[00:00:00] Speaker 03:
My next case is 20-1065 Avenue Innovations versus E-Mission or TUNS.

[00:00:08] Speaker 03:
Mr. Corcoran.

[00:00:11] Speaker 04:
Yes, Your Honor.

[00:00:11] Speaker 04:
Good morning.

[00:00:12] Speaker 04:
May it please the Court, Peter Corcoran, for the Appellant Avenue Innovations.

[00:00:17] Speaker 04:
Your Honor, it is whether viewed as a genuine dispute of material fact or a claim construction dispute, the district court summary judgment ruling should be reversed for at least three reasons.

[00:00:26] Speaker 04:
First, the court erred by fundamentally altering the party's factual dispute of infringement by putting itself into the shoes of a person of ordinary skill and the art and finding that no genuine dispute of material fact of infringement can exist because no portion of the handle of the car came is located exteriorly of the vehicle when placed in a striker parallel to the seat.

[00:00:47] Speaker 04:
To form this conclusion, the court transformed the party's stipulated definition of the claim term exteriorly of the vehicle as outside the vehicle

[00:00:55] Speaker 04:
to beyond the exterior walls or metal paneling of the car.

[00:01:00] Speaker 04:
Second, the Vista Courts analysis did not properly consider the key point of Dr. Hoekstra's unrebutted expert declaration that, as understood by persons of lower skill in the art, the exterior of the vehicle begins at the cabin seal, which separates the exterior from the interior of the vehicle, shown and described in the 189 patent as number 18 in figure one,

[00:01:23] Speaker 04:
And in column 6, lines 55 through 63 of the patent.

[00:01:27] Speaker 04:
Michonne left, Dr. Hoekstra.

[00:01:30] Speaker 03:
Council, Judge Lurie.

[00:01:32] Speaker 03:
In other words, the door and the outside portion of the door is not the vehicle?

[00:01:41] Speaker 04:
Your Honor, the outside portion of the door is the vehicle, but the question here is where does the outside begin?

[00:01:47] Speaker 03:
Well, exterior and outside seem to be equivalent terms.

[00:01:54] Speaker 04:
Your Honor, when you look at the entire intrinsic record, when you look at the 189 patent, when you look at the prior art of record, and you look at Dr. Hoekstra's declaration that opines based on the intrinsic record, the conclusion is that the outside begins at the cabin seal, as understood by persons under ordinary skill in the art, and the 189 patent describes the interior of the vehicle,

[00:02:22] Speaker 04:
and the elementary opposite of interior is exterior.

[00:02:26] Speaker 00:
So, once you start... Counsel, your claim doesn't say exteriorly of the interior of the vehicle, right?

[00:02:38] Speaker 00:
So, the only way I... Right.

[00:02:41] Speaker 00:
If I think that that language should be read into your claim because of something in the specification,

[00:02:48] Speaker 00:
and how you defined or distinguished exterior from interior.

[00:02:53] Speaker 00:
Is that right?

[00:02:57] Speaker 04:
Yeah.

[00:02:57] Speaker 04:
Well, the claim says exteriorly of the vehicle, okay?

[00:03:02] Speaker 04:
Right.

[00:03:03] Speaker 04:
And the only reference in the pattern.

[00:03:05] Speaker 00:
Interior.

[00:03:06] Speaker 00:
It could have.

[00:03:08] Speaker 00:
You could have drafted it exteriorly of the interior of the vehicle, right?

[00:03:12] Speaker 00:
Because you do have an element in your claim and the figures that shows the interior of the vehicle, right?

[00:03:20] Speaker 04:
Right, and the opposite of interior is exterior.

[00:03:23] Speaker 00:
Right, but it doesn't mean that everything outside the interior of the vehicle is exterior of the vehicle.

[00:03:29] Speaker 00:
It means it's exterior of the interior of the vehicle.

[00:03:34] Speaker 04:
Well, Your Honor, relying on Dr. Hoekstra's unrebutted expert testimony, by the way, Michonne had an expert in the IPR, and they chose not to rebut Dr. Hoekstra's declaration.

[00:03:48] Speaker 04:
to persons that are ordinary skilled in the arts, when reading the 189 patent specification, the outside of the vehicle begins at the cabin seal.

[00:04:02] Speaker 03:
Now, the parties stipulate that... Council, does this issue need expert testimony?

[00:04:12] Speaker 03:
In this case, apparently, Your Honor.

[00:04:19] Speaker 01:
Mr. Corcoran, this is Judge Shen.

[00:04:21] Speaker 01:
What was it that Mr. Hoekstra or Dr. Hoekstra relied upon as a basis for saying people of skill, I don't know, I guess in the vehicle arts, would understand that something that exists in the well of the car wall is outside the vehicle?

