[00:00:06] Speaker 01:
The next case for argument is 19-1507-2020 Vision versus Vision Precision.

[00:00:42] Speaker 01:
Judge Wallach has just observed that 2020 is a good number to start the new year with.

[00:00:47] Speaker 03:
It is a great number to start the year with.

[00:00:51] Speaker 03:
May it please the court, Lee Marshall, on behalf of 2020 and 2020.

[00:00:56] Speaker 03:
The district court in this case construed three claim terms in a manner that excluded preferred embodiments from the scope of the claim.

[00:01:04] Speaker 03:
If we affirm on eye care practitioners, does that end the case?

[00:01:10] Speaker 03:
Your Honor, there is a consent judgment in this case that expressly says, and I'm looking for it right now, that any change of any, this is paragraph 12 of the consent decree.

[00:01:29] Speaker 03:
On appendix 21.

[00:01:31] Speaker 03:
Yes, thank you.

[00:01:36] Speaker 03:
It says, Your Honor, that

[00:01:38] Speaker 03:
It's Appendix 24, which it has.

[00:01:40] Speaker 03:
Yes, exactly.

[00:01:41] Speaker 03:
I'm looking at paragraph 12.

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Should the court's markman order be altered in any way on appeal, nothing shall be named an admission, that the defendants are entitled to judgment of non-infringement,

[00:01:53] Speaker 03:
It goes on, paragraph 13, where we reserve the right to appeal from the court's construction of each of the three disputed claim terms.

[00:02:03] Speaker 03:
So, Your Honor, we would submit that all three claim terms are at issue here.

[00:02:09] Speaker 03:
Now, with respect to ICARE practitioner.

[00:02:12] Speaker 01:
Let me just see if I understand that.

[00:02:16] Speaker 01:
Because I kind of was thinking based on claim paragraph 11,

[00:02:21] Speaker 01:
based on each of the three disputed claims terms.

[00:02:26] Speaker 01:
And then it goes on to say, we agree that defendants are entitled to judgment as a matter of law on the issue of non-infringement, because defendants and systems do not infringe the 62 patent on three separate grounds.

[00:02:43] Speaker 01:
So I took that to mean, and I didn't think you were disputing the fact that if we were to affirm on any one of those three claim constructions, there would be non-infringement.

[00:02:54] Speaker 03:
I think that's accurate, Your Honor.

[00:02:56] Speaker 01:
That's accurate.

[00:02:57] Speaker 01:
OK.

[00:02:57] Speaker 01:
All right.

[00:02:57] Speaker 01:
Thank you.

[00:02:58] Speaker 01:
So let me ask you a follow-up, though, on the eye practitioner thing to interrupt Judge Wallach, which is, it's a little odd to me, because even though the claim of construction dealt with this question of whether it was a practitioner or a doctor or a technician, there was a second dispute related to eye practitioners, which you cover in the briefing, which is whether or not it had to be the same person, irrespective of whether it's a technician or a doctor.

[00:03:24] Speaker 01:
So hypothetically, if we were to agree with you that it doesn't have to be a practitioner, but disagree with you that it has to be

[00:03:37] Speaker 01:
and think that it has to be the same person, would that be a sufficient basis for affirming that finding of non-infringement on the I practitioner?

[00:03:47] Speaker 03:
No, Your Honor.

[00:03:48] Speaker 03:
I do not believe so.

[00:03:49] Speaker 01:
And why are we arguing about it if it's not relevant to infringement?

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I may have misstated it, or I may have stated it inartfully, but you know what I'm talking about?

[00:03:59] Speaker 01:
That second part of the I practitioner dispute.

[00:04:04] Speaker 03:
Your Honor, my understanding is if the three claim terms are disagreed with or the constructions are disagreed with in any respect, then that invalidates the stipulation of non-infringement.

[00:04:19] Speaker 01:
Wait a minute.

[00:04:20] Speaker 01:
So now we're going back to even the three of them.

[00:04:23] Speaker 03:
So I may have said that too quickly.

[00:04:27] Speaker 03:
What I mean by that is if all three of them

[00:04:30] Speaker 03:
are modified in any respect, then that would invalidate the stipulation of non-infringement.

[00:04:37] Speaker 02:
That would take all three.

[00:04:38] Speaker 03:
Correct.

[00:04:39] Speaker 02:
So if we just stick on practitioners and we disagree with you, that ends it.

[00:04:47] Speaker 03:
You would have to fully agree with the district court's construction in every respect.

[00:04:52] Speaker 01:
So what happens if we only agree with part of the district court's construction?

[00:04:57] Speaker 03:
Then that would invalidate the stipulation of non-infringement.

[00:05:00] Speaker 01:
Well, it would go back for something right.

[00:05:04] Speaker 01:
I mean, what was the import of the, you were arguing about not just whether or not it was a technician or a doctor, but you were also arguing about whether or not the person had to be the same person doing the steps of the claims.

[00:05:18] Speaker 01:
That's something you covered in your briefs.

[00:05:21] Speaker 01:
and so forth, right?

[00:05:22] Speaker 01:
Right.

[00:05:22] Speaker 01:
Right?

[00:05:22] Speaker 01:
About that, that that was an issue in dispute.

