[00:00:36] Speaker 01:
Our next case is Velocity Patent LLC versus FCA US LLC, 2019-11-14.

[00:00:49] Speaker 01:
Ms.

[00:00:49] Speaker 01:
McComas.

[00:00:50] Speaker 03:
May it please the court?

[00:00:52] Speaker 03:
Excuse me, and good morning.

[00:00:54] Speaker 03:
This case comes to the court on appeal from the district court's summary judgment of non-infringement.

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Velocity's raised three issues in its brief.

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The first is the court erred in finding the process or subsystem determining limitation to be means plus function.

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The second issue is even applying the means plus function limitation and limiting the claim by the algorithms disclosed in the specification, the court erred in finding non-infringement as a matter of law.

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And the third is the court erred in finding claim 69 and 76 through 79 invalid under 35 USC section 305.

[00:01:30] Speaker 03:
I plan to focus my time, my short time today with the court on the means plus function argument unless the court has specific questions on the other two

[00:01:39] Speaker 01:
Well, I do.

[00:01:41] Speaker 01:
You are arguing against the broadening rejection.

[00:01:47] Speaker 01:
And I want to hear how you distinguish Vectra.

[00:01:54] Speaker 03:
OK.

[00:01:58] Speaker 03:
Your Honor, Vectra was in a very specific context of a reissue.

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With respect to claims 69, 76, and 79, they were added in the context of a re-examination.

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In what 305 tells us, and it was actually quoted in FCA's brief, in any re-examination proceeding under this chapter, the patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto in order to distinguish the invention

[00:02:28] Speaker 03:
is claimed from the prior art cited under the provision of Section 301.

[00:02:32] Speaker 00:
Doesn't the reissue patent and the re-exam statute have the same provision that you're not allowed to broaden the claims during those proceedings?

[00:02:40] Speaker 03:
They do.

[00:02:41] Speaker 03:
They do.

[00:02:42] Speaker 00:
So substantively, that seems like the same rule would apply.

[00:02:45] Speaker 03:
But temporarily here, you have something different.

[00:02:48] Speaker 00:
Are you suggesting that you can broaden claims in a re-exam?

[00:02:51] Speaker 03:
No.

[00:02:52] Speaker 03:
No.

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I'm suggesting that it wasn't broadened because it was done simultaneously.

[00:02:56] Speaker 03:
So the idea that they're wiped out for all purposes shouldn't apply in the context of a 305 re-exam proceeding where it's done in the same proceeding, but certainly not when it's done at exactly the same time and it's expressed on the face.

[00:03:14] Speaker 03:
Vectra's reasoning for applying its ruling that it would be wiped out

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for all purposes and not applied in the reissue simply doesn't apply here.

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In Vectra, they were a year later.

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And the consequence was that the public had had the benefit.

[00:03:31] Speaker 01:
In other words, they were truly broadened.

[00:03:33] Speaker 01:
Correct.

[00:03:35] Speaker 01:
And you're saying here they were not broadened.

[00:03:37] Speaker 03:
Right.

[00:03:38] Speaker 01:
Because the disclaimer occurs only later.

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When these claims were added, they were not broadening because there then existed already broader claims?

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That's right, Your Honor.

[00:03:50] Speaker 01:
That's your point?

[00:03:51] Speaker 03:
That's right.

[00:03:52] Speaker 03:
What happened was at the same time, Velocity proposes disclaiming 31 and 32.

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They add these same claims that specifically recapture that same subject matter, but narrower.

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So the intent is clear.

[00:04:13] Speaker 01:
So all of this was in the same proceeding as Judge Chin was suggesting.

[00:04:17] Speaker 01:
That's right.

[00:04:18] Speaker 01:
And your point is that when during the proceeding it occurred matters?

[00:04:23] Speaker 03:
I think under Vectra, and you asked me to distinguish Vectra, and that's kind of what we have to go on here case law-wise, that that was really the purpose of Vectra's finding was to protect the public.

[00:04:35] Speaker 03:
And here you don't have the same issue.

[00:04:38] Speaker 03:
Because here, if you look at what we had in re-exam going in, we had something narrower coming out of it.

[00:04:46] Speaker 00:
I'm just trying to remember, Vectra, I don't recall it saying anything about a particular sensitivity as to the timing of when the broadened claim was introduced and when the original claims were disclaimed.

[00:05:01] Speaker 00:
That's right.

[00:05:03] Speaker 00:
And as I recall, vectors seem to say something like, oh, well, once you disclaimed those claims, just pretend like it never existed.

[00:05:12] Speaker 00:
And that's how we're going to treat disclaimed claims.

[00:05:15] Speaker 00:
So you go back to square one as if the original patent never issued with those claims.

[00:05:21] Speaker 00:
Now let's see whether the claims you wish to introduce in your reissue

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are in fact broader compared to the original patent without those disclaimed claims.

[00:05:32] Speaker 00:
Am I missing something from Vectra?

[00:05:34] Speaker 03:
No, and I think I may have misled you in the way I answered your question.