[00:04:49] Speaker 04:
Your honor, I believe Dr. Hoekstra was saying that anything outside the cabin seal is where the outside of the vehicle begins.

[00:04:57] Speaker 01:
Right.

[00:04:57] Speaker 01:
So we're talking about things that might be positioned within the walls of a car.

[00:05:06] Speaker 01:
And I'm just wondering what did Mr. Hoekstra point to, or Dr. Hoekstra point to, if anything, as a basis for saying

[00:05:16] Speaker 01:
Anything that's located within the walls of a car is something that we, in the art, identify as being outside of the vehicle.

[00:05:29] Speaker 04:
Your Honor, Dr. Hosea pointed to figure one, number 18, where the patent describes the interior passenger compartment of the vehicle.

[00:05:38] Speaker 01:
OK.

[00:05:39] Speaker 01:
Well, that's intrinsic evidence.

[00:05:40] Speaker 01:
And it's up to us to understand, as a legal question, how to understand

[00:05:46] Speaker 01:
the import of the intrinsic evidence, but my understanding is you are putting Dr. Hobscher up as an expert in the vehicle arts and how people in that field at the time of the convention would understand the phrase exteriorly of the vehicle and in his opinion, as a matter of fact, they would understand something that exists

[00:06:12] Speaker 01:
tucked away in the walls of the car as being outside the vehicle.

[00:06:15] Speaker 01:
And I'm asking you, is there something that he pointed to as a basis for that factual opinion?

[00:06:25] Speaker 01:
Aside from anything inside this patent.

[00:06:31] Speaker 01:
Outside the patent?

[00:06:31] Speaker 01:
No, Your Honor.

[00:06:33] Speaker 01:
OK.

[00:06:33] Speaker 01:
Then when we look inside this patent, then what about what we see at column nine?

[00:06:40] Speaker 01:
starting around line 36, where we see a discussion of the striker, which is located within the walls of the car.

[00:06:49] Speaker 01:
And it says leg portion 24A of the striker is closer to the exterior of the vehicle, while the leg portion 24B is closer to the interior of the vehicle.

[00:07:01] Speaker 01:
And to me, the clean understanding of that is that the one leg that is

[00:07:10] Speaker 01:
Closer to the outside of the vehicle, like outside the walls of the vehicle, is where the leg portion 24A is located.

[00:07:20] Speaker 01:
To me, that's a clear communication of an understanding of what exterior of the vehicle means, which means outside the walls of the vehicle.

[00:07:31] Speaker 01:
What's wrong with that understanding of this passage at column nine?

[00:07:36] Speaker 04:
Your Honor, that passage actually highlights the factual dispute of the parties, because like 24B points towards the inward side of the vehicle.

[00:07:48] Speaker 04:
So just as 24A may point to the outwardly side of the vehicle, 24B points to the inwardly side of the vehicle.

[00:07:55] Speaker 01:
Right.

[00:07:56] Speaker 01:
And then the claim language is the phrase, exteriorly of the vehicle.

[00:07:59] Speaker 01:
And so now we're getting some understanding here what the patent owner thinks

[00:08:05] Speaker 01:
That term means by reference to leg portion 24A as being closer to the exterior of the vehicle compared to leg portion 24B.

[00:08:15] Speaker 01:
And we know that the striker is located in the wall of the car.

[00:08:22] Speaker 01:
So why wouldn't that mean anything inside the wall of the car as is true of where the striker's positioned

[00:08:34] Speaker 01:
is not exterior of the vehicle?

[00:08:39] Speaker 04:
Well, Your Honor, 24A pointing towards the exterior of the vehicle is not... The patent is not saying that 24A is actually outside the vehicle.

[00:08:51] Speaker 04:
It's pointing towards the exterior, just like 24B is pointing towards the interior.

[00:08:57] Speaker 04:
So it's kind of a no-man's land.

[00:08:59] Speaker 03:
I'd like you to move on to...

[00:09:01] Speaker 03:
indefiniteness because that actually invalidates some of your claims.

[00:09:09] Speaker 03:
Why wasn't the court correct in finding language that said most convenient when we find it here?

[00:09:22] Speaker 03:
Operate a position most convenient to the user.

[00:09:28] Speaker 03:
That sounds indefinite.

[00:09:29] Speaker 03:
Different users have different conveniences.

[00:09:33] Speaker 04:
I agree, Your Honor, but on a nautilus and SonicTech, this court is supposed to consider the entire claim and not just focus on one specific, allegedly indefinite claim term.

[00:09:50] Speaker 04:
And when you look at the entire claim as a whole, claims one and two, you'll see that to a person of only a skill in the arts,

[00:09:58] Speaker 04:
when he or she reads that claim, they can follow that claim.