[00:05:25] Speaker 01:
So I assumed that that had something to do with stipulation of non-infringement, given that the district court said it didn't have to be the same person.

[00:05:34] Speaker 03:
Your Honor, my understanding is, and I've been steeped in the claim construction issues and less steeped involved in the infringement issues, because I was not in the district court.

[00:05:45] Speaker 03:
But my understanding is that the

[00:05:49] Speaker 03:
The issue of the one or more, or the issue of does it have to be the same person improves the infringement argument, but is not a requirement for argument below.

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So it's a question of is it dispositive?

[00:06:05] Speaker 03:
I think the answer is no.

[00:06:07] Speaker 03:
Is it helpful?

[00:06:08] Speaker 03:
Sure.

[00:06:09] Speaker 02:
Now, technician review and evaluate examination data to provide a health report.

[00:06:17] Speaker 02:
I'm sorry, Your Honor, I missed your question.

[00:06:19] Speaker 02:
Can a technician review and evaluate examination data in order to provide a health report?

[00:06:27] Speaker 03:
Yes.

[00:06:27] Speaker 03:
What in the record supports that?

[00:06:30] Speaker 03:
Well, I think one thing that's in the record that supports that is the agreed upon construction of customer evaluation data, which does not say, for example, that the customer evaluation data has to be a diagnosis or a prescription.

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Can an unlicensed individual diagnose eye conditions and write prescriptions?

[00:06:55] Speaker 03:
Your Honor, there are some statutory citations in the record that there's no extrinsic evidence in the record.

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But I would point the court.

[00:07:05] Speaker 03:
They relied heavily on the Florida statutory scheme below.

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And I would point the court to Florida statute 463.009 that includes the use of non-licensed, supportive personnel who may be

[00:07:25] Speaker 03:
Delegated duties under supervision and perform data gathering preliminary testing prescribed visual therapy and related duties and so So long is the ultimate

[00:07:40] Speaker 03:
I think under the Florida scheme, the ultimate diagnosis or ultimate prescription is done by the licensed professional.

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The non-licensed professional can be involved in the process, can review the data and evaluate the data.

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And that's particularly true here, where it was agreed, originally they had diagnosis and prescription in customer evaluation data, but they pulled that out.

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And the agreed upon construction of that does not

[00:08:06] Speaker 03:
include those things.

[00:08:07] Speaker 03:
So you can have, and there's numerous tests.

[00:08:11] Speaker 03:
I think there are about 11 tests described in columns 29 through 31 of the patent.

[00:08:18] Speaker 03:
And there's nothing in there that says all of those tests have to be reviewed and evaluated by a licensed professional.

[00:08:25] Speaker 03:
There's nothing that says that.

[00:08:26] Speaker 02:
Let me refer you to 1741 to 1743 in the opinion.

[00:08:32] Speaker 02:
The applicant explained that audio response system did not mean an interactive voice system that

[00:09:00] Speaker 02:
with a customer during the subjective portion of the eye examination in an automated and iterative process.

[00:09:07] Speaker 02:
How is that not a clear and unmistakable disclaimer?

[00:09:11] Speaker 03:
Yeah, I don't think it is, Your Honor, because certainly the audio response system is involved in the iterative process during the subjective testing.

[00:09:21] Speaker 03:
And there are examples.

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For example, the asynchronous.

[00:09:27] Speaker 03:
testing of claim 25 is a clear example where that's completely automated.

[00:09:33] Speaker 03:
And if you look at the patent in column 32, the patent describes varying levels of automation and assistance.

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This is column 32, line 4.

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And it distinguishes, Your Honor, between asynchronous and synchronous

[00:09:52] Speaker 03:
examinations.

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And in the asynchronous examinations, this is column 32, line 13, those are described as fully automated processes.

[00:10:04] Speaker 03:
Whereas the synchronous examinations, and this is column 33, lines 49 through 64, talk about that assistance from remote practitioners may occur synchronously and allow the remote practitioner to monitor and control

[00:10:21] Speaker 03:
the ophthalmic equipment and instruments and or the administration of the tests through the real-time connection with the customer diagnostic center.

[00:10:30] Speaker 03:
So this is a clear reference to the fact that, yes, in an asynchronous testing that's fully automated, then sure, you're going to have the remote practitioners divorced from the process.

[00:10:45] Speaker 02:
Let me take you to some areas where I'm quite concerned.

[00:10:50] Speaker 02:
On page three of the Blueberry, you say the district court, quote, required the parties to ghostwrite proposed Markham orders and then adopted Vision Precision's proposed order virtually verbatim.

[00:11:07] Speaker 02:
I practiced law in federal courts for 20 years before I went on the bench.

[00:11:11] Speaker 02:
And a lot of the time, courts required the submission of a draft order from each side.

[00:11:17] Speaker 02:
Is that the same as ghostwriting?

[00:11:20] Speaker 02:
Well, I think that- Have you ever filed a proposed order?

[00:11:24] Speaker 03:
Certainly, Your Honor.

[00:11:26] Speaker 03:
And there are occasions where a court will use passages from a proposed order in the final order.

[00:11:35] Speaker 03:
And there's nothing wrong with that.