[00:05:37] Speaker 03:
Vectra has a policy statement as to why they reached that conclusion.

[00:05:41] Speaker 03:
I think you're right, and that's what Vectra says.

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The problem with Vectra is it's applying that because it found there was this time period where the public had had an expectation

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that that subject matter had not been claimed.

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And that reasoning doesn't apply in this case.

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And if you look at Rembrandt and Guinn, we have other cases.

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They're not directly on point, but they clearly say that the Vectra analysis doesn't apply exclusively, that they look to that reasoning, that policy purpose, to apply it differently in different contexts.

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Here, this is the poster child for applying it differently.

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Because it literally was using rule 305 for its purpose, which was you can choose to either amend that claim, or you can make it a new claim with the same subject matter, only never broader.

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And that's exactly what happened here.

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Does that answer your question, Judge Laurie?

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I think it does.

[00:06:47] Speaker 03:
On the means plus function issue,

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The independent claims of the 781 patent don't use the word means.

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They use the term processor subsystem, and specifically processor subsystem determining is what we're talking about here.

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Even after Williamson, the presumption is that the drafter did not intend to impose a means plus function limitation on the claim absent the use of the term means in the claim.

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Williamson adjusted the presumption.

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It's not as strong as it was, but it's still there.

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So it's still FCA's burden.

[00:07:20] Speaker 03:
Apple versus Motorola tells us that if a limitation recites a known term or a generic term with sufficient structural meaning or recites either a known or generic term with a sufficient description of its operation, the presumption against means plus function claiming remains intact.

[00:07:39] Speaker 00:
My understanding of Williamson is if a claim limitation recites a function without sufficient structure for performing that function,

[00:07:49] Speaker 00:
and the defendant demonstrates that, then the presumption is overcome.

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And then the claim limitation should be treated as a 112-6 claim, a 112-f means plus functional claim.

[00:08:03] Speaker 00:
Is that right?

[00:08:04] Speaker 03:
That's right.

[00:08:05] Speaker 00:
So then the inquiry then is whether or not processor subsystem is sufficient structure for performing the function of determining

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know, based on various inputs, whether to activate some notification circuit.

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Is that the crux of the issue?

[00:08:22] Speaker 03:
Right.

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The question is whether processor subsystem is either on its face so structural you never get there, or it's sufficiently structural that it performs the function.

[00:08:32] Speaker 00:
Well, that's an interesting way you put that.

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And it gets to the heart of this case, I think, which is you added an extra out for yourself, which is

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Is processing subsystem something by itself connotes known structure?

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And if so, then you stay away from 112.6.

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And then alternatively, we ask, is it sufficient structure for performing the actual function that's recited in the claim limitation?

[00:09:03] Speaker 00:
I think there's an argument for that second piece, the last one, that a generic processor wouldn't alone be enough to perform these particularized functions that are recited throughout your independent claims.

[00:09:17] Speaker 00:
On the other hand, processor subsystem sounds a lot like processor, which is a definite class of structures.

[00:09:26] Speaker 00:
And so if that's all you need to do in this

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limitation which recites a processing subsystem for doing some particularized function, then that's good enough.

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But that's really the question that we have to figure out.

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And we've already ruled several times in a related claim construction exercise.

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That is, after you've determined that a claim limitation falls within 112F and is a means plus function limitation, then we must go to the specification and look for the corresponding structure.

[00:09:59] Speaker 00:
And we've said time and again that when it comes to some particularized function in the claim limitation, disclosing a processor alone, a generic processor, isn't enough structure.

[00:10:10] Speaker 00:
You also have to do an algorithm.

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And that's because the algorithm is actually the brains that performs the function.

[00:10:17] Speaker 00:
And it relies on the brawn of the generic processor to undertake those operations to accomplish the function.

[00:10:24] Speaker 00:
So the question is, if we've said,

[00:10:27] Speaker 00:
And it's not an if.

[00:10:29] Speaker 00:
Well, we have said, when it comes to that inquiry for 112f claim construction, that you have to have an algorithm disclosed in order to have sufficient structure for performing the claim function.

[00:10:44] Speaker 00:
Why would we have a different requirement when your claim limitation merely says processor for doing that same function in the claim?

[00:10:54] Speaker 03:
So Apple answers that question for us.

[00:10:56] Speaker 03:
Apple says it's a two-part test, and I think you said it right, that it's only after you determine that there's means plus function that you look to the specification to determine whether there's sufficient structure.

[00:11:07] Speaker 03:
And that's really where we are.

[00:11:08] Speaker 03:
We haven't gotten to that second step, but the district court of plot jumped to it.

[00:11:13] Speaker 03:
And that is the problem here, that you have to make one of the analyses to determine whether or not there's structure.

[00:11:20] Speaker 03:
And you're right, Williamson says you can get there two ways.

[00:11:23] Speaker 03:
One is it's not an ounce.

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And the other is the claim recites function without reciting sufficient structure.