[00:10:03] Speaker 04:
And when they get to the part of most convenient to the user, most convenient to the user really has no utility in the claim because the device is locked down in the... Council, this is Judge Schnell.

[00:10:20] Speaker 00:
I just wanted to ask you, I read that claim and I think it might have meaning in the context

[00:10:27] Speaker 00:
of the phrase, securement means mounting an elongate member for limited movement within a plane substantially parallel to the fixed surface to at least one operative position most convenient to the user when pulling or pushing on said handle.

[00:10:43] Speaker 00:
I think your position, as I understand it, is you've got to read that whole clause in its entirety together and in light of the prosecution history.

[00:10:51] Speaker 00:
And when I do that, I think it means something like this, and I want to know if you agree with me.

[00:10:56] Speaker 00:
I think that it means that you can move the elongate member, the handle the person can hold onto, within a plane.

[00:11:05] Speaker 00:
It's only within a particular plane parallel to the fixed surface.

[00:11:10] Speaker 00:
And then there's, so there's within that limited range of movement within the plane, substantially parallel to the fixed surface, a user can move the elongate member to a position most convenient for him or her to push or pull while standing.

[00:11:26] Speaker 00:
And I really get that understanding from looking also at the comments made a 3032 in the prosecution history where the whole phrase was discussed in distinguishing the prior, not just that language of most convenient to the user.

[00:11:42] Speaker 00:
So do you agree with my understanding of this limitation or do you have a different understanding of what that limitation as a whole means?

[00:11:54] Speaker 04:
No, Your Honor, I think you pinpointed it perfectly, and it's explained in our briefs that the applicant added the language at 332 in order to overcome the prior arc, but really focused on... You know, I'm getting to my rebuttal time.

[00:12:21] Speaker 04:
I really focused on the limited movements, I'm sorry, the operative position of the device, more so than most convenient user, and focused on that with reference to the pattern of figures one, two, and six.

[00:12:40] Speaker 01:
Dr. Flory, if I may, I'd like to ask one last question before we go to the other side.

[00:12:46] Speaker 01:
Thank you.

[00:12:51] Speaker 01:
Mr. Corkman, what if we were to affirm the summary judgment of non-infringement of claims 3-8 and 20, but then we're trying to decide what to do with claims 1 and 2 and this indefiniteness ruling.

[00:13:08] Speaker 01:
This patent is expired now, right?

[00:13:10] Speaker 01:
It expired a year ago?

[00:13:13] Speaker 01:
Yes, Your Honor.

[00:13:14] Speaker 01:
So all that's left is I assume you would want to try to litigate

[00:13:20] Speaker 01:
the infringement question for claims one and two if they were to survive on appeal?

[00:13:27] Speaker 04:
Yes, Your Honor.

[00:13:29] Speaker 01:
And I guess, through an affirmance of claims three through eight and 20 of no infringement, I don't see any legitimate theory for infringement of claims one and two with the accused carton cane.

[00:13:46] Speaker 01:
You know, claim two says exteriorly of the vehicle.

[00:13:49] Speaker 01:
So claim two is definitely out.

[00:13:52] Speaker 01:
And then claim one talks about elongate member extending away from the seat and talks about the limited movement being within a plane substantially parallel to the fixed surface.

[00:14:05] Speaker 01:
So I don't see the car came positioned to meet either of those limitations of claim one.

[00:14:13] Speaker 01:
So I don't see how you could possibly have any

[00:14:18] Speaker 01:
non-frivolous allegation of infringement under the circumstances if we are to affirm the summary judgment of non-infringement here on claims three through eight and 20.

[00:14:29] Speaker 04:
OK.

[00:14:31] Speaker 04:
To answer your question, Your Honor, at least under claim one, it depends on the angle of the striker.

[00:14:37] Speaker 04:
Not every lateral surface in the door well is perfectly perpendicular to the car seats.

[00:14:45] Speaker 04:
Some are angled.

[00:14:46] Speaker 04:
So if the striker is angled away from the car seat, the elongate member would extend away from the seat and positions can handle at least at a point remote from the seat.

[00:15:02] Speaker 00:
But does the car cane move?

[00:15:08] Speaker 04:
No, Your Honor, but if it's positioned within a striker that's angled away from the seat,

[00:15:17] Speaker 04:
the device would point remote from the seat.

[00:15:23] Speaker 01:
Are you aware of any, I'm sorry, are you aware of any strikers that would allow a device to be in a plane substantially parallel to the fixed surface?

[00:15:40] Speaker 04:
What I know, I was trying to think of a fixed surface.

[00:15:48] Speaker 04:
I mean, most strikers are parallel to the fixed surface, but it depends on the angle of the fixed surface.

[00:15:56] Speaker 04:
I mean, not every fixed surface angle is perfectly perpendicular to the interior of the vehicle.