[00:11:37] Speaker 02:
I've seen courts strike proposed and sign it.

[00:11:41] Speaker 03:
I've certainly seen that where it is a non-substantive order.

[00:11:46] Speaker 02:
And I've seen them strike the word proposed from the word

[00:11:51] Speaker 02:
order granting summary judgment.

[00:11:54] Speaker 03:
Fair enough, Your Honor.

[00:11:56] Speaker 03:
I think our suggestion here is that in the context of this de novo review, I think this order is entitled to a bit of skepticism, because it was written almost entirely, with the exception of a few edits.

[00:12:10] Speaker 02:
Well, there were changes.

[00:12:11] Speaker 02:
I went through it line by line.

[00:12:13] Speaker 03:
There were a few edits, Your Honor.

[00:12:14] Speaker 02:
I agree with that.

[00:12:15] Speaker 02:
On page 19 to 20 of the blue brief, you say that the district court's markman order should be viewed

[00:12:23] Speaker 02:
with a heightened degree of skepticism as effectively amounting to a surreply from vision precision.

[00:12:32] Speaker 02:
So are you saying that the district court was actually an agent of vision precision?

[00:12:37] Speaker 02:
What in the record supports that?

[00:12:39] Speaker 03:
We are not saying that, Your Honor.

[00:12:42] Speaker 03:
I would not go so far as to say that.

[00:12:45] Speaker 02:
Who else would file a surreply?

[00:12:48] Speaker 03:
Perhaps the rhetoric got a bit ahead of us, Your Honor.

[00:12:51] Speaker 03:
But the point here is that this order could be viewed with some skepticism, but in either case, what we're talking about is de novo review.

[00:13:07] Speaker 03:
And the district court's determinations here, which there was no findings based on the extrinsic evidence.

[00:13:16] Speaker 02:
Precision says your ghostwriting argument is waived because you didn't move for reconsideration or argue that the district court did not exercise independent judgment at any time between the markman order and the consent judgment.

[00:13:30] Speaker 02:
Did you raise the ghostwriting or the

[00:13:35] Speaker 02:
An agent of the other side to the district court?

[00:13:39] Speaker 03:
No, Your Honor.

[00:13:39] Speaker 03:
Once the order was adopted by the court, we filed our notice of appeal.

[00:13:46] Speaker 01:
So is that the point?

[00:13:48] Speaker 01:
So you've made these assertions, which you kind of concede now, where your rhetoric got a little ahead of you.

[00:13:55] Speaker 01:
But what was the point?

[00:13:56] Speaker 01:
You weren't asking for recusal.

[00:13:58] Speaker 01:
You weren't asking for a reversal for that basis.

[00:14:01] Speaker 01:
You were just trying to plant a seed in our mind that we should be a little more skeptical about what the district court did because of the so-called, your word, ghostwriting?

[00:14:11] Speaker 03:
Well, Your Honor, we did not assert that it requires per se reversal.

[00:14:16] Speaker 03:
We certainly did not assert that.

[00:14:19] Speaker 03:
But we do think that the reasoning of the order is, you know, I think it was pretty clear that it came from... So we get this case.

[00:14:33] Speaker 01:
And we're reviewing a markman order.

[00:14:35] Speaker 01:
So one side gives one alternative.

[00:14:38] Speaker 01:
This is the construction we want on this term.

[00:14:40] Speaker 01:
The other side gives the other.

[00:14:42] Speaker 01:
We decide the other side's right.

[00:14:44] Speaker 01:
We agree with them.

[00:14:45] Speaker 01:
We agree with all of their arguments.

[00:14:48] Speaker 01:
And we reject all of your arguments for the reasons that they give.

[00:14:53] Speaker 01:
What do we have to do?

[00:14:54] Speaker 01:
Change the words around to make sure we won't be accused of ghostwriting.

[00:14:57] Speaker 01:
We have to come up with different words.

[00:15:00] Speaker 01:
We agree with the claim construction.

[00:15:02] Speaker 01:
We agree because of x, y, and z, which is precisely what the other side has argued.

[00:15:08] Speaker 01:
I mean, I think the concern you're hearing from us is because we do this for a living.

[00:15:15] Speaker 01:
And it's kind of hard to get these cases and to really have

[00:15:21] Speaker 01:
quite unpleasant accusations leveled against a district court judge for something that I think may be fairly common practice, maybe?

[00:15:34] Speaker 03:
I can't say that I've seen another claim construction order done this way.

[00:15:38] Speaker 01:
Perhaps you have.

[00:15:38] Speaker 01:
Well, the PTAP often will say, and we see a lot of these PTAP opinions, the patent owner argued these five things.

[00:15:45] Speaker 01:
The petitioner argued these five things.

[00:15:47] Speaker 01:
And what they say about the petitioner is we embrace their conclusions and analysis in their entirety.

[00:15:54] Speaker 01:
End of story.

[00:15:56] Speaker 01:
Right?

[00:15:56] Speaker 01:
Have you seen those?

[00:15:57] Speaker 03:
Yes.

[00:15:58] Speaker 03:
Yes, Your Honor.

[00:15:59] Speaker 01:
Would that present the same sort of problems that you're putting forth here?