[00:11:30] Speaker 03:
I think it's true that either one of those could put us into a means plus function that would then trigger the second level of cases.

[00:11:38] Speaker 03:
But what Apple says is you must look at that first step first.

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And we agree with you, processor subsystem on its face has structure.

[00:11:48] Speaker 03:
But what Apple says to get that second one, the way you look at it,

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is you look at whether the processor subsystem has structure within the claim.

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Does it have inputs and outputs?

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And specifically, you can go back to Linear Tech, which applied the objectives and operations test.

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And I think that's very effective here.

[00:12:09] Speaker 03:
You can look.

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Let's take claim 17.

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It has the most to work with.

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And it specifically has an objective.

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The objective there is to determine excessive fuel speed,

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and the upshift notification for excessive speed.

[00:12:23] Speaker 03:
I mean, excessive fuel and excessive speed, I'm sorry.

[00:12:26] Speaker 03:
Those are your objectives.

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And the operation, the how you get there, is in the processor subsystem determining, using all of the sensors that are in that claim, when to activate the proximity alarm circuit.

[00:12:40] Speaker 00:
As I understand Apple, and you're right, that Apple and a few other cases

[00:12:46] Speaker 00:
They show sensitivity towards trying to figure out are there other words in the claim limitation that help understand what the limitation is, not really just only what the limitation does.

[00:13:02] Speaker 00:
And if there's enough in there that tells you how the function is being achieved, then you're going to not fall within means plus function.

[00:13:13] Speaker 00:
That's correct.

[00:13:15] Speaker 00:
As I understood the way you argued and your expert argued, it seemed to just focus on whether there's any structure, any inputs, any outputs, any connections that are in the claim limitation.

[00:13:29] Speaker 00:
And if so, then that's enough.

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And I think our case law requires more.

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It needs to have those inputs, outputs, and connections to other devices that reveal, therefore, how the function is being achieved, that

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that informs us exactly what is inside the black box.

[00:13:48] Speaker 00:
Here it would be a processor subsystem.

[00:13:50] Speaker 00:
And I didn't see you taking that extra step and making that kind of an argument.

[00:13:57] Speaker 03:
A couple of things there.

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Here, it does show you the how.

[00:14:00] Speaker 03:
It says the how is by reading the sensors, right?

[00:14:03] Speaker 03:
And in different claims, it reads that differently.

[00:14:05] Speaker 03:
Sometimes it's using the memory subsystem to get there and different triggers that come from those claims.

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Sometimes it's specifically directly to the censors.

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That is the how.

[00:14:18] Speaker 03:
There are a couple of issues here.

[00:14:19] Speaker 03:
One is, Judge Tenney noted several times, velocity argued, velocity pointed to.

[00:14:27] Speaker 03:
It constantly goes back to who has the burden, and it remains FCA's burden.

[00:14:32] Speaker 03:
And it's hard to remember that in this context, especially since we had the only expert.

[00:14:37] Speaker 03:
But that is a little bit telling yeah, it's almost for your bottle time.

[00:14:42] Speaker 01:
Yes, I want to save some yes We'll give you two minutes for a bottle.

[00:14:45] Speaker 04:
Thank you Miss Woodworth Good morning May it please the court

[00:15:01] Speaker 04:
The court should affirm the district court judgment here.

[00:15:04] Speaker 00:
It's a pretty common practice to use a claim limitation that starts with processor four, isn't it?

[00:15:09] Speaker 00:
Or game controller four.

[00:15:12] Speaker 04:
It is.

[00:15:12] Speaker 04:
And that's the classic syntax under which we understand that it's invoking 112-6.

[00:15:17] Speaker 00:
So all those claims, in your view, are means plus function limitations?

[00:15:26] Speaker 04:
So you have to do the two-step that we've been talking about in terms of Williamson.

[00:15:30] Speaker 04:
And so it depends on, first, is there a definite understood structure?

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And second, is that structure sufficient for performing the function that's recited thereafter?

[00:15:40] Speaker 04:
So if the step, if here, it recited simply processor subsystem for receiving data from the sensors and stopped right there, that would be a different inquiry than what we have here, which is a more complicated determining step, a step of determining whether or not you're going to activate a fuel over injection notification circuit.

[00:15:59] Speaker 04:
There's no question that a general processor does not have that capability standing alone.

[00:16:05] Speaker 00:
You're talking about in-rate cats, I suppose?

[00:16:07] Speaker 04:
In-rate cats, and there's an entire line.

[00:16:09] Speaker 04:
In-rate cats is a very good example because it actually has processing means.

[00:16:13] Speaker 04:
as does the Brown versus Baylor health care system case.

[00:16:16] Speaker 02:
It was cited.

[00:16:17] Speaker 02:
In Red Cats, just to be clear, it wasn't a case, was it, about whether it's 112-6?

[00:16:21] Speaker 02:
It actually used the words means for, and everyone agreed it was 112-6, correct?

[00:16:26] Speaker 04:
Everyone did agree that it was 112-6.

[00:16:27] Speaker 04:
There was one example where it was processing means for rather than means for processing.