[00:16:05] Speaker 04:
Some lateral surfaces, for example in trucks, SUVs, and minivans, the lateral surface is angled

[00:16:19] Speaker 04:
outwardly from the vehicle per the car door design.

[00:16:29] Speaker 04:
So there are some vehicles out there that would fit this claim language.

[00:16:39] Speaker 03:
It sounds like just a question whether there's a case of controversy in the future or a viable claim against someone else.

[00:16:49] Speaker 03:
I think we have your point, Mr. Kaufman.

[00:16:52] Speaker 03:
Let's hear from Mr. Glass.

[00:16:57] Speaker 02:
Thank you, Your Honor.

[00:16:58] Speaker 02:
James Glass for appellee, if you may please the court.

[00:17:03] Speaker 02:
I'll start actually right where we left off.

[00:17:06] Speaker 02:
In terms of the infringement of claims one and two, as I believe it was your honor Chen that pointed out, claim two includes this notion that the device must be exterior, the handle, the portion of the handle must be exteriorly to the vehicle.

[00:17:20] Speaker 02:
There's no, that term has been construed consistently by stipulation across all terms.

[00:17:26] Speaker 02:
That claim cannot be infringed.

[00:17:29] Speaker 02:
With respect to claim one, you, again, I believe it was Judge Shen, you anticipated our argument, should there be a remit.

[00:17:38] Speaker 02:
There is no mystery that this device is called.

[00:17:41] Speaker 02:
We've referred to this in shorthand at the district court as the parallel orientation.

[00:17:47] Speaker 02:
We had to because they had three different infringement contentions.

[00:17:50] Speaker 02:
One was perpendicular, one was parallel, one was parallel, then perpendicular.

[00:17:56] Speaker 02:
The notion that there can be infringement of claim one, there can't be.

[00:18:01] Speaker 02:
There's no evidence in the record.

[00:18:03] Speaker 02:
There's certainly no evidence below of the strikers Mr. Cochran spoke of where the device is in unparallel, non-parallel position.

[00:18:12] Speaker 02:
So working backwards, I'm going to start.

[00:18:16] Speaker 02:
I intended to start with the indefiniteness issues.

[00:18:18] Speaker 02:
I'm going to start with the exterior link to the vehicle issue.

[00:18:22] Speaker 02:
I'll be very brief.

[00:18:23] Speaker 02:
Your honors have looked at what we pointed out to in the briefs.

[00:18:27] Speaker 02:
It's clear that our points have come through.

[00:18:29] Speaker 02:
One additional point I'll relay.

[00:18:32] Speaker 02:
Judge Lurie, your honor, you pointed out that what we're talking about a vehicle.

[00:18:36] Speaker 02:
The claim says exteriorly to the vehicle.

[00:18:39] Speaker 02:
Common sense, we all know what a vehicle is.

[00:18:43] Speaker 02:
The judge, Judge Faya, below she pointed out that if it's exterior to the vehicle, it's exterior to the metal shell of the car.

[00:18:52] Speaker 02:
But we don't have to even go that far.

[00:18:54] Speaker 02:
The claim itself tells us what is included in the vehicle.

[00:18:59] Speaker 02:
Claim two specifically says the vehicle includes the door.

[00:19:03] Speaker 02:
The vehicle includes the post, the pillar.

[00:19:06] Speaker 02:
The post or pillar defines a lateral surface.

[00:19:09] Speaker 02:
Well, if the vehicle includes those elements and the lateral surface is what the device is mounted on, if the vehicle includes those elements,

[00:19:17] Speaker 02:
And the handle has to be exterior to the car.

[00:19:19] Speaker 02:
Of course, it has to be exterior to those elements.

[00:19:23] Speaker 02:
So the notion that this record

[00:19:27] Speaker 02:
dismissed or ignored their expert.

[00:19:32] Speaker 02:
Your honors pointed out, we listen to the vitronic case.

[00:19:36] Speaker 02:
We know this well.

[00:19:36] Speaker 02:
We listen to expert testimony, but it cannot contradict the intrinsic record.

[00:19:41] Speaker 02:
And that's exactly what the court found that was in Appendix 20.

[00:19:45] Speaker 02:
She considered the expert opinion, and she found it to be contrary to the intrinsic record.

[00:19:52] Speaker 02:
Your Honor, so I'm not going to go into any more depth on that argument unless you have any questions.

[00:19:56] Speaker 02:
I'm going to move on to the indefiniteness portion.

[00:20:01] Speaker 02:
You may.

[00:20:03] Speaker 02:
Thank you, Your Honor.

[00:20:04] Speaker 02:
I'm going to walk through very briefly the district court's analysis and then walk through appellant's discussion.

[00:20:11] Speaker 02:
It is undisputed here.