[00:16:06] Speaker 03:
I take the court's point, Your Honor.

[00:16:09] Speaker 03:
I would like to just briefly actually hit the substantive part of the claim construction.

[00:16:14] Speaker 03:
And the court imposed a licensing requirement on eye care practitioner.

[00:16:22] Speaker 03:
There is a clear section of the specification that says that while the eye care practitioner may be a licensed optometrist or ophthalmologist, it also states that the eye care practitioner

[00:16:35] Speaker 03:
may be any eye care professional or other individual who is qualified, licensed, or otherwise capable.

[00:16:41] Speaker 03:
Then the spec goes on and talks about how technicians are capable of administering tests and procedures.

[00:16:49] Speaker 03:
And that's at column 7, line 39 through 44, for example.

[00:16:55] Speaker 01:
Can we just circle back just so there's no dispute?

[00:16:59] Speaker 01:
Because I was a little confused by some of your responses, and maybe that's my problem.

[00:17:03] Speaker 01:
But going back to the very first point.

[00:17:06] Speaker 01:
Let's assume hypothetically that we were to agree with you on the practitioner point and on the teleconferencing point, but to agree with the district court on this final claim limitation.

[00:17:19] Speaker 01:
Do you agree that if we were able to affirm the district court's claim construction on that third item, it would be sufficient basis for affirming the judgment of non-infringement?

[00:17:28] Speaker 03:
If you if you agreed with the district court's claim construction on that third basis in its entirety without any Modifications then yes, I would agree with that.

[00:17:39] Speaker 03:
Thank you.

[00:17:39] Speaker 03:
I'll save my remaining time Good morning, and may it please the court

[00:17:53] Speaker 00:
Joseph Bain of Shuts and Bowen on behalf of the appellees.

[00:17:56] Speaker 02:
Do you agree with your opposing counsel that if we affirm on I care practitioner for example, that's the end of the case?

[00:18:04] Speaker 00:
I agree that that would be the end of the case.

[00:18:06] Speaker 00:
I think number paragraph 11 of our consent judgment includes a stipulation that makes that very clear.

[00:18:12] Speaker 01:
What about if the only thing we were to agree with the district court on would be

[00:18:18] Speaker 01:
the second portion of the eye practitioner analysis.

[00:18:21] Speaker 01:
In other words, we would disagree that you have to be a doctor, but we would agree that you have to be the same person all through the procedure.

[00:18:30] Speaker 01:
Would that be a sufficient basis to affirm, or would we have to send it back?

[00:18:33] Speaker 00:
It would be a sufficient basis to affirm, Your Honor.

[00:18:35] Speaker 00:
The impact and the import and the intention of paragraph 12 is purely in the event of a remand.

[00:18:41] Speaker 00:
What the concern was is that if you change the claim construction in any way that you felt on all three.

[00:18:47] Speaker 01:
But he or she didn't do a claim construction on the second piece.

[00:18:52] Speaker 01:
It's clearly a dispute between the parties on the second piece being whoever this eye practitioner is, it has to be the same person throughout.

[00:19:03] Speaker 01:
He didn't it's not in the even though the party seemed to be disputing it as part of a claim construction issue It's his claim construction The one that we've just got in the whole box doesn't even talk about that piece of it, right?

[00:19:15] Speaker 00:
You know I'm saying I'm not sure I understand your honor if you're referring to that there wasn't really a claim construction or whether it has to be the same person

[00:19:24] Speaker 01:
Yes, the same person throughout.

[00:19:26] Speaker 01:
There seem to be two pieces of this eye practitioner dispute.

[00:19:29] Speaker 01:
Maybe I'm misunderstanding.

[00:19:30] Speaker 00:
Well, they're intertwined in this way, Your Honor.

[00:19:34] Speaker 00:
We believe that the intrinsic record, the specification, the file history, and the plain language of the claim itself makes clear that the eye care practitioner has to be a licensed professional.

[00:19:45] Speaker 00:
And the fact that it's the same person, according to the claim, the eye care practitioner is assigned two

[00:19:50] Speaker 00:
task, administering the examination and review and evaluation.

[00:19:56] Speaker 00:
And because that has to be the same person, that actually reinforces that it has to be basically an eye doctor and not a technician.

[00:20:03] Speaker 01:
OK, so it doesn't stand on itself being the same person.

[00:20:07] Speaker 01:
You just use it as a tool to reinforce your view of the object.

[00:20:12] Speaker 00:
That's our perspective on it.

[00:20:13] Speaker 00:
But by the way, Your Honor, whether it's singular or plural, what's important is ultimately everything centers down on who

[00:20:20] Speaker 00:
Does one school in the art believe can review and evaluate?

[00:20:23] Speaker 02:
Your friend seems to believe he can cite a Florida statute to say that a technician can review and evaluate examination data to provide a health report.

[00:20:34] Speaker 02:
Is that true?

[00:20:36] Speaker 00:
I'm not certain that that is, Your Honor, but I don't know that that's in the record, and I don't know that that's an issue that's been argued before.

[00:20:42] Speaker 00:
And more importantly, that's extrinsic evidence.