[00:16:32] Speaker 04:
But that's correct.

[00:16:33] Speaker 04:
The court was not looking at whether it was 112-6.

[00:16:37] Speaker 04:
In the Brown versus Baylor health care case?

[00:16:39] Speaker 02:
But that's what I'm worried about in terms of looking at 112-6.

[00:16:43] Speaker 02:
What I'm worried about is using the tail to wag the dog.

[00:16:48] Speaker 02:
The cat's decision absolutely helps you in that it says processor means four, needs an algorithm to be disclosed.

[00:16:58] Speaker 02:
But that's because it was in the context of we're already in 112.

[00:17:03] Speaker 02:
So we have a million cases that make it clear that the patentee has a higher disclosure requirement once he has elected to use 112.

[00:17:13] Speaker 02:
Atmel and others call it the quid pro quo for using 112.

[00:17:17] Speaker 02:
You have to disclose more.

[00:17:20] Speaker 02:
It doesn't matter if a skilled artisan would know what kind of algorithm to use.

[00:17:25] Speaker 02:
You have to disclose it anyway, because that's the pre-pro quote for you getting to use means for.

[00:17:30] Speaker 02:
So what I'm worried about is, so where Judge Bryson was, in the CATS opinion, was in a place where the patentee admittedly had to disclose more.

[00:17:39] Speaker 02:
He could not rely on what a skilled artist would know.

[00:17:41] Speaker 02:
The spec had to actually list it.

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But if we use that to decide whether it's 112.6,

[00:17:49] Speaker 02:
then we're actually requiring the more in the spec before we ever figured out whether the patentee, in fact, wanted to avail itself of 112.6.

[00:17:59] Speaker 04:
But there's no question that the tests are very similar.

[00:18:01] Speaker 04:
Williamson, which this court held in bank, asks whether or not there's sufficient structure for performing

[00:18:10] Speaker 04:
whatever the recited functions are.

[00:18:13] Speaker 04:
And that's very similar.

[00:18:14] Speaker 02:
But when you're thinking about whether it should be 112.6, isn't that whether there's sufficient structure viewed through an ordinary artisan's eyes with the knowledge an ordinary artisan has?

[00:18:28] Speaker 04:
I believe that that's correct.

[00:18:29] Speaker 04:
I believe that the second part is also looking through the person of ordinary skill in the art in his eyes as well.

[00:18:36] Speaker 04:
What second part?

[00:18:37] Speaker 04:
The second step, once you've decided that you're 112-6 and you're looking for corresponding structure.

[00:18:40] Speaker 02:
No, it's not.

[00:18:40] Speaker 02:
No, it's not, because you can't use what the ordinary artisan knows once it's 112-6.

[00:18:45] Speaker 02:
The spec has to disclose it.

[00:18:47] Speaker 02:
We have case after case that says, even if a skilled artisan would have known what structures could perform this, not good enough.

[00:18:55] Speaker 02:
The spec has to disclose it.

[00:18:57] Speaker 02:
But what I'm saying is, I think in assessing whether something is 112-6,

[00:19:02] Speaker 02:
I think we can look at said processor subsystem determining and say, would a skilled artisan have known that a processor would do this, a physically definite structure, and would a skilled artisan have known exactly what type of algorithm or subroutine or software would be capable of doing it?

[00:19:20] Speaker 04:
And then let me tell you what the evidence says on that point.

[00:19:23] Speaker 04:
On that point, we asked Velocity's experts specifically that what type of algorithm would be required here.

[00:19:30] Speaker 04:
He testified, and this is at APPX 3688.

[00:19:33] Speaker 04:
They asked, you know, what type of algorithm would be required?

[00:19:38] Speaker 04:
And what he said is there are a number of ways to implement that claim structure.

[00:19:43] Speaker 04:
Implement the claim structure that would vary based on a number of factors, such as the vehicle attributes, the operating conditions, et cetera.

[00:19:51] Speaker 04:
So it's just, it has to do with what's in the claim limitation.

[00:19:55] Speaker 04:
All right?

[00:19:56] Speaker 04:
And this is what Judge Durkin relied on to say, this is exactly what functional claiming is.

[00:20:02] Speaker 04:
He's saying, what the black box, what we put in the black box, what the something else is besides the processor depends entirely

[00:20:12] Speaker 04:
and what the function is that I've written.

[00:20:14] Speaker 04:
Here, we don't just have activating fuel over injection notification circuits.

[00:20:19] Speaker 04:
We're also activating up shift and down shift notifications.

[00:20:23] Speaker 04:
The algorithms.

[00:20:24] Speaker 01:
Council, I want to ask you about broadening.

[00:20:28] Speaker 01:
Why shouldn't we reverse the broadening rejection on the basis that at the time, claims 69, et cetera, were added, there was no broadening.

[00:20:41] Speaker 01:
Did the disclaimer had occurred later?

[00:20:45] Speaker 04:
Because there is a difference.