[00:20:13] Speaker 02:
It's undisputed that...

[00:20:17] Speaker 00:
On the indefiniteness issue, one of the concerns I had was that the District Court didn't quite grapple with the statements in the prosecution history.

[00:20:26] Speaker 00:
And so I wanted thoughts on the prosecution history, which I think, you know, give explanation as to what is meant by within a plain, substantially parallel of the fixed surface to at least one operative position most convenient to the user when pushing or pulling.

[00:20:44] Speaker 00:
referring to specific figures in the specification and I just and you know that it's that whole phrase um that was relaxed to distinguish the priority I didn't really see the district court grapple with that so what what do you think of that what why shouldn't I rely on that prosecution history to understand what these claims mean

[00:21:07] Speaker 02:
I think you should rely on the prosecution history, and maybe it didn't come out quite as clear as I'd hoped in the briefing.

[00:21:13] Speaker 02:
We focus on the entirety of the phrase.

[00:21:16] Speaker 02:
What they added during prosecution wasn't this notion of just moving to an operative position, and it wasn't just moving to a convenient position.

[00:21:25] Speaker 02:
They decided very specifically

[00:21:27] Speaker 02:
that in light of the Bergstein reference, which was that device that was pushed into the door jam, that they would add a limitation that requires it to move to an operative position most convenient to the user.

[00:21:41] Speaker 02:
They narrowed not only the operative positions, but they narrowed that to the most convenient operative positions.

[00:21:48] Speaker 02:
Yes, they focused on embodiments one, two, and six.

[00:21:50] Speaker 02:
I was going to get to this later.

[00:21:51] Speaker 02:
I'll get to it now.

[00:21:54] Speaker 02:
specifically encompass other embodiments.

[00:21:57] Speaker 02:
Figure 9A, I think, is very important.

[00:22:00] Speaker 02:
We know that that's encompassed by claims one and two, because we stipulate it to a construction.

[00:22:05] Speaker 00:
Claim 9A.

[00:22:06] Speaker 00:
Can I interrupt you for a minute?

[00:22:09] Speaker 00:
Absolutely.

[00:22:09] Speaker 00:
I understand that there's different positions where the handle could be.

[00:22:14] Speaker 00:
depending on whether the user was pushing or pulling, or what sort of vehicle or other kind of chair the device was being used in, or how short or tall a person is.

[00:22:25] Speaker 00:
Those kinds of things can make a difference on, you know, in the plane of movement, the plane of limited movement, what is convenient for any given particular user.

[00:22:36] Speaker 02:
I'm not sure if I understand the question, Your Honor.

[00:22:39] Speaker 02:
I think that's exactly the point.

[00:22:41] Speaker 02:
That within that plane of movement, when the device is used in, when it's attached to the vehicle, in that plane of movement, there is any number of convenient positions that the user can select when pushing or pulling.

[00:22:57] Speaker 02:
And again, I'll get back to the figures.

[00:22:59] Speaker 02:
There's no mystery as to why appellants focus on figures one, two, and six.

[00:23:05] Speaker 02:
Those are the least adjustable figures out of the pad.

[00:23:09] Speaker 02:
Figure 9 includes, and I'm quoting directly from the pad specification, column 9, column 11, appendix 84, 51 through 65.

[00:23:19] Speaker 02:
It states that the position of the elongated member in that environment can be very closely controlled when pulled towards the surface.

[00:23:27] Speaker 02:
It has an adjustable heel screw.

[00:23:29] Speaker 02:
It has grooves on the securement beams.

[00:23:31] Speaker 02:
That is, I think, a very good example, Your Honor, of what it means to be able to select an operative position most convenient to the user when pushing or pulling.

[00:23:42] Speaker 02:
And I think that's very important.

[00:23:45] Speaker 02:
Another important point, Your Honors, and they accuse us of not looking at the claims holistically.

[00:23:52] Speaker 02:
They focus to the exclusion of convenience.

[00:23:55] Speaker 02:
They focus to the exclusion of that phrase.

[00:23:57] Speaker 02:
on the operative positions.

[00:23:59] Speaker 02:
The patentees knew very well how to claim this without resort to convenience.

[00:24:04] Speaker 02:
Claims 22 and 23, while they have other limitations in those claims, they speak just to moving the device to an operative position with no mention of convenience.

[00:24:16] Speaker 02:
So what are we left with here?

[00:24:18] Speaker 02:
We're left with a very specific limitation that was added during prosecution to overcome prior art.

[00:24:24] Speaker 02:
And it did, in fact, overcome that prior art.

[00:24:27] Speaker 02:
We can't just say, well, hey, it was a mistake.

[00:24:29] Speaker 02:
They shouldn't have added that.

[00:24:31] Speaker 00:
I, my original question to you is, did you think the district court addressed all of this in its opinion?