[00:20:44] Speaker 00:
I can stay within the four corners of the intrinsic record.

[00:20:47] Speaker 01:
OK, let's stay in the intrinsic record then and look at the specification.

[00:20:51] Speaker 01:
It seems to me the specification is quite clear.

[00:20:54] Speaker 01:
It said an eye practitioner may be any eye care professional or other individual who is qualified, licensed, or otherwise capable of administering a property.

[00:21:06] Speaker 01:
Whether or not, as a matter of law, you have to be licensed in order to be capable of administering,

[00:21:13] Speaker 01:
Let's stay at the four corners.

[00:21:15] Speaker 01:
The spec says, or otherwise capable.

[00:21:18] Speaker 01:
So the spec itself, clearly in my read, says you don't have to be licensed.

[00:21:23] Speaker 01:
You can be otherwise capable of administering or monitoring one or more eye tests.

[00:21:28] Speaker 00:
Your Honor, that sole sentence cannot be read in isolation.

[00:21:31] Speaker 00:
It has to be read in the context of the entire patent as well as the file history.

[00:21:36] Speaker 00:
And when one skill in the art, and by the way, the person who ordered the skill in the art, according to 2020, which the court accepted for purposes of the markman, is himself or herself an ophthalmologist with two years of training and some experience in IT.

[00:21:50] Speaker 00:
So the question is, what would an ophthalmologist think when reading the specification?

[00:21:54] Speaker 00:
They would not read that sentence in isolation, Your Honor.

[00:21:57] Speaker 00:
What they would instead look at for reading the entire patent is every single instance in which an eye care professional is discussed, it is contrasted with a technician, a physician's assistant, or the like.

[00:22:10] Speaker 00:
And every instance, notwithstanding the representation.

[00:22:12] Speaker 00:
No, no, no.

[00:22:12] Speaker 01:
But the problem, I mean, I understand what you're saying, kind of.

[00:22:16] Speaker 01:
But one could read, make your point, reaching the exact opposite conclusion.

[00:22:21] Speaker 01:
The fact that in other portions of the spec,

[00:22:25] Speaker 01:
The person writing it was clearly capable of distinguishing and of stating a distinction between certain types of doctors demonstrates that the use of this very broad language

[00:22:37] Speaker 01:
Meaningful meaningful mean what is or otherwise capable of doing it possibly mean other than you can be a technician You don't have to be enough a doctor.

[00:22:47] Speaker 01:
What does it mean?

[00:22:48] Speaker 01:
What's an alternative meeting for the?

[00:22:51] Speaker 00:
Sentence that I gave you from the specific person still me are reading that sentence in the context of all the other disclosures that consistently say

[00:23:00] Speaker 00:
I care practitioners do the reviewing and evaluating, whereas the existence technicians and such do not.

[00:23:06] Speaker 01:
And one other point I want to... So, okay, so let's look, why don't we look at the languages?

[00:23:09] Speaker 01:
It's column 11, lines 8 through 16.

[00:23:13] Speaker 01:
So how would you write this?

[00:23:16] Speaker 01:
Tell me how someone would read that.

[00:23:19] Speaker 00:
Well, I actually get right to my point, Your Honor.

[00:23:21] Speaker 00:
I believe a person's skill in the art, the ophthalmologist, when he reads this based on his knowledge and also what he reads in the 25 other examples, the only way to reconcile that sentence is that it's describing a licensed professional.

[00:23:36] Speaker 00:
He would not read it as, he would not tease out of it.

[00:23:39] Speaker 00:
this sort of after-the-fact litigation-driven construction that what it's really saying is anybody and everybody, including technicians.

[00:23:47] Speaker 00:
Well, let me ask you this.

[00:23:49] Speaker 02:
Is there any statutory authority which allows an unlicensed individual to diagnose conditions and write prescriptions?

[00:23:58] Speaker 00:
Not that we're aware of, Your Honor.

[00:23:59] Speaker 00:
And I believe that the record and the marketing briefing we set forth below

[00:24:04] Speaker 00:
side of the statutes of every 50 state and presented that these all require that it be a licensed doctor.

[00:24:11] Speaker 00:
Okay.

[00:24:12] Speaker 00:
One other important part of the intrinsic record, but I think confirms this, the two prior references, I'll get you the names, the Franz reference and the Scalaro reference, which are, again, what the person that spilled the art brings into the date of invention when this application was filed.

[00:24:31] Speaker 00:
Both of them used the word eye care practitioner

[00:24:34] Speaker 00:
synonymously with a doctor and distinguish it from a technician.

[00:24:39] Speaker 00:
That's at appendix 188 for Scolaro and appendix 1944 for Frantz.

[00:24:45] Speaker 00:
So you've got that intrinsic evidence establishing what one skill in the art knew about an eye care practitioner being a licensed professional before he even reads the patent.

[00:24:54] Speaker 01:
Can I ask you, maybe I'm missing something about this case.

[00:24:57] Speaker 01:
If it's the fact that you couldn't possibly ever do this, practice this in any state,

[00:25:03] Speaker 01:
unless you were this doctor, then why is this an infringement non-infringing point?

[00:25:09] Speaker 01:
How could you possibly be doing it if you're not legally allowed to do it?