[00:20:47] Speaker 04:
And I heard the discussion here between canceling or amending claims and disclaiming them.

[00:20:54] Speaker 04:
It's 37 CFR 1.530.

[00:20:58] Speaker 04:
And again, this is cited in the district court's opinion.

[00:21:01] Speaker 04:
That says that amending and canceling claims during a re-examination, they do not have effect until you have the re-examination certificate.

[00:21:10] Speaker 04:
So there is a difference in procedure if you're trying to get a claim scope by amendment than there is if you're trying to get it by disclaimer.

[00:21:18] Speaker 04:
The disclaimer takes place immediately.

[00:21:20] Speaker 04:
So immediately in December of 2014, those claims were no longer in the patent.

[00:21:27] Speaker 04:
Whereas if you are amending or if you are canceling, those claims remain part of the broadening analysis because they remain part of the original patent until the day that the- So there are two rules.

[00:21:41] Speaker 01:
An amendment takes place immediately, but- Other way around.

[00:21:45] Speaker 01:
An amendment doesn't take place until the reissuance.

[00:21:52] Speaker 01:
Exactly.

[00:21:53] Speaker 01:
But the disclaimer takes place immediately ex post facto?

[00:21:59] Speaker 04:
That's exactly right.

[00:22:00] Speaker 01:
That's a strange rule, isn't it?

[00:22:02] Speaker 04:
Well, it actually, if you look at the MPEP, it suggests disclaimers are not meant to be used in this way.

[00:22:10] Speaker 04:
Disclaimers are meant to rid the world of claims that have validity problems.

[00:22:17] Speaker 04:
And they are not meant to be used in order to add or amend other claims.

[00:22:22] Speaker 04:
That MPEP section is cited in our brief.

[00:22:25] Speaker 04:
So this certainly was a strange procedure that Velocity tried to use.

[00:22:29] Speaker 04:
And if you look at the reason that they were trying to do it, it actually all makes sense.

[00:22:34] Speaker 04:
At the time that the re-examination was filed, Mercedes was another defendant that they had sued in the case.

[00:22:40] Speaker 04:
And Mercedes was trying desperately to file IPRs rather than go the ex parte re-examination route.

[00:22:47] Speaker 04:
So Mercedes first filed a

[00:22:49] Speaker 04:
IPR on claims 31 and 32 of the original patent.

[00:22:54] Speaker 04:
Velocity then amended those claims and was trying to change them during the re-examination process.

[00:23:00] Speaker 00:
IPR, you mean?

[00:23:01] Speaker 04:
No, the IPR was not yet instituted.

[00:23:04] Speaker 00:
Oh, this is the re-exam?

[00:23:05] Speaker 04:
Exactly.

[00:23:06] Speaker 04:
So the sequence was re-examination first, then Mercedes' first IPR, then

[00:23:14] Speaker 04:
Then Velocity amended its claims.

[00:23:17] Speaker 04:
So Mercedes tried to file a second IPR on the amended re-exam claims.

[00:23:22] Speaker 04:
And at that point, Mercedes asked the PTO to merge all of these proceedings so that it could participate rather than having an ex parte procedure that took place with amendments under the re-examination rules.

[00:23:35] Speaker 04:
And at that point, when Mercedes asked for the merging of these so that it could participate,

[00:23:41] Speaker 04:
The board declared that it would have a status conference.

[00:23:44] Speaker 04:
And that's when Velocity decided, oh, I'm going to statutorily disclaim them.

[00:23:49] Speaker 04:
That mooted both of the IPRs.

[00:23:53] Speaker 04:
So by statutorily disclaiming, they could get dismissal of the IPRs.

[00:23:56] Speaker 04:
Mercedes would not be participating.

[00:23:59] Speaker 04:
Velocity would not be having to amend its claims under the IPR statutes, but rather could do it ex parte under re-exam.

[00:24:07] Speaker 04:
And that occurs immediately, as Your Honor suggested.

[00:24:11] Speaker 04:
So just as in Vectra, by the end of the re-examination, the disclaimer had taken place.

[00:24:23] Speaker 04:
We can no longer count them.

[00:24:24] Speaker 04:
So when we get to the end of the proceeding and we're doing a comparison, have they obtained claims that are broader in scope than the original patent?

[00:24:32] Speaker 04:
The answer is exactly the same here as it was in Vectra.

[00:24:36] Speaker 04:
So the timing is really inconsequential.

[00:24:38] Speaker 00:
This is a, these statutory disclaimers, they don't have to occur inside of a reissue or re-exam, right?

[00:24:45] Speaker 00:
You can file it at any time?

[00:24:47] Speaker 04:
That's exactly right.

[00:24:48] Speaker 04:
The most often case is that they actually occur as part of a litigation where there's no ongoing patent proceeding.

[00:24:59] Speaker 04:
Judge Moore, had I fully answered your question with respect to the means plus function?

[00:25:04] Speaker 04:
No.

[00:25:06] Speaker 04:
Okay, well let's return there.

