[00:00:00] Speaker 03: Cases number 18, 2111, Chamberlain-Groove King versus Monroe Technologies Inc. [00:00:26] Speaker 03: Okay, Mr. Dragset. [00:00:28] Speaker 01: Good morning. [00:00:28] Speaker 01: May I please the court? [00:00:30] Speaker 01: We're shifting now from a case to a case where the patent owner is asking the court to actually give way to the terms that are literally in the claims. [00:00:38] Speaker 01: So this is the 2111 appeal. [00:00:40] Speaker 01: I'll be arguing both. [00:00:42] Speaker 01: This is the one that deals with the claim requirement of communicating the identities of faults and displaying the identified faults. [00:00:50] Speaker 01: So our position is that the board erred by removing those requirements. [00:00:55] Speaker 01: And it's important to look at both of those terms. [00:00:57] Speaker 01: You have to have identities of faults. [00:01:01] Speaker 01: So identities, something where you can figure out which faults are being identified. [00:01:07] Speaker 03: Well, even assuming that that's the correct claim construction, the board found that the prior art disclosed that, right? [00:01:17] Speaker 03: That's right. [00:01:18] Speaker 03: So why were they wrong by that? [00:01:20] Speaker 03: I didn't read your briefs actually as disputing that the criminals, if you allowed the incorporation, showed both the one quarter second flash and a two second flash, which would be too different. [00:01:40] Speaker 03: uh, identifications, right, for two different conditions. [00:01:44] Speaker 03: You don't dispute that if you take it as a whole, Krimans as a whole, that discloses that, right? [00:01:50] Speaker 01: No, I do dispute that. [00:01:51] Speaker 01: That if you take it as a whole, Krimans does not dispute that. [00:01:54] Speaker 01: Our position is that the board didn't take it as a whole. [00:01:58] Speaker 03: I'm sorry, you don't dispute that if you take it as a whole it discloses both? [00:02:03] Speaker 01: No, I do dispute that if you take it as a whole. [00:02:07] Speaker 03: How can that not be the case? [00:02:09] Speaker 03: Because I thought it was pretty clear that there were two different modes with two different kinds of flashing. [00:02:18] Speaker 01: The only way that the board resolved that was by saying, well, regardless of what the source code actually says, and that was their language, regardless of what the source code says, we're going to find that the reference as a whole teaches two different behaviors. [00:02:32] Speaker 01: The problem is you can't set aside a third of the document and then say we're considering the document as a whole. [00:02:38] Speaker 01: There's a potential for inconsistencies here, and the board had to resolve. [00:02:42] Speaker 01: whether there was an inconsistency or not, and then, if there was, what to do with it. [00:02:47] Speaker 01: And the code, and Dr. Davis's undisputed analysis of that code, he's the only expert that analyzed the code in this case, was that it did the same thing as the other commented. [00:03:00] Speaker 01: If you look at the comments, one says blink, and then the other one says flash every quarter second. [00:03:06] Speaker 01: So one of them is indeterminate in the timing. [00:03:09] Speaker 01: The other comment tells you what the timing is. [00:03:12] Speaker 01: So the question in looking at those two comments is, is the generic comment the same as the specific comment, or is it something else? [00:03:22] Speaker 01: And Dr. Davis went to the code and said, yes, it is the same thing. [00:03:27] Speaker 01: They're both quarter second. [00:03:29] Speaker 01: Well, then I have to believe him, right? [00:03:30] Speaker 01: They didn't, but they don't have to believe him, but that's not what they did. [00:03:33] Speaker 01: They didn't say, we don't believe Dr. Davis. [00:03:36] Speaker 01: They didn't say, we disagree with Dr. Davis. [00:03:38] Speaker 01: They said, we're going to set aside what the code says. [00:03:42] Speaker 01: Setting it aside, or regardless of. [00:03:44] Speaker 03: What page are we talking about here? [00:03:45] Speaker 01: Regardless of, I believe is 26 of the board opinion. [00:03:50] Speaker 01: So appendix 26. [00:04:02] Speaker 01: What language do you want? [00:04:04] Speaker 01: Yeah, I'm looking for that right now. [00:04:16] Speaker 01: Let me check. [00:04:17] Speaker 01: We sighted in the blue. [00:04:18] Speaker 01: We can pull that from there. [00:04:32] Speaker 01: it's actually appendix thirty so if you go to the full paragraph the big paragraph that takes up most of the page and go down one two three four five lines so what the what the board is doing there is saying while the specification [00:04:59] Speaker 01: says flash every two seconds for this fault about exceeding the count. [00:05:06] Speaker 01: You have two faults here. [00:05:07] Speaker 01: One is you exceeded the count, you have to do [00:05:10] Speaker 01: Some maintenance on you set 10,000 opens and service cycles exactly So maybe you have to replace some parts or oil something the other one is an overflow So for example the chip for some reason the microprocessor has too high of a value. [00:05:25] Speaker 01: You don't know what happened Okay, those are the two two faults that we're talking about and what the the board said here is while the spec says flash every two seconds [00:05:37] Speaker 01: The comment for the other error says flash every quarter second. [00:05:43] Speaker 01: So these are two different things. [00:05:46] Speaker 01: What's wrong with them? [00:05:47] Speaker 01: Because the code itself says flash every quarter second for both of them from the only person who analyzed the code. [00:05:58] Speaker 01: So the answer is if you look at the entire reference, you have comments that say every quarter second, and then it's silent for the 10,000 count error. [00:06:10] Speaker 01: You have code that says every quarter second for both of the errors. [00:06:15] Speaker 01: And then you have a specification that says every two seconds. [00:06:19] Speaker 01: And so the position we took is when you look at all of those comments, code, and specification, that tells you that the specification is talking about something other than the code and comments. [00:06:32] Speaker 01: The board said, well, regardless of this functionality, regardless of what the code actually does, [00:06:38] Speaker 01: We have two seconds and a quarter second. [00:06:40] Speaker 03: We're done. [00:06:50] Speaker 01: No, the description describes a two second count for the over 10,000 cycles count. [00:06:58] Speaker 01: And then the question is whether that description should be melded with the code and the comment as a single example, or whether the description is describing a different example. [00:07:09] Speaker 01: So you have an example in the code where both are a quarter of a second. [00:07:14] Speaker 01: Because as Dr. Davis said, the actual code itself [00:07:19] Speaker 01: is a quarter second for both errors. [00:07:22] Speaker 01: The comments are quarter second and open ended. [00:07:25] Speaker 01: So if you take his testimony into play and it wasn't disputed, you have quarter second for both errors. [00:07:34] Speaker 01: You then have a specification that says two seconds for one of the errors. [00:07:38] Speaker 03: So your contention is that the code and the specification are not consistent. [00:07:45] Speaker 01: Well, I wouldn't say that they're not consistent, but they're describing two different examples. [00:07:51] Speaker 01: That part of the specification is describing a different example. [00:07:57] Speaker 01: And it's not like there's, I wouldn't call it a separate embodiment because this isn't the, whether you do it for two seconds or a quarter of a second, that's not where you would carve out a different embodiment. [00:08:07] Speaker 01: But what they're doing is describing two examples of how you could carry it out. [00:08:11] Speaker 01: Whether you do it as two seconds, quarter second, it's not something that you would. [00:08:16] Speaker 01: carve out into a separate embodiment. [00:08:17] Speaker 01: But if you take into account Dr. Davis' testimony, which the board said regardless of his testimony, if you take it into account, and it's undisputed, nobody else analyzed that code, you have quarter second for both of the errors. [00:08:32] Speaker 01: And so you have indefiniteness for which error is happening, and therefore you don't identify. [00:08:42] Speaker 01: Our position is that the board can't say that it's looking at the entirety of the document after saying, I'm going to carve out one-third of the document. [00:08:50] Speaker 01: I don't know how much, but a chunk of the document. [00:08:54] Speaker 01: But I'm still looking at the whole thing. [00:08:56] Speaker 01: Just can't make that determination by throwing away part of the document where we had identified an issue and then saying, well, what remains solves the issue for us. [00:09:06] Speaker 01: That's a big picture of that issue. [00:09:08] Speaker 01: Separately, the board could also get there on the more general incorporation by reference issue, which is that the [00:09:15] Speaker 01: The incorporation may have brought in that extra code, but it never connected it up with the embodiment in the 641 patent. [00:09:26] Speaker 01: So we call it interleaving different teachings. [00:09:30] Speaker 