[00:25:14] Speaker 01:
Why would that get you off the hook for infringement?

[00:25:17] Speaker 00:
Well, this ties into the second thing that you began with, Your Honor, which is the idea of does it have to be the same person that's doing the administration of the test and the review and the evaluation because, again,

[00:25:28] Speaker 00:
This consent judgment for purposes of appeal was based on these three constructions as well as our representation for how our system works.

[00:25:36] Speaker 00:
And if you can read the overview of our system as we described during the marketing hearing, which was only given for the purposes of context, we explain to the court that we have a technician

[00:25:47] Speaker 00:
that in a non-automated way does the initial part, does the back and forth with, which is clear, A or B. Have you ever had your eyes examined in the doctor or the technician switches between the lens?

[00:25:58] Speaker 01:
So some of the stuff, in your view, some of the stuff can be done by a technician, but because in your view, the claim requires a doctor and the claim requires the same person for all of that.

[00:26:08] Speaker 00:
That's correct, because the technician can do an examination in terms of the mechanics of switching the lenses.

[00:26:15] Speaker 00:
But once that data is gathered, it's then given to a doctor.

[00:26:19] Speaker 00:
And this claim, there's no question, this claim requires that it's a doctor, an eye care practitioner that does the review and evaluation to issue the report.

[00:26:27] Speaker 00:
And in our view, as a matter of antecedent basis, the selected practitioner that does that review and evaluation also has to be involved in the eye examination.

[00:26:37] Speaker 02:
It seems to me that column 11, starting at line 10,

[00:26:46] Speaker 02:
I'm sorry, line 11 is getting acute and saying, but in some state, some legislature may say someone else other than a qualified licensed optometrist or ophthalmologist may be licensed to do this kind of stuff.

[00:27:15] Speaker 02:
Where does it say this, Your Honor?

[00:27:17] Speaker 02:
Column 11, line 11, forward.

[00:27:20] Speaker 02:
That is the language it says.

[00:27:22] Speaker 02:
Or otherwise capable of administering or monitoring one or more health and visual acuity tests and providing diagnoses and so on.

[00:27:36] Speaker 02:
So they're saying it's a doctor or a doctor or someone licensed to be a doctor of some sort.

[00:27:42] Speaker 00:
The measure of what the ordinary meaning of eye care practitioner is to be taken at the time of the invention when the application is filed.

[00:27:48] Speaker 00:
The intrinsic record, particularly the two, the Scolaro and the France coming into the filing of the application, coupled with the fact that

[00:27:55] Speaker 00:
2020, and we don't disagree for purposes of the appeal, that the person, skill in the artist himself or herself, an ophthalmologist, would come with the knowledge that, yes, doctors write prescriptions and diagnose disease.

[00:28:08] Speaker 00:
Technicians do not.

[00:28:10] Speaker 02:
And when you come with that perspective and you read the entire specification, and again- Are there people who do work on eyes, medical doctors who do work on eyes, or are neither ophthalmologists or opticians?

[00:28:23] Speaker 02:
Optometrists.

[00:28:25] Speaker 01:
optometrist is the other professional.

[00:28:27] Speaker 01:
Can you move to the third term that we were spending some time with your friend on the automation stuff?

[00:28:34] Speaker 01:
I mean, you're relying on prosecution history.

[00:28:36] Speaker 01:
You know our cases have been pretty stringent on what can qualify as a disclaimer or not.

[00:28:43] Speaker 01:
So how do we get her?

[00:28:46] Speaker 01:
I guess it's 1735 and 1736.

[00:28:47] Speaker 00:
I'm going to answer your question, Your Honor, but I don't think this panel needs to go so far as to conclude that it's a disclaimer.

[00:28:54] Speaker 00:
I will answer but let me just give you the perspective that first of course we always start with the claims and the specification and then claim

[00:29:04] Speaker 00:
We think that it is clear that it's the server that has to do the administration.

[00:29:09] Speaker 00:
Okay?

[00:29:10] Speaker 00:
It's not the doctor.

[00:29:11] Speaker 00:
The server has to do the administration, and particularly what's most important is the server has to do this iterative process of the subjective portion.

[00:29:18] Speaker 00:
And when you read the acts that the server must do, which is use the audio response system to ask the questions and return the answers,

[00:29:27] Speaker 00:
Automatically, automatically, I mean the word's clear, automatically adjust based on those answers and then finally detect when to stop.

[00:29:35] Speaker 00:
Just within the four corners of the claim, that suggests automation.

[00:29:38] Speaker 00:
Then when you go to the spec, you discover that the only embodiment that supports that is this automated refractive process, which does not involve... But there's another embodiment that doesn't... There are two embodiments.

[00:29:52] Speaker 00:
What's the second embodiment?

[00:29:53] Speaker 00:
I'm not aware there's a second one involving automation.

[00:29:56] Speaker 00:
Right.

[00:29:57] Speaker 00:
That's right.

[00:29:58] Speaker 00:
It doesn't involve automation.

[00:29:59] Speaker 00:
You're talking about where the doctor before, during, and after participates using a different component.

[00:30:05] Speaker 00:
This is the other important thing.