[00:25:08] Speaker 04:
The point that I was trying to make was that as Judge Chen pointed out, in order to have sufficient structure to perform a step like determining whether or not to activate a FONC, we have to know more than the inputs.

[00:25:22] Speaker 04:
The inputs don't get us there.

[00:25:24] Speaker 04:
The inputs do not make the decision.

[00:25:26] Speaker 04:
The inputs do not tell us

[00:25:27] Speaker 04:
Do not tell us when to make that activation, which is exactly what's required of the claim.

[00:25:32] Speaker 02:
Determine when.

[00:25:33] Speaker 02:
You're talking, but the problem is we have a lot, lot, lot of case law out there.

[00:25:38] Speaker 02:
And in fact, I have a chart here of every case we've ever decided.

[00:25:43] Speaker 02:
And in one column is everything that was found to amount to sufficient structure.

[00:25:46] Speaker 02:
And the other column is everything that was found to amount to means plus function language, even though the word means four were not used.

[00:25:54] Speaker 02:
We should compare charts.

[00:25:56] Speaker 02:
I could run through all of them with you, but yours looks a lot more like the sufficient structure column than it does the means for column.

[00:26:06] Speaker 02:
And what you're saying about what you would like to see in the claim itself before it could avoid 112.6 doesn't seem consistent, for example, with digital detector for receiving and transmission and detecting said predetermined signal.

[00:26:21] Speaker 02:
Doesn't tell you how.

[00:26:23] Speaker 02:
Digital detector doesn't tell you how.

[00:26:25] Speaker 02:
We found that was sufficient structure.

[00:26:27] Speaker 02:
And that's a post-Williamson case.

[00:26:29] Speaker 02:
There was no issue there.

[00:26:31] Speaker 02:
So my problem is I've gone through all of these.

[00:26:35] Speaker 02:
And I understand the logic of your argument pulling together Katz and Williamson.

[00:26:41] Speaker 02:
But what concerns me is you're using the standard and applying it to the patentee, the standard for what's required once 112.6 is determined.

[00:26:52] Speaker 02:
And I feel that that's a higher burden on the patentee, that enablement doesn't require patentees to necessarily disclose algorithms.

[00:27:01] Speaker 02:
Now, 112.6 might, but enablement doesn't.

[00:27:05] Speaker 02:
And so I'm not sure I should decide processor subsystem isn't enough all by itself.

[00:27:14] Speaker 02:
for enablement purposes, because a skilled artist would know how to do this.

[00:27:18] Speaker 04:
But that's exactly what we asked.

[00:27:19] Speaker 04:
That's exactly what we, again, going back to 3688, that's exactly what we asked the expert here.

[00:27:27] Speaker 04:
Is a processor enough?

[00:27:29] Speaker 04:
Does the processor have to be programmed?

[00:27:31] Speaker 04:
Yes, to work.

[00:27:32] Speaker 04:
Any microprocessor has to be programmed.

[00:27:35] Speaker 04:
in that I'm talking about a microprocessor.

[00:27:38] Speaker 04:
If you have a microprocessor that's not programmed, it's not going to work.

[00:27:42] Speaker 04:
So we know that it has to be programmed.

[00:27:44] Speaker 02:
But that argument would lead to a very unpalatable conclusion for me, which is any time there is a function that implicates software,

[00:27:53] Speaker 02:
That has to be 112.6.

[00:27:55] Speaker 02:
You don't have a choice.

[00:27:57] Speaker 02:
Has to be 112.6.

[00:27:58] Speaker 04:
I think that for receiving, storing, those types of general computer terms or functions, those can be performed without an algorithm.

[00:28:12] Speaker 04:
So there, the hardware is sufficient structure.

[00:28:15] Speaker 04:
But where you do have more complicated... But that's a test that only applies once you're in 112-6.

[00:28:19] Speaker 04:
I know, but that's exactly the balance, right?

[00:28:22] Speaker 04:
The balance is if you're trying to claim the software in terms of the function that it performs, that's exactly the balance that Williamson was talking about.

[00:28:31] Speaker 02:
Okay, then how could our core in the Apple case have said program that can operate the movement of a pointer over a screen is sufficient structure

[00:28:39] Speaker 02:
and not implicating 112-6.

[00:28:40] Speaker 04:
I think, again, I think looking at any of the pre-Williamson cases is difficult in terms of.

[00:28:45] Speaker 02:
It's not.

[00:28:45] Speaker 02:
It was decided in 2018.

[00:28:47] Speaker 02:
Oh, that's the second Apple case.

[00:28:49] Speaker 04:
I apologize.

[00:28:50] Speaker 04:
I don't know that I have that function that was in front of us.

[00:28:53] Speaker 02:
Well, I'll read it to you.

[00:28:53] Speaker 02:
Program that can operate the movement of the pointer over a screen.

[00:28:59] Speaker 04:
I believe somewhere within that opinion.

[00:29:01] Speaker 02:
Within the word program, there's sufficient structure that explains exactly how it's going to operate the movement?