01: And we say that for anticipation, you have to show not only that it's in the document. [00:09:35] Speaker 01: So they have a general incorporation by reference. [00:09:37] Speaker 01: It's in the document. [00:09:39] Speaker 01: But you have to show that it's in there in the same way that the claim recites. [00:09:44] Speaker 01: That's the nub of our general incorporation by reference argument. [00:09:49] Speaker 01: So what they point to is their general incorporation by reference, which is way up at the top of the patent, which is common. [00:09:56] Speaker 01: And it just says, I incorporate by reference this other document. [00:10:00] Speaker 01: And then there's a statement way down. [00:10:01] Speaker 01: It's the second to last paragraph of Crimmins that says, attached is an exhibit A of code. [00:10:11] Speaker 01: I would say there's no explicit connection between those statements. [00:10:15] Speaker 01: They're at opposite ends of the patent. [00:10:16] Speaker 01: There's nothing in the patent that suggests that they are connected, that somehow the exhibit A at the end is talking about exhibit A of the incorporated reference rather than the patent. [00:10:27] Speaker 01: I'd also say that, well, it's not explicit by where it's located. [00:10:32] Speaker 01: It's not explicit by its language. [00:10:33] Speaker 01: And so we have to imply that somehow they are connected. [00:10:38] Speaker 01: And our argument is that is obviousness. [00:10:40] Speaker 02: Why aren't they connected by that simple reference? [00:10:43] Speaker 02: I mean, that's what incorporation by reference is. [00:10:47] Speaker 02: You don't make a full detailed explanation as to why you're accepting a particular document. [00:10:54] Speaker 02: Why wouldn't the mere referring to the document be enough? [00:11:00] Speaker 01: Referring to it does bring it in, but it doesn't connect up the different parts. [00:11:04] Speaker 01: So you have basically an anthology now, right? [00:11:06] Speaker 01: You have Crimmins' 641 specification, which is missing its attachment. [00:11:11] Speaker 01: We know that. [00:11:12] Speaker 02: And then you have the... You don't have a problem that the exhibit is incorporated. [00:11:16] Speaker 01: Right, generally incorporated. [00:11:18] Speaker 01: Our problem is that the incorporation does not make that Exhibit A reference point over to the other Exhibit A as opposed to the Exhibit A that was supposed to be attached to this document. [00:11:30] Speaker 01: Okay, and this is anticipation law, right? [00:11:34] Speaker 01: And so, [00:11:35] Speaker 01: Under that, it has to necessarily be pointing over there. [00:11:38] Speaker 01: It's not enough that you could figure it out if you did some work and a skilled arson could figure this out. [00:11:43] Speaker 01: If it's not explicitly pointing to the other exhibit A, then it necessarily has to point there. [00:11:49] Speaker 01: We know it doesn't necessarily point there because, in fact, it points to the original exhibit A. Now, they'll say, well, [00:11:57] Speaker 01: But at the end of the day, the exhibit A's match in substance. [00:12:02] Speaker 01: But that doesn't count under anticipation law, because the only way to find out that they match in substance is to go to a third document, the other application, and look at them and compare them and so on. [00:12:15] Speaker 03: So I think the other application was incorporated. [00:12:18] Speaker 01: No, the other. [00:12:19] Speaker 01: The second document is the other application that was incorporated, OK? [00:12:24] Speaker 01: What I'm talking about, the third document is the application for Crimin 641, which is not incorporated by references. [00:12:32] Speaker 01: It's where the actual exhibit that's being referenced in Crimin 641 exists. [00:12:38] Speaker 01: So you have Crimin 641 pointing to something that doesn't exist, and then you have the other Crimin's application over here with its exhibit A. [00:12:50] Speaker 01: And to get where they need to go, this reference to Exhibit A in Crimin 641 has to point to the incorporated Exhibit A. And our position is that it doesn't under the law for anticipation, because it could [00:13:06] Speaker 01: Obviously under obviousness you might be able to figure out that it does, but this is a case for obviousness This is a case for anticipation, so they have to show that it necessarily Points to the other exhibit a and in fact we know that it doesn't it points to its own exhibit a Just turns out that that didn't get printed and so that's the the problem in finding anticipation. [00:13:27] Speaker 03: I'll reserve my time Mr.. White thank you [00:13:40] Speaker 00: May it please