[00:30:07] Speaker 00:
This is an open-ended claim.

[00:30:08] Speaker 00:
There's nothing to prohibit the doctor from supervising, monitoring, chiming in, having a conversation with the patient versus via video teleconferencing.

[00:30:19] Speaker 00:
But that's not to say that video teleconferencing is a subset of this automated process.

[00:30:24] Speaker 00:
Those two things can go on in parallel.

[00:30:27] Speaker 00:
This is made clear by the spec where the automated process embodiment is described and then says, in addition, the doctor can have a real-time communication on top of that.

[00:30:36] Speaker 00:
This is confirmed by the claims.

[00:30:38] Speaker 00:
Claim 15 adds this additional feature of the doctor coming in via teleconferencing.

[00:30:43] Speaker 00:
The important thing is that what that means is that the automated process of claim 13 is distinct from

[00:30:50] Speaker 00:
the teleconferencing that's added as an additional option in Claim 15 as well as in the specification.

[00:30:56] Speaker 00:
So now coming to your question, in view of that, we believe that the file history simply corroborates that.

[00:31:03] Speaker 00:
But we think it corroborates it so compellingly because of all the times that they tell the examiner this is an automated process that does not require the involvement of a human

[00:31:14] Speaker 00:
We believe that it is a clear and unmistakable disclaimer.

[00:31:17] Speaker 00:
But I don't believe that you have to go so far.

[00:31:19] Speaker 00:
If you're not persuaded by that, I don't think that that prevents you from affirming on this third ground, because the claim language itself clearly, to one skill in the art, an ophthalmologist clearly conveys an automated process.

[00:31:32] Speaker 00:
It uses the word, if for no other reason, Judge, it uses the word automatically.

[00:31:37] Speaker 00:
This is reconciled with this sole example in the specification

[00:31:41] Speaker 00:
which yes, does add the additional layer of a human being involved, but with different components.

[00:31:47] Speaker 00:
And then thirdly,

[00:31:48] Speaker 00:
The third part of the intrinsic record.

[00:31:50] Speaker 01:
So is that second process covered by the claims as well?

[00:31:53] Speaker 01:
It covers automate and an automated process, and it covers everything else as well?

[00:31:57] Speaker 00:
Well, it covers it in the sense of being an open-ended claim.

[00:32:00] Speaker 00:
At a minimum, certainly, the claim requires the automated process.

[00:32:03] Speaker 00:
It would not be a basis of non-infringement if the doctor on top of that also had a video link where he was also, at the same time, having a conversation.

[00:32:12] Speaker 00:
For example, the things working on an automated basis, the doctor supervising it, and he sees that the software is messed up.

[00:32:19] Speaker 00:
Okay, or maybe the patient didn't clearly answer and there's some glitch in the process the doctor might be in a supervisory Capacity to intervene and say okay, I'm going to take over.

[00:32:28] Speaker 00:
I'm going to do it the old-fashioned way Okay, but the claim By its express language as supported by the sole embodiment and then reconfirmed numerous times in the file history

[00:32:39] Speaker 00:
requires at its core a truly automated process where the server.

[00:32:44] Speaker 00:
Let's go right back to it.

[00:32:45] Speaker 00:
It's a claim for a server.

[00:32:47] Speaker 00:
And the server must administer the test, including particularly the subjective test that was added during prosecution history.

[00:32:55] Speaker 00:
If you compare claim 14, which became patent number 13,

[00:32:59] Speaker 00:
As amended to way it was before before it was generic enough that the doctor could be the one doing it But to overcome the examiner's rejection they specifically added this iterative process and correctly called it truly automated Consistent with the spec consistent with the claim language and in the file history we've cited in our brief numerous examples where the court has

[00:33:24] Speaker 00:
where the court has cited to the numerous examples in the file history where they've repeatedly called it automated.

[00:33:31] Speaker 00:
So I think it is a clear and unequivocal disclaimer, but you need not go that far to conclude that the court was correct.

[00:33:38] Speaker 02:
And I want to take you back to your answer to my last question, which was optometrist.

[00:33:44] Speaker 02:
Let me ask you, because I was fishing but obviously my door wasn't bright enough, supposing instead of optometrist to use the word eye surgeon, is that the same as an ophthalmologist?

[00:33:59] Speaker 00:
There might be a slight distinction between those two.

[00:34:01] Speaker 00:
I think certainly an ophthalmologist is a skilled medical doctor for eye disease.

[00:34:06] Speaker 00:
An eye surgeon might have surgical skills on top.

[00:34:08] Speaker 02:
Yes, and could an eye surgeon use this system if they wanted to diagnose long-distance

[00:34:16] Speaker 00:
I'm assuming, I don't know the details of eye surgery's qualifications, but I'm assuming that they have the qualifications to diagnose disease in the sets of prescriptions.

[00:34:26] Speaker 02:
So that's outside of the first part of that clause in Column 11, but it puts that eye surgeon within the second part.

[00:34:37] Speaker 00:
Well, are you drawing a distinction between qualified and licensed, Your Honor?

[00:34:42] Speaker 00:
Sure.

[00:34:42] Speaker 02:
Their license is an eye surgeon, right?

