferred embodiment, is there? [00:38:25] Speaker 02: Well, I disagree again. [00:38:27] Speaker 02: I mean, the figures don't show it. [00:38:29] Speaker 02: And what's more, in the prosecution's history, when the applicants had to overcome a 112 rejection, they referred to a wall unit and a controller, like the claims. [00:38:39] Speaker 02: But they didn't cite any support for the infrared detector, even though they would have been required to if that was assumed to be part of the wall counsel. [00:38:48] Speaker 02: Moreover, I think it's important to look at this in the context of the 968 patent, which the panel brought up earlier. [00:38:56] Speaker 02: These two patents are related. [00:38:57] Speaker 02: The 968 patent issued first. [00:38:59] Speaker 02: It's the parent patent. [00:39:01] Speaker 03: They have the same specification? [00:39:03] Speaker 02: Same specification. [00:39:04] Speaker 03: And the other one was entitled PID in the wall control unit? [00:39:09] Speaker 02: That's correct. [00:39:10] Speaker 02: That's in the title. [00:39:11] Speaker 02: It's in the claims. [00:39:11] Speaker 03: And the title is intended, of course, the claims govern. [00:39:15] Speaker 03: But the title is intended to indicate what follows is the invention. [00:39:21] Speaker 02: And in the 968, that's what they did. [00:39:23] Speaker 02: They claimed both the wall console with the detector. [00:39:26] Speaker 03: But that's the same specification here. [00:39:29] Speaker 02: I'm saying specification, but it's continuation practice, as the panel well knows, is to claim a different invention. [00:39:35] Speaker 02: It could overlap, certainly, but it's a different invention than what's in the 968. [00:39:39] Speaker 03: But if a title means something with respect to the specification, it means that that specification implies that same content with respect to the title. [00:39:53] Speaker 02: And that's true in the 968. [00:39:54] Speaker 03: Things equal to the same thing are equal to each other. [00:39:57] Speaker 02: In the 319, there's no mention of an infrared detector in the title. [00:40:01] Speaker 02: It focuses more on the communication between the wall control unit and the head unit. [00:40:06] Speaker 02: That's what the claims are directed to. [00:40:08] Speaker 02: Each unit has a controller. [00:40:10] Speaker 02: They communicate over a digital bus. [00:40:14] Speaker 02: That's the whole focus of the [00:40:17] Speaker 02: 319 patent. [00:40:18] Speaker 02: The 968 is focused on a different aspect. [00:40:20] Speaker 02: It explicitly calls out the infrared detector. [00:40:24] Speaker 04: So can I bring you back to your point about the figures? [00:40:28] Speaker 04: Your basic argument is some of the figures other than figure four don't show the infrared detector. [00:40:35] Speaker 04: Right. [00:40:35] Speaker 04: But if you look at column four of the patent, line 22, it says the wall control [00:40:43] Speaker 04: 60 as may be best be seen in figure 4 includes a passive infrared sensor which suggests to me that if you want to see what the wall control the wall Control unit includes you look to figure 4 Yeah, and I would agree the figure 4 discloses it, but I don't think it's the only embodiment because why then would they have to claim that? [00:41:11] Speaker 02: the detector separately than the wall control unit in the 968 baton. [00:41:15] Speaker 04: Well, I understand that's a different argument. [00:41:18] Speaker 04: I'm addressing the question of whether the fact that the other figures don't show an infrared detector has any significance. [00:41:26] Speaker 04: And it seems to me that where the spec says the wall control unit may be best seen in Figure 4, that suggests that that's the way, that's the place to look to get your description of the wall control unit. [00:41:40] Speaker 02: Well, again, I think a person skilled in the art is going to look at the whole patent, starting with the claims. [00:41:45] Speaker 02: And you see no reference to it. [00:41:46] Speaker 04: Well, that's a different point. [00:41:48] Speaker 04: It seems to me that this does undermine your reliance on these other figures not shown. [00:41:54] Speaker 02: Well, thank you for your time. [00:41:56] Speaker 03: Thank you, counsel. [00:41:57] Speaker 03: Ms. [00:41:58] Speaker 03: McAuliffe. [00:42:02] Speaker 00: Thank you, Your Honors. [00:42:03] Speaker 00: First, I would like