the court? [00:13:43] Speaker 00: Chamberlain's lead argument in their briefs was that the board adopted a faulty claim construction position, but that argument was not made below and was thus waived or forfeited. [00:13:52] Speaker 00: But I'm going to skip over that argument. [00:13:53] Speaker 00: I think it's addressed well in the briefs and focus on the second issue, which I think, Your Honors, hit the nail on the head with the questions to counsel here. [00:14:01] Speaker 00: And that is, even if the arguments that they've raised are considered on the merits, they fail for multiple reasons. [00:14:07] Speaker 00: As you noted, if the court determines that the claims require faults to be uniquely identified, which we don't think is a requirement of the claims based upon the proper reading, but even if you go that far and find that that is a requirement, CRIMINS does identify unique faults because it provides visually distinct displays for at least two identified faults. [00:14:29] Speaker 00: You identified it, and the board relied upon it finding that there were two different LED behaviors for two different identified faults. [00:14:36] Speaker 00: Now, the only challenges Chamberlain has raised to those findings, I think, can fall into three different buckets. [00:14:43] Speaker 00: First, they take issue with the conclusions about incorporation by reference, which we heard some about and I'll address. [00:14:49] Speaker 00: Second, they argue that there's purported inconsistency between the source code and the comments of the source code. [00:14:55] Speaker 00: And then third, they seem to challenge whether or not there's two embodiments or a single embodiment, although I heard them kind of back off from that argument today. [00:15:03] Speaker 00: But let me take those in order. [00:15:06] Speaker 00: Chamberlain argues that Kremen's is silent on how the source code from the parent application is related to Kremen's disclosure. [00:15:12] Speaker 00: We just heard them say that. [00:15:14] Speaker 00: It's in the reply brief. [00:15:15] Speaker 00: They went so far in the reply brief to say no citation, no citation that might direct the reader to useful sections of the code was included in the Kremen's prior reference. [00:15:26] Speaker 00: That's on page 14 of the reply brief. [00:15:30] Speaker 00: But yet, Crimmins includes not one, but two different paragraphs that work in concert to provide specific details as to what's incorporated from Exhibit A. Crimmins includes the general statement that we heard about that's in Appendix 484, column one, lines three through six, stating that this is a continuation of the parent application, which admittedly includes the source code. [00:15:50] Speaker 00: And then Crimmins has a second, more specific statement near the end. [00:15:54] Speaker 00: That statement says, Exhibit A. Where are you reading from? [00:15:58] Speaker 00: I'm reading from Appendix [00:16:00] Speaker 00: Page 489. [00:16:01] Speaker 00: That's the patent. [00:16:05] Speaker 00: And it's column 12. [00:16:13] Speaker 00: Column 12, lines 25 through 29. [00:16:18] Speaker 00: That's where it says exhibit A is a copy of source code, source listing for computer software to operate a commercial door operator, having the functions described above and including the following modules. [00:16:33] Speaker 00: And it points and calls out specifically five separate modules. [00:16:37] Speaker 00: Now why is that important? [00:16:38] Speaker 00: Because each of those five modules is found in the source code and the comments that we and the board relied upon are found in those five modules. [00:16:49] Speaker 00: So their statement that no citation in Crimmons might direct the reader to useful sections of the code I think can't be reconciled with the actual disclosure of Crimmons. [00:16:58] Speaker 00: Crimmons says code is attached, here's five sections to look at, and the comments that are relevant here are found in the comments to those five sections. [00:17:09] Speaker 00: So in light of that disclosure, we believe the board properly found that somebody of skill in the art would have known to look to exhibit A in the prior art as being incorporated by reference. [00:17:20] Speaker 00: There was substantial evidence, including One World's expert, to support that finding. [00:17:25] Speaker 00: And during the hearing, I think this is important, Chamberlain expressly conceded that Crimmins incorporated the entirety of the earlier application by reference. [00:17:35] Speaker 00: This is Appendix Site 2246. [00:17:37] Speaker 00: The question from Judge Arbs was, counsel, let me ask you a general question. [00:17:43] Speaker 00: The Crimman's patent