[00:29:07] Speaker 04:
Well, I do believe that the case itself, the holding there, what the judges found was that it did provide the how.

[00:29:15] Speaker 04:
And in that way, it's distinguishable.

[00:29:17] Speaker 04:
Here we have Judge Durkin, who looked at the intrinsic and extrinsic evidence

[00:29:23] Speaker 04:
And he found, I mean, this is a fact finding.

[00:29:25] Speaker 04:
He found that there is not sufficient structure.

[00:29:27] Speaker 02:
No, it's not a fact finding.

[00:29:28] Speaker 02:
Deciding whether something is 112.6 or not is not a fact finding.

[00:29:31] Speaker 02:
That's a question of law.

[00:29:33] Speaker 04:
In Williamson, this case said that there were underlying facts that can be part of that analysis, just as it is in TEVA and any type of claim construction.

[00:29:41] Speaker 02:
Have we ever held that this is a fact finding?

[00:29:45] Speaker 04:
I don't know.

[00:29:48] Speaker 04:
I don't know if you expressly have.

[00:29:49] Speaker 04:
But certainly in Williamson, you said that there were underlying facts.

[00:29:52] Speaker 04:
So I think sufficiency of structure and whether or not something discloses sufficient structure does include factual findings in terms of what is the function?

[00:30:03] Speaker 04:
What does it require in order to be sufficiently disclosed how to perform that function?

[00:30:09] Speaker 04:
And Judge Durkin here found that there was not sufficiency, particularly relying on the testimony that I've already cited

[00:30:17] Speaker 04:
And what he said was that, looking at this, it's very clear that what you're doing is functional claiming.

[00:30:22] Speaker 04:
What you're doing is exactly what 112.6 is focused on.

[00:30:27] Speaker 04:
If you've got a claim that you are trying to define by the scope of what the function is, you are bound to the strictures and the balance set forth by that statute.

[00:30:37] Speaker 00:
I guess if this claim doesn't fall within 112.6, then the claim limitation covers

[00:30:48] Speaker 00:
any processor programmed in any particular manner to perform this function.

[00:30:55] Speaker 04:
That's exactly right.

[00:30:56] Speaker 04:
And that's the point that I'm trying to make.

[00:30:57] Speaker 00:
And then when I think about the digital detector case that Judge Moore was referring to earlier, essentially that claim is any digital detector, no matter how it's designed, to perform that recited function there.

[00:31:16] Speaker 00:
And in those types of cases, digital detectors, an example, we allow those to escape the strictures of 112f.

[00:31:27] Speaker 00:
But for these processor four claims that invoke some need for programming to perform the function, I guess you're saying we need to go and throw those into 112f.

[00:31:43] Speaker 04:
Well, certainly I think that that's what

[00:31:45] Speaker 04:
the definiteness case law suggests that there's not sufficient structure.

[00:31:50] Speaker 04:
But I don't know that the other cases are not consistent with that.

[00:31:54] Speaker 04:
My understanding is that all of the other cases that have analyzed whether or not there's sufficient structure have found that there is something more.

[00:32:02] Speaker 04:
There is enough there, including the Apple case.

[00:32:05] Speaker 04:
I think the MTD products case that we cited in a Rule 28 letter to this court is another good example where you have a lot of structural language

[00:32:15] Speaker 04:
The claim term at issue was a mechanical control assembly.

[00:32:19] Speaker 04:
It was very clear what the inputs were.

[00:32:21] Speaker 04:
It was very clear what that assembly was connected to.

[00:32:24] Speaker 04:
But what wasn't clear was how it was going to actuate.

[00:32:27] Speaker 01:
Thank you, counsel.

[00:32:28] Speaker 04:
Thank you, your honor.

[00:32:29] Speaker 01:
Your time has more than expired.

[00:32:32] Speaker 01:
Ms.

[00:32:32] Speaker 01:
McAlmus?

[00:32:44] Speaker 00:
Before we get into means plus function, which I'm very interested in, can you explain why you didn't merely cancel claims 31 and 32 and why the patent owner elected to disclaim them?

[00:32:58] Speaker 03:
Excuse me, Your Honor.

[00:32:59] Speaker 03:
Yes.

[00:33:00] Speaker 03:
I mean, I think procedurally, FCA's counsel described it correctly that there's litigation going on and there's an IPR going on at the same time.

[00:33:10] Speaker 03:
So the decision was made to drop those

[00:33:12] Speaker 03:
in response to moving along and I think they said that expressly in the in the papers why they were doing it and that was so that they could move forward with the district court litigation which had been right but my question is the choice of disclaimer versus the other available choice which was to simply cancel the claims or amend I don't know I mean I don't have anything in the record to answer that question precisely I can tell you that

[00:33:40] Speaker 03:
The amended and new claims occurred November 3.

[00:33:43] Speaker 03:
The disclaimer didn't occur until December 10.

[00:33:46] Speaker 03:
So it was much later, temporally.

[00:33:48] Speaker 03:
And if you go back to what we're saying, Vectra is saying the policy reason for the wiping out the claims as if they never existed, it's public notice.