[00:24:37] Speaker 00:
Cause your regional point was you said you were going to walk through the district court's analysis and show why it was correct.

[00:24:44] Speaker 00:
But I don't really see where the district court grappled with this part of the prosecution history.

[00:24:49] Speaker 00:
Am I missing something?

[00:24:51] Speaker 02:
The district court mentioned the prosecution history.

[00:24:58] Speaker 02:
I don't know that it really wasn't briefed in detail as to how, and I think the issue was, appellants argued that, well, the most convenient position wasn't focused on during prosecution.

[00:25:13] Speaker 02:
And our argument was simply that, look, we have to take this limitation for what it is.

[00:25:17] Speaker 02:
They added this phrase.

[00:25:18] Speaker 02:
We have to give every word a meaning.

[00:25:21] Speaker 02:
And it was added to overcome prior art.

[00:25:23] Speaker 02:
And I think that's the extent.

[00:25:25] Speaker 02:
I don't have it at my fingertips, but that's the extent to which she dealt with it.

[00:25:30] Speaker 00:
I have another question for you, which, yeah, that answers.

[00:25:32] Speaker 00:
I understand your position.

[00:25:34] Speaker 00:
My other question to you is, with respect to acute hurricane, does it move in a plane?

[00:25:42] Speaker 00:
I'm sorry, I was talking, I didn't hear your answer.

[00:25:49] Speaker 02:
Yeah, I apologize, I think I spoke over you.

[00:25:51] Speaker 02:
No, I don't think Mr. Coffman is going to disagree with me.

[00:25:55] Speaker 02:
There is no evidence that it moves.

[00:25:59] Speaker 02:
In fact, it is designed not to move.

[00:26:01] Speaker 02:
I'm not sure if this came through the briefing.

[00:26:03] Speaker 02:
This device was designed not to infringe this patent.

[00:26:08] Speaker 02:
So when it's inserted into the striker, it's designed not to move forwards or backwards.

[00:26:15] Speaker 02:
In the orientation that it's designed to work in, it would actually defeat the purpose.

[00:26:21] Speaker 02:
It wouldn't serve its purpose of providing support in that orientation.

[00:26:27] Speaker 00:
Thank you.

[00:26:35] Speaker 02:
Now, Your Honors, I think really just one or two more points on this.

[00:26:39] Speaker 02:
On the district court's point of the term being subjective, again, I think it was, Your Honor, Judge Laurie pointed this out, the claim on its face requires us

[00:26:55] Speaker 02:
requires us to inquire as to not only what the convenient position is, but what is the most convenient position.

[00:27:01] Speaker 02:
And on its face requires us to inquire to the user.

[00:27:04] Speaker 02:
And that's in the claims.

[00:27:07] Speaker 02:
There's no dispute here.

[00:27:08] Speaker 02:
Appellant has not argued that this phrase is objective.

[00:27:12] Speaker 02:
Appellant raises a very similar argument instead to what this court dismissed in data models.

[00:27:17] Speaker 02:
In that case, the appellant argued, well, that was the aesthetically pleasing case.

[00:27:23] Speaker 02:
The appellant argued basically that

[00:27:25] Speaker 02:
And this is that 1329 of the opinion that subjective terms are permissible so long as one of ordinary skill in the art would understand their scope.

[00:27:32] Speaker 02:
That's essentially what appellant here is arguing that we know what the operative positions are.

[00:27:37] Speaker 02:
We know what the outer boundaries are.

[00:27:39] Speaker 02:
Well, so that that phrase.

[00:27:41] Speaker 02:
the phrase, both convened to the user, it's minimal.

[00:27:45] Speaker 02:
It's negligible to the claims.

[00:27:47] Speaker 02:
But that's exactly what this court flatly rejected.

[00:27:50] Speaker 02:
Also in that case, the appellant argued that we have to look at the claim in a fulsome manner.

[00:27:56] Speaker 02:
And this court flatly rejected.

[00:27:57] Speaker 02:
Yes?

[00:27:58] Speaker 01:
Yes, Your Honor.

[00:27:59] Speaker 01:
Just when it comes to the claim language here, we understand the case well.

[00:28:05] Speaker 01:
Most convenient to the user when pulling or pushing on said handle

[00:28:10] Speaker 01:
I agree with you.

[00:28:13] Speaker 01:
Most convenient to the user is not pretty language to see in a claim.

[00:28:18] Speaker 01:
It's rather ugly.

[00:28:20] Speaker 01:
But nevertheless, could it be trying to get at the thought that there's one position, one operative position that's really designed for and more convenient for the user to push on the handle.

[00:28:37] Speaker 01:
And likewise, there is another operative position

[00:28:40] Speaker 01:
position that is really the operative one most convenient to pulling on the handle.