[00:34:44] Speaker 02:
And they're working remotely with a patient in North Dakota about whom they want to get some information before they fly them into Minnesota.

[00:34:57] Speaker 02:
Can they use this equipment remotely?

[00:35:01] Speaker 02:
Do an examination and obtain some information.

[00:35:03] Speaker 00:
Perhaps can, but again, we have to keep ourselves focused on what is the specific process at issue for the non-infringement.

[00:35:11] Speaker 02:
I know, but I'm talking about that additional language other than ophthalmologist and optometrist.

[00:35:18] Speaker 00:
Basically, the answer would be if the eye surgeon has gotten under the necessary license and the qualification.

[00:35:28] Speaker 00:
to perform this, basically it's a refractive lens, basically prescribed lenses, then he would fall into that category, or she, certainly.

[00:35:38] Speaker 00:
But what's important for purposes of non-infringement as described during the mark the hearing

[00:35:46] Speaker 00:
which is sort of the underlying stipulation for purposes of this appeal only, is that it is a technician in a non-automated manner that is doing that initial part that Claim 13 requires be automated, and in our view has to be done by the same person that's doing the reviewing and the evaluation.

[00:36:07] Speaker 00:
And this debate about whether it's singular versus plural is really almost an aside.

[00:36:13] Speaker 00:
We think that under Harari, it is an individual eye care practitioner that's being selected.

[00:36:18] Speaker 00:
But even if it was a, for some unreasonable reason, was selected to be two or more doctors, all of them under the Baldwin standard, if A, professional was two,

[00:36:33] Speaker 00:
Then the selected professional has to be the same too.

[00:36:36] Speaker 00:
You can't then divide the team up later.

[00:36:38] Speaker 00:
There's no basis for that.

[00:36:40] Speaker 00:
Involvement makes that clear.

[00:36:42] Speaker 01:
Okay.

[00:36:42] Speaker 01:
We've far exceeded our time.

[00:36:44] Speaker 01:
Sorry?

[00:36:45] Speaker 01:
You're over your time.

[00:36:47] Speaker 00:
Oh, I'm sorry, Your Honor.

[00:36:48] Speaker 00:
Thank you very much.

[00:36:50] Speaker 00:
On any of the three bases you share.

[00:37:00] Speaker 03:
Your Honor, an eye surgeon would be licensed and so they would fit within the second part of the definition as being licensed.

[00:37:10] Speaker 03:
But that second part of the definitions also says or otherwise capable and that's where we think the technicians can have a role and the specification makes that crystal clear that in fact the technicians are capable and do remotely control and administer and review the tests.

[00:37:28] Speaker 03:
Now, Judge, you asked the perfect question, which is, why is this an issue?

[00:37:33] Speaker 03:
It's an issue because technicians do these things.

[00:37:36] Speaker 03:
And that is, in fact, what's happening in the real world.

[00:37:40] Speaker 03:
Now, my friend said that a person of ordinary skill in the art would know and understand all these things.

[00:37:46] Speaker 03:
But the only extrinsic evidence about what a person of ordinary skill in the art would know and understand is the expert report that we submitted.

[00:37:55] Speaker 03:
He describes this at appendix pages 1910 and 1911.

[00:37:59] Speaker 03:
And he says that technicians are part of what he would consider to be an eye care practitioner as one of ordinary skill in the art.

[00:38:09] Speaker 03:
Now, the issue of the audio response system and the automatically adjusting, my friend consistently confuses the asynchronous from the synchronous visual examination.

[00:38:27] Speaker 03:
And it is true that there are lots of statements in the prosecution and in the specification about the asynchronous, fully automated system, where the ICARE practitioner is not involved at all.

[00:38:38] Speaker 03:
But when you're talking about the synchronous system, and there's no dispute that claim 13 is a synchronous system.

[00:38:44] Speaker 03:
It says real time.

[00:38:45] Speaker 03:
It was amended during prosecution to make it a synchronous system.

[00:38:49] Speaker 03:
And they've admitted that.

[00:38:51] Speaker 03:
When you're talking about that system, the prosecution history clearly says

[00:38:57] Speaker 03:
that, and I'm looking at appendix 1644 and 1645, a remotely located eye care practitioner may participate via a teleconferencing system while ophthalmic equipment at the diagnostic center is used and may be at least in part controlled remotely by the eye care practitioner to perform tests on the customer.

[00:39:19] Speaker 03:
The district court's construction specifically excludes the teleconferencing system, which

[00:39:26] Speaker 03:
The prosecution history clearly says it's part of the synchronous system, the synchronous exam, and the district court's construction specifically excludes any assistance from the eye care practitioner.

[00:39:39] Speaker 03:
And that's what this prosecution history and that's what the spec at column 33 consistently says that the eye care practitioner is involved

[00:39:48] Speaker 03:
is assisting, is controlling the equipment in the synchronous real-time system, which is the one issue in Clean 13.

[00:39:56] Speaker 03:
Thank you.

[00:39:57] Speaker 01:
Thank you.

[00:39:57] Speaker 01:
We thank both sides.

[00:39:58] Speaker 01:
The case is submitted.

[00:39:59] Speaker 01:
That concludes our proceeding for this morning.