[00:34:00] Speaker 03:
And here, the public at all times was on notice of what the claim was and what the intent was.

[00:34:07] Speaker 03:
The statute 305 allows either.

[00:34:10] Speaker 03:
And it doesn't qualify one over the other.

[00:34:12] Speaker 03:
And the MPE site that they have in their brief says it's not talking about it in the context of 305.

[00:34:20] Speaker 03:
In fact, it says there's not really a mechanism for this.

[00:34:23] Speaker 03:
Therefore, we don't do it.

[00:34:26] Speaker 03:
So it's just simply not in the same context.

[00:34:29] Speaker 03:
And I'm running out of time quickly, so I want to hit some of those.

[00:34:32] Speaker 03:
High points on the means plus function if we can we'll give you an extra minute, okay?

[00:34:39] Speaker 03:
Judge Chen I think what you're struggling with what we're all struggling with is Means if it's not a means plus function claim there may be other problems with the claim none of those are before us today Apple alludes to this that there may be an indefinite issue or enablement issue I'm not saying that exists here in fact.

[00:34:58] Speaker 03:
I'm saying it's not

[00:34:59] Speaker 03:
But that's the struggle.

[00:35:01] Speaker 03:
And you can't interpose those principles on the context of determining whether a means plus function claim exists in the first instance.

[00:35:09] Speaker 03:
From an evidentiary standpoint, processor subsystem is a known meaning in the computer industry.

[00:35:15] Speaker 03:
We've established that.

[00:35:16] Speaker 03:
It's a recognized class of structures.

[00:35:19] Speaker 03:
And all of the case law says that's all we have to have.

[00:35:21] Speaker 03:
It doesn't have to be a specified structure for it to satisfy the prong of determining whether it's a use.

[00:35:27] Speaker 00:
Let's just accept as a given

[00:35:29] Speaker 00:
no off-the-shelf processor could perform these recited functions alone, without programming, without some specialized programming.

[00:35:40] Speaker 00:
Then what do we do?

[00:35:42] Speaker 00:
Because if the thing that is needed to perform the function is actually made up of two things, the processor and the programming, then is it enough to just

[00:35:57] Speaker 00:
recite one of those two things in the claim limitation to count as sufficient structure when you're claiming a function.

[00:36:04] Speaker 03:
Yes.

[00:36:05] Speaker 03:
I think it is under the case law.

[00:36:06] Speaker 03:
The problem here is, like I said.

[00:36:10] Speaker 00:
I don't know if the case law is so clear, because the case law that we have so far, we have examples where the claim term in question

[00:36:21] Speaker 00:
is not definite.

[00:36:23] Speaker 00:
It's a nonce word.

[00:36:25] Speaker 00:
It's a unit.

[00:36:26] Speaker 00:
It's a mechanism.

[00:36:26] Speaker 00:
It's something like that.

[00:36:29] Speaker 00:
It doesn't really mean anything.

[00:36:30] Speaker 00:
It's a black box.

[00:36:32] Speaker 00:
Then there's the other kinds of claim terms where we've concluded, this is something that people of skill in the art understand.

[00:36:39] Speaker 00:
It refers to a known class of structures to perform this particular function, so we're not concerned.

[00:36:47] Speaker 00:
And here we have something different, where we have what

[00:36:52] Speaker 00:
just for sake of argument, is an incomplete type of structure.

[00:37:00] Speaker 00:
And that is the reference to the processor, but no explanation as to how that processor is undertaking the operations to achieve the function.

[00:37:10] Speaker 00:
So that's why this case isn't necessarily bound up by anything we've done so far, I don't think.

[00:37:20] Speaker 03:
I think, if I'm hearing you right, what you're really struggling with from seeing a fair number of how computers work is the same desire that FCA is trying to interpose, which is the need for the absolute algorithm that tells you how to do it.

[00:37:34] Speaker 03:
And I think we don't have to have that.

[00:37:35] Speaker 03:
I think that's what the case law is telling us.

[00:37:38] Speaker 03:
And I appreciate that struggle.

[00:37:40] Speaker 03:
But I think these claims, as they're written, they give you the substance of the how.

[00:37:46] Speaker 03:
They tell you what they're looking to to make the determination.

[00:37:50] Speaker 03:
They're looking to the memory subsystem in some instances.

[00:37:54] Speaker 03:
They're looking to the speed.

[00:37:56] Speaker 03:
They're telling you all the data they're taking.

[00:37:58] Speaker 03:
And if you look at the limitation we're actually talking about here, the processor subsystem determining, what it determines is when to activate the notifications.

[00:38:09] Speaker 03:
How it does that is based upon the data it's receiving from the sensors, the memory subsystem, and the other places.

[00:38:16] Speaker 01:
Thank you, counsel.

[00:38:17] Speaker 01:
Thank you, your honor.

[00:38:18] Speaker 01:
I think you had a good opportunity.

[00:38:20] Speaker 01:
This is submitted.