[00:28:48] Speaker 01:
And if that's what the claim is getting at, that we're designing some flexibility to be able to have some limited movement of the device so that it's in the pushing operative position and the pulling operative position.

[00:29:06] Speaker 01:
This is sort of a follow-up to Judge Stoll's earlier question.

[00:29:09] Speaker 01:
Why is that?

[00:29:10] Speaker 01:
an unreasonable takeaway from this final clause and claim two and claim one?

[00:29:17] Speaker 02:
Well, two points, Your Honor.

[00:29:18] Speaker 02:
I think that even if that were the case, even if there were only two operative positions to push in the polling, that still, and that I think is incorrect.

[00:29:29] Speaker 02:
That's not what these claims are about.

[00:29:30] Speaker 02:
But even if that were true,

[00:29:32] Speaker 02:
It doesn't mitigate the subjectivity of the claims.

[00:29:35] Speaker 02:
And I'm not going to, I promise I will not go through the cases again, but we require objectivity.

[00:29:42] Speaker 02:
So the problem with that interpretation is that not only would the claims be infringed in different ways by different people, the claim could be infringed one day by someone who prefers polling on it, and the next day not infringed if that person, for example, injured him or herself.

[00:30:01] Speaker 02:
So even if that was the case, that we're just talking about pushing or pulling, that wouldn't mitigate the very careful language they chose here.

[00:30:10] Speaker 02:
But that isn't the case.

[00:30:12] Speaker 02:
And again, I hate to keep repeating myself, but going back to figure nine, that allows an almost unlimited amount of adjustability, both in the angle of the device, of the security means, and the depth at which it's inserted into the striker.

[00:30:27] Speaker 02:
All of this allows different angles when you push or pull.

[00:30:31] Speaker 03:
Council, when I look at this claim, it has 10 lines, and we're talking about one line with seven words, which doesn't seem to be quantitatively an important part of the claim.

[00:30:50] Speaker 03:
But would you say that that operative position most convenient to the user is really critical to the claim?

[00:30:58] Speaker 02:
I think, Your Honors, respectively, I think it is critical to the claims.

[00:31:04] Speaker 02:
It's what got them over the Bergstein reference.

[00:31:07] Speaker 02:
That's, remember that.

[00:31:09] Speaker 00:
Counsel, this is Judge Stowell.

[00:31:10] Speaker 00:
I want to ask you something about your question about when one day the claim would be infringed and one day it would be infringed.

[00:31:19] Speaker 00:
How can that be so when this is a device claim and we're not talking about a method?

[00:31:24] Speaker 00:
That doesn't make sense to me.

[00:31:28] Speaker 02:
Well, the way, and again, Your Honor, this claim is not exactly the model of clarity, and I have considered and struggled with that very notion.

[00:31:39] Speaker 02:
The way I look at it is that that language is a further limitation

[00:31:43] Speaker 02:
on really the structure of the securement means, that it has to be so structured, and this is kind of analogous to the Ernie Ball case, it has to be structured such that it provides limited movement to a operative position most convenient to the user.

[00:31:57] Speaker 00:
But wait a minute, not just that though, it's limited movement within a plane substantially parallel to the fixed surface

[00:32:05] Speaker 00:
So at least one operative position most convenient to the user.

[00:32:08] Speaker 00:
I mean, it's not limited movement all over the place.

[00:32:12] Speaker 00:
It's limited movement, one for pushing, one for pulling.

[00:32:16] Speaker 00:
I mean, looking at the phrase as a whole.

[00:32:20] Speaker 00:
And I understand your position to be, well, you don't know within that range of movement, you don't know what is most convenient to the user.

[00:32:30] Speaker 00:
Is that right?

[00:32:31] Speaker 00:
Do I understand your position to be that?

[00:32:33] Speaker 02:
That's correct.

[00:32:35] Speaker 02:
And Your Honor, I've possibly been living with this case for too long.

[00:32:38] Speaker 02:
I've shorthanded the limitation.

[00:32:40] Speaker 02:
I didn't mean to.

[00:32:42] Speaker 02:
But again, I'll finish very briefly.

[00:32:44] Speaker 02:
That is the issue, that limited movements within that plane.

[00:32:48] Speaker 02:
But again, those limited movements are not so limited if you look at figures nine and the other environments, for example, adjustable handles that are in the spec.

[00:32:57] Speaker 02:
And unless there are any questions, further questions, I think I've eaten up all of my time.

[00:33:01] Speaker 02:
I thank you, Your Honor.

[00:33:03] Speaker 03:
Thank you, Mr. Glass.

[00:33:05] Speaker 03:
Mr. Crawford, we'll give you three minutes of rebuttal time back.

[00:33:10] Speaker 03:
Thank you, Your Honor.