to start with the fact that CGI does not dispute that there are two inventions disclosed in the patent, both the digital data bus and the passive infrared detector. [00:42:14] Speaker 00: And in fact, if you read the entirety of the specification, including at column 2, lines 36 to 51, including figures 2, 3A to C, figure 4, 12A to C, 12E to H, column 4, 60 to 6, column 6, 9, [00:42:32] Speaker 00: column 665 to column 732. [00:42:35] Speaker 00: There are a lot of embodiments that do not include [00:42:38] Speaker 00: the passive infrared detector. [00:42:40] Speaker 00: And that's for a good reason. [00:42:42] Speaker 00: So the underlying technology here is that CGI was replacing a single wire between a wall unit and an overhead unit to open the garage door. [00:42:52] Speaker 00: And it replaced that with a digital data bus. [00:42:55] Speaker 00: That enabled additional technology. [00:42:57] Speaker 00: That enabled one to include a passive infrared detector on the wall unit and an overhead light and have one enable the other so that the PID [00:43:08] Speaker 00: could detect a person and turn on the light. [00:43:10] Speaker 00: Now, none of that is in the claims. [00:43:12] Speaker 00: Not only is the passive infrared detector not in the claims, that whole embodiment of turning on a light, the light's not in the claims. [00:43:19] Speaker 00: And all TTI is asking you to do is read that one limitation, passive infrared detector, into the claims and not the rest of that one particular embodiment. [00:43:29] Speaker 00: And if you look at the cases that are cited by TTI, TTI relied a lot on the Saunders case. [00:43:36] Speaker 00: I would just ask that the court read that case. [00:43:37] Speaker 00: We believe that case stands for a different proposition, that that case is more in align with this court's decisions [00:43:43] Speaker 00: when it comes to claim differentiation. [00:43:46] Speaker 00: And here we had a parent application, a parent patent, that had a different title. [00:43:51] Speaker 00: It was titled Passive Infrared Detector. [00:43:53] Speaker 00: We then have a child application where the applicant went back, as it's allowed to do, and decided to claim another invention that was in the patent. [00:44:01] Speaker 00: And in doing so, it changed the name of the patent, the title of the patent, to let the world... What was the other invention? [00:44:08] Speaker 03: In other words, one without the PID in the wall control unit. [00:44:15] Speaker 00: So there's two inventions. [00:44:17] Speaker 00: The parent application actually claimed a unit where the unit used a PID in the wall control unit. [00:44:24] Speaker 00: The invention of the patented issue is all about the digital data bus, the underlying technology that allowed more extensibility. [00:44:31] Speaker 03: That doesn't have anything to do with the PID in the wall control unit. [00:44:35] Speaker 00: It has nothing to do with that. [00:44:37] Speaker 00: The PID was there only to turn on the light. [00:44:39] Speaker 03: It was just not another embodiment with respect to where the infrared PID is. [00:44:46] Speaker 00: So all of the sites that I provided to the court are examples where the PID is not in those sites and not in those figures. [00:44:53] Speaker 00: Now, I will say that the patent in trying to explain why this digital data bus is important and why that provides additional extensibility to the garage door opener does use over and over again the example of the PID with the light. [00:45:09] Speaker 00: As I said, that is a separate invention. [00:45:10] Speaker 00: It clearly is, and it was separately patented. [00:45:13] Speaker 00: The claims of the other patent recite the PID. [00:45:15] Speaker 00: The title recites it. [00:45:17] Speaker 00: None of that is here. [00:45:18] Speaker 00: And importantly, if you look at the file history here, nowhere in the file history did the applicant try and distinguish their invention over the prior art based on the PID. [00:45:28] Speaker 00: In fact, if you look at the file history, there was a double patenting rejection. [00:45:33] Speaker 00: where it would have been really easy for the applicant to say, we are not like this other patent because we have a PID in the claims. [00:45:39] Speaker 00: They did not do that. [00:45:40] Speaker 00: Instead, they filed a terminal disclaimer. [00:45:42] Speaker 00: If you look at the entirety of the file