incorporates the parent application by reference in its entirety, right? [00:17:49] Speaker 00: The answer from Chamberlain's counsel is yes, Your Honor. [00:17:52] Speaker 00: The board relied upon that concession and its final written decision, so we don't think there's really any dispute that Exhibit A, the source code, is properly incorporated by reference and properly relied upon by the board. [00:18:02] Speaker 03: So what do you understand the board to be saying when it says put aside the actual functionality here? [00:18:10] Speaker 00: That, I think, gets to their second argument that they say there's a conflict between the code itself and the comments to the code. [00:18:18] Speaker 00: The comments to the code clearly identify... Where do we see the comments to the code? [00:18:22] Speaker 00: What page is that at? [00:18:29] Speaker 00: I don't know if I can give you that site. [00:18:30] Speaker 00: I'm going to ask Alex to see if he can find it. [00:18:32] Speaker 01: At 1112? [00:18:54] Speaker 00: So the comments are actually, my copy of the brief is highlighted. [00:18:58] Speaker 00: I don't know if yours is. [00:18:59] Speaker 00: The comments we've highlighted in yellow, on 11 and 12. [00:19:03] Speaker 00: So those are the comments. [00:19:05] Speaker 00: So the code is the things to the left of the semicolons. [00:19:08] Speaker 00: Comments are the things to the right of the semicolons. [00:19:11] Speaker 00: So there you have comments about how the LEDs are activated. [00:19:16] Speaker 00: The top one is the one that flashes every quarter second. [00:19:19] Speaker 00: The second one is the one that blinks every two seconds for two seconds. [00:19:26] Speaker 00: So I think their argument here is that while the comments say that, if you look at the actual code itself, the code doesn't implement that. [00:19:38] Speaker 03: Where is the two second question? [00:19:42] Speaker 03: Where do we find that? [00:19:44] Speaker 00: So the two-second flashing is described in specification, which the board found to be consistent with the second description here, flash LED call service. [00:19:54] Speaker 03: So they connected the two-second description of the specification with the second comment. [00:19:59] Speaker 00: Correct. [00:20:00] Speaker 00: And so I think what Chamberlain's argument is, is if you look at the actual code, the stuff to the left of the semicolon, it doesn't necessarily do two different things in two different sections of code. [00:20:11] Speaker 00: But that doesn't negate the fact that the board found properly that if you consider the entirety of the disclosure, it clearly discloses to a person of ordinary skill in the art that you can do two different things with two different conditions. [00:20:24] Speaker 00: That's what our expert testified to. [00:20:27] Speaker 00: So I do take issue with one of the statements that was made to say that their expert was the only one that analyzed the code and testified about this. [00:20:33] Speaker 00: Our expert, Mr. Liploff, testified that the code actually does not support their position on this. [00:20:39] Speaker 00: So he analyzed it, analyzed the interrupt sequence and said, to a person of ordinary skill in the art, the comments disclose using two different conditions under two different scenarios. [00:20:49] Speaker 00: So if you consider the entirety of the reference, I think it indisputably supports our position, supports the board's conclusion, and it does not support their position. [00:20:58] Speaker 00: Does that answer your question, Your Honor? [00:21:00] Speaker 00: Thank you. [00:21:01] Speaker 00: The last argument that they've made was that the board erred in putting together two separate disclosures. [00:21:08] Speaker 00: I think the quote was separate disclosures. [00:21:10] Speaker 00: Here they didn't say embodiments today. [00:21:12] Speaker 00: I think before they have argued that there's different embodiments. [00:21:16] Speaker 00: But I think that can be dismissed for a couple of reasons. [00:21:19] Speaker 00: As an initial matter, the board found that the comments to the code standing alone taught different behaviors for different faults. [00:21:26] Speaker 00: So if you just look at the comments alone, you've got two different descriptions in there. [00:21:30] Speaker 00: You don't have to talk about whether or not that can be reconciled with the actual code or with what's in the specification. [00:21:36] Speaker 00: The comments alone disclose two different behaviors. [00:21:38] Speaker 00: That is enough to invalidate the claims. [00:21:41] Speaker 00: But the board went further, and they made specific findings on this issue. [00:21:44] Speaker 