[00:33:13] Speaker 04:
You're correct.

[00:33:14] Speaker 04:
The district court provided little analysis, a response to the prosecution history and the limitation of the adjunct prosecution to overcome the prior art.

[00:33:26] Speaker 04:
We think that at least the case would be remanded to the district court would have an opportunity or should have an opportunity to address that.

[00:33:33] Speaker 04:
so that we could clearly argue to the district court why this claim is not indefinite as a whole.

[00:33:40] Speaker 01:
Your honor, the applicant is not reliant... Mr. Corcoran, Mr. Corcoran, sorry, could you answer the question?

[00:33:47] Speaker 01:
The other side has said that when the car came secured to a vehicle, there isn't any movement, let alone any

[00:34:00] Speaker 01:
movement within a plane substantially parallel to a fixed surface to have one operative position for pulling and one operative position for pushing.

[00:34:10] Speaker 01:
Is that right?

[00:34:11] Speaker 04:
No, Your Honor.

[00:34:15] Speaker 04:
The carcone when it's inserted in the structure can be pulled or pushed.

[00:34:19] Speaker 01:
No, but does it move?

[00:34:21] Speaker 01:
Does it ever move or does it stay stationary?

[00:34:26] Speaker 04:
It moves when you pull on it and it moves when you push on it.

[00:34:30] Speaker 01:
It somehow rotates?

[00:34:33] Speaker 04:
It tivets?

[00:34:35] Speaker 04:
No, but it mounts in the... The scion means mounts and then it does have limited movement when pulling or pushing on the handle.

[00:34:49] Speaker 00:
Are you saying you can fix one position for pushing and to a different position for pulling?

[00:35:02] Speaker 04:
Well, Your Honor, so you place the carcane in the striker, you can push down on the carcane, or you can pull up on the carcane.

[00:35:12] Speaker 04:
And there is some limited movement within the striker.

[00:35:14] Speaker 00:
Does the carcane move?

[00:35:19] Speaker 00:
Counsel?

[00:35:21] Speaker 04:
Yes, Your Honor.

[00:35:23] Speaker 00:
What?

[00:35:23] Speaker 04:
Does the carcane move?

[00:35:25] Speaker 00:
Does it move at any point if the user uses the carcane to push?

[00:35:32] Speaker 00:
Is it in the same position as the position it would be if the user used the carton to pull?

[00:35:42] Speaker 04:
It's in the same position, Your Honor, but the angle within the striker, it rotates.

[00:35:47] Speaker 01:
How does it rotate within the striker?

[00:35:51] Speaker 04:
Because the securement means it's smaller in diameter than the striker.

[00:35:56] Speaker 04:
So when you pull up on the carton,

[00:35:59] Speaker 04:
the distance difference between the striker and the edge of the procurement means, there's some limited movement there.

[00:36:12] Speaker 01:
Getting back to the indefiniteness of your most convenient to the user language, I'm more interested in how you would translate that entire final clause that both Judge Stoll and I have been wondering about.

[00:36:26] Speaker 01:
Starting with the phrase said securement means mounting said elongate member for limited movements all the way to the end of the claim.

[00:36:35] Speaker 01:
What's your best translation of what that entire clause means?

[00:36:44] Speaker 01:
I was looking for something in your brief and I couldn't quite see a translation.

[00:36:48] Speaker 01:
Can you just right now give me a one sentence translation of what that final clause means?

[00:36:56] Speaker 04:
My translation of that clause is that the striker is, I'm sorry, the device is mounted, the streamer means other device mounted into the striker.

[00:37:08] Speaker 04:
It is essentially parallel to the fixed service when it's secured into the striker.

[00:37:16] Speaker 04:
The operative positions are limited because of

[00:37:25] Speaker 04:
You know, once you put it into the striker, it's not going to move.

[00:37:28] Speaker 04:
It's going to move about, it's going to move up, or it's going to move down when you push or pull.

[00:37:34] Speaker 04:
And whether the position is most convenient for the user, it's really neither here nor there because the device is restricted to a plain, substantial pedal to the fixed surface with limited movement.

[00:37:55] Speaker 04:
In reality, when you're using it, it's not going to, you know, whether you're a big guy, a small guy, a little girl or a big girl, it's going to go into the striker and you can pull on or you can push on it.

[00:38:09] Speaker 04:
And that's about all it's going to do.

[00:38:14] Speaker 03:
Thank you, counsel.

[00:38:15] Speaker 03:
Case will be taken under submission.

[00:38:17] Speaker 03:
Thank you both counsel.

[00:38:19] Speaker 04:
Thank you, your honor.

[00:38:20] Speaker 03:
Thank you, your honor.

[00:38:22] Speaker 00:
The honorable court is adjourned until tomorrow morning at 10 a.m.