history, there was an enablement rejection, in which case a claim chart was submitted. [00:45:49] Speaker 00: There was reference back to the patent. [00:45:50] Speaker 00: But when the actual words were put in the file history, it referred to a wall console in the patent as being the wall console that was cited. [00:45:58] Speaker 00: It didn't say a wall console with a PID. [00:46:02] Speaker 00: cite whatsoever in the file history to the PID. [00:46:06] Speaker 00: In fact, PolyAmerica, which the district court thought supported TTI's position, actually supports CGI's position. [00:46:13] Speaker 00: It states the law, which this court knows well under Thorner, that the standard for disavowal is exacting. [00:46:19] Speaker 00: And there has to be clear and equivocal evidence of disavowal. [00:46:23] Speaker 00: At most, it's ambiguous. [00:46:26] Speaker 03: But the language this invention is, is in effect a disavowal. [00:46:30] Speaker 00: If that was the only language, that would be a much clearer case. [00:46:34] Speaker 00: But there's language on both sides. [00:46:35] Speaker 00: There's language to suggest that that's an invention. [00:46:38] Speaker 00: And in fact, everywhere else in the specification, it doesn't say this invention is. [00:46:42] Speaker 00: It describes the PID as an embodiment. [00:46:45] Speaker 00: And so there were definitely two inventions, and yes, that language is in there, but only in one place. [00:46:51] Speaker 00: And everywhere else, it doesn't talk about the PID as being the invention. [00:46:55] Speaker 00: It also talks about the digital data bus as being the invention. [00:46:58] Speaker 00: And in this particular patent, only the digital data bus was claimed. [00:47:03] Speaker 03: And if you look at PolyAmerica... Well, you say only the digital data bus was claimed, but the wall console was claimed, too. [00:47:11] Speaker 03: That's correct, John. [00:47:11] Speaker 03: I used... And so the question is, what does wall console mean? [00:47:15] Speaker 00: That's correct. [00:47:15] Speaker 00: And I use digital data bus as shorthand. [00:47:17] Speaker 00: So the claims actually recite the digital data bus as connecting the motor unit with the wall console. [00:47:24] Speaker 00: None of the claims discuss that additional embodiment where you would put a light in the head unit. [00:47:31] Speaker 00: and you would put a passive infrared detector in the wall unit. [00:47:36] Speaker 00: And in fact, just inserting that one portion of that embodiment into the claims, it's disconnected. [00:47:41] Speaker 00: There's no functionality for the PID because you don't have anything for it to impact. [00:47:46] Speaker 00: There's no light or anything else in the claim. [00:47:48] Speaker 00: So the claims were really directed to the underlying technology, which is the big differentiation of the prior art. [00:47:54] Speaker 00: We no longer have a wire. [00:47:55] Speaker 00: We now have a digital data bus where you can send different types of information, including [00:48:01] Speaker 00: in the example in the patent, the information from a passive infrared detector. [00:48:09] Speaker 03: You've got negative five seconds to recite what you were just given. [00:48:14] Speaker 00: With that all said, thank you, Your Honor. [00:48:16] Speaker 03: All right, thank you. [00:48:18] Speaker 03: Mr. White? [00:48:19] Speaker 00: Yes, Your Honor. [00:48:22] Speaker 03: You'll respond to the so-called second embodiment argument and the question of the other figures not disclosing the PID and scroll control. [00:48:34] Speaker 01: Yeah, let me start with that, because again, we heard that figure one, the argument was made that figure one does not show a passive infrared detector. [00:48:42] Speaker 01: I would direct your honors to the description of figure one in the brief description of the drawings on column three of appendix 766. [00:48:48] Speaker 01: It says, [00:48:50] Speaker 01: Figure 1 is a perspective view of a garage, including a movable barrier operator, specifically a garage door operator having associated with it a passive infrared detector in a wall control unit and embodying the present invention. [00:49:06] Speaker 01: So the suggestion that it's not in Figure 1, I don't know how you can make that argument in view of that description. [00:49:10] Speaker 01: Figure 2, which they've said does not show a passive infrared detector, that