00: They found that the source code in the criminal specification referred to as single embodiment, not two different embodiments. [00:21:50] Speaker 00: That's Appendix 29. [00:21:52] Speaker 00: So this idea that there was somehow a miscombination of things was raised before the board, addressed by the board, and there's substantial evidence to support that conclusion. [00:22:02] Speaker 00: So at the end of the day, even if Chamberlain were right in arguing that the apparatus limitation requires at least two different behaviors that correspond to distinct faults, that sort of uniquely identified requirement that they've talked about, substantial evidence supports the board's findings that criminals disclosed at that limitation. [00:22:17] Speaker 00: Unless you've got additional questions or want me to talk about the waiver issue, I would cede my time back to the court. [00:22:23] Speaker 00: Okay. [00:22:23] Speaker 00: Thank you. [00:22:23] Speaker 00: Great. [00:22:24] Speaker 00: Thank you, your honor. [00:22:32] Speaker 01: I just want to talk about the red brief pages that you were looking at, the comment pages, to help make clear what our position is on what the testimony was on this teaching. [00:22:42] Speaker 01: So it's the top two comments on page 11 of the red brief. [00:22:46] Speaker 01: Okay. [00:22:48] Speaker 01: One comment says turn the LED on and off every quarter second. [00:22:54] Speaker 01: The second comment says flash LED. [00:22:57] Speaker 01: Note that there's no difference between turn off or flash or blink or pulse. [00:23:03] Speaker 01: Those terms have all been used interchangeably. [00:23:06] Speaker 01: You can look, for example, in petitioners petition at A116 to 117. [00:23:10] Speaker 01: So the use of the words pulse, flash, turn on or off, that does not make a difference. [00:23:15] Speaker 01: So what you have is one of them says pulse every quarter second. [00:23:19] Speaker 01: The other one says pulse, but doesn't say how often. [00:23:22] Speaker 01: But the spec says two seconds. [00:23:25] Speaker 01: The spec says, as its example, two seconds. [00:23:29] Speaker 01: And the question is, does that fill in the gap for this generic description? [00:23:35] Speaker 01: And our answer was, it can't, because the code says every quarter second. [00:23:43] Speaker 01: OK? [00:23:43] Speaker 01: The code itself right next to this comment is every quarter second. [00:23:53] Speaker 01: But it's a fact finding that set aside the code. [00:23:56] Speaker 01: They could certainly make a decision [00:23:59] Speaker 01: about whether the code trumps the spec or whether the code is inconsistent with the spec or what have you. [00:24:05] Speaker 01: But they can't say, well, regardless of what the code says, setting the code aside, we're going to find the other two things consistent. [00:24:12] Speaker 03: Let's hypothetically suppose that in these first two things, the first one said a quarter second, and then the second one actually said flash every two seconds. [00:24:19] Speaker 03: But the testimony was that the flash every two seconds was inconsistent with the way the code actually worked. [00:24:27] Speaker 03: would you say that under those circumstances the board can't find anticipation? [00:24:32] Speaker 01: I think on that general question they could. [00:24:34] Speaker 01: There could be testimony about inconsistency between the code and the comment that the comment is supposed to reflect the code. [00:24:39] Speaker 01: But I think on that they could, but that's not what they did here. [00:24:42] Speaker 01: They went to the spec and they said, well, the spec describes this because there's nothing to the contrary. [00:24:49] Speaker 01: It's talking about this. [00:24:50] Speaker 01: And so our conclusion is there's no inconsistency between two seconds and a quarter second. [00:24:55] Speaker 01: But the only reason they didn't see an inconsistency is they didn't look at the third piece of evidence, the actual code. [00:25:02] Speaker 01: Now, if they looked at the code, they could say, well, here's why the comment doesn't match the code but matches the spec or what have you. [00:25:10] Speaker 01: They might be able to do that, but they didn't do it. [00:25:12] Speaker 01: And it's important not just that they failed to do that, but that petitioner didn't do it either. [00:25:18] Speaker 01: Petitioner says that Mr. Litmoff's... I think we're about out of time. [00:25:22] Speaker 01: What's that? [00:25:22] Speaker 03: I think we're about out of time. [00:25:23] Speaker 01: All right. [00:25:24] Speaker 01: Thank you. [00:25:24] Speaker 01: Thank you. [00:25:25] Speaker 01: Thank both counsel and cases submitted.