description there is a block [00:49:17] Speaker 01: diagram showing the relationship between major electrical systems of a portion of the garage door operator shown in Figure 1. [00:49:24] Speaker 01: Not a surprise that it's not there because it's not dealing with the wall console part of it. [00:49:28] Speaker 01: Figures 3a through c are schematic diagrams of a portion of the electrical system shown in Figure 2, which is again a portion of what's in Figure 1, but it doesn't say that there's no passive infrared detector. [00:49:41] Speaker 01: And as Judge Dyke pointed out, figure four is a schematic diagram of the wall console, including the passive infrared detector. [00:49:47] Speaker 01: There is no other embodiment. [00:49:48] Speaker 01: You looked at the description. [00:49:49] Speaker 01: I think you pointed out to me the heading of the specification is detailed description of the preferred embodiment. [00:49:55] Speaker 01: There is one. [00:49:55] Speaker 01: There is only one. [00:49:57] Speaker 01: We heard an argument that another embodiment supposedly involves a digital data bus. [00:50:01] Speaker 03: Well, the question isn't whether there's another preferred embodiment, but whether there's another embodiment at all. [00:50:06] Speaker 01: And I think the answer to that is clearly no. [00:50:08] Speaker 01: We heard a description. [00:50:09] Speaker 03: And Ms. [00:50:10] Speaker 03: Vidal was telling us there was. [00:50:11] Speaker 01: I know. [00:50:12] Speaker 01: Where do you find it? [00:50:13] Speaker 01: Look for the description of a digital data bus anywhere in the specification. [00:50:17] Speaker 01: That term appears in the claims, but you won't find it described in the specification. [00:50:21] Speaker 01: Where is it? [00:50:22] Speaker 01: Look for it. [00:50:23] Speaker 01: The section she pointed you to, column two, talks about the microcontroller. [00:50:27] Speaker 01: also communicates over the lines carrying the normal wall control switch signals. [00:50:31] Speaker 01: That doesn't say in this embodiment there's no passive infrared detector. [00:50:35] Speaker 01: This follows two paragraphs in the summary of the invention that start with describing the passive infrared detector. [00:50:41] Speaker 01: Both of the paragraphs say passive infrared detector, passive infrared detector. [00:50:45] Speaker 01: Then they say the microcontroller also communicates with something else. [00:50:48] Speaker 01: It doesn't say there's no passive infrared detector in this embodiment. [00:50:51] Speaker 01: You will not find an embodiment in the patent that does not have a passive infrared detector. [00:50:56] Speaker 01: She said, we didn't ask that a light be read into the claims. [00:51:01] Speaker 01: Well, of course not. [00:51:02] Speaker 01: We're not trying to read things into the claims. [00:51:03] Speaker 01: We're interpreting what is claimed, which is the wall council, that includes a passive infrared detector. [00:51:08] Speaker 01: There was no suggestion that the wall council includes a light or that the light was an important part of the invention. [00:51:15] Speaker 01: It just isn't there. [00:51:17] Speaker 01: The specification is enough. [00:51:19] Speaker 01: As we know from the case law, where you recite consistently and repeatedly that the invention includes a passive infrared detector in the wall council, if you repeatedly extol the virtues of including a passive infrared detector in the wall council, if you repeatedly criticize including a passive infrared detector in the head unit instead of in the wall council, ultimate pointer, PolyAmerica, they all tell us that that is a disavowal and the claims need to be limited. [00:51:43] Speaker 01: I want to answer Judge Wallach's comment, question before. [00:51:46] Speaker 01: The claim construction ruling is at Appendix Site 5287 through 5304. [00:51:51] Speaker 01: And then before I sit down, I just wanted to flag the issue that we raised in our Rule 28J letter, and that there's an issue about whether or not this supposed alternative holding applies here. [00:52:02] Speaker 01: And I just ask Your Honors to take a look at that letter and what the relief requested in there, if you're going to agree with Chamberlain on this one. [00:52:08] Speaker 03: Thank you, counsel. [00:52:09] Speaker 03: We could say this case isn't open and shut, but we won't. [00:52:14] Speaker 03: The case is submitted.