[00:00:00] Speaker 04: Now call up case number 21429 Kilbourne versus Apple. [00:00:05] Speaker 04: Mr. McGoogan, please proceed. [00:00:09] Speaker 02: Thank you, Your Honor, and good morning and may it please the court. [00:00:13] Speaker 02: The district court aired when it construed the general broad claim phrase, reversible elongated member in claim 11 to require specific narrow physical features not associated with the language of the claimant issue. [00:00:28] Speaker 01: Because there's evidence [00:00:30] Speaker 02: Yes. [00:00:31] Speaker 01: This is Judge Wallach. [00:00:34] Speaker 01: On page 29 of the red break, Apple says, I'm quoting, the district court correctly found the 795 patent does not describe or enable any way of achieving compatibility with different tailpiece configurations other than by using a reversible elongated member having a different shape opening on each end. [00:00:58] Speaker 01: Do you agree or disagree with that? [00:01:03] Speaker 02: No, I would disagree with that because the compatibility with different shaped tail pieces is determined by the end shape of the elongated member. [00:01:19] Speaker 02: So for example, if we look in the patent at figure 6C, [00:01:27] Speaker 01: Council. [00:01:30] Speaker 01: Yes. [00:01:30] Speaker 01: OK. [00:01:30] Speaker 01: Yes or no. [00:01:31] Speaker 01: And apparently you disagree. [00:01:35] Speaker 01: So can you cite an instance where reversible, elongated member did not have a different shape opening on each end? [00:01:47] Speaker 02: I can say, Your Honor, that in the patent, it would implicitly have a member that would have the same opening on each end [00:01:56] Speaker 01: And the reason for... Go ahead, Your Honor. [00:02:03] Speaker 01: Why would you reverse it if it had the same one on each end? [00:02:07] Speaker 02: Well, it could be reversible for ease of assembly and that these are parts that have to be put together by the user as recited in the method claim. [00:02:18] Speaker 02: So it does not require specific orientation of the member. [00:02:22] Speaker 02: It would also allow the part to be used if, for example, one end became worn or one end became blocked in any way. [00:02:32] Speaker 02: It would also allow for ease of manufacturing in some point so that the reversibility concept, we believe, is distinct from the idea of matching the tailpiece member of the door lock. [00:02:48] Speaker 02: And for example, in figure 6C of the patent on appendix 0042, there are three different standard door lock shapes that are discussed. [00:02:58] Speaker 02: A half oval, a cross, and basically a slash. [00:03:04] Speaker 02: And so if one were going to try to have members that would allow this piece to be adapted to different doors, what you'd have to have is at least some members with a cross, [00:03:15] Speaker 02: with the slash and with the half oval. [00:03:18] Speaker 02: And that can be done either by having three pieces, each one with one shape adapted to each tail piece, or you could have two pieces, one perhaps with two shapes, one on each end, and one that would have no need to have a different shape opening on each end. [00:03:36] Speaker 02: So believe the idea of- Council. [00:03:40] Speaker 01: Yes, sir. [00:03:42] Speaker 01: Yes. [00:03:43] Speaker 01: Where [00:03:43] Speaker 01: in the patent or in the specification, do any of those factors get discussed? [00:03:56] Speaker 01: The specification discusses the... For them replacing it, having it be the same on each end to deal with wear and tear. [00:04:08] Speaker 02: Those are not discussed in the specification, Your Honor. [00:04:12] Speaker 01: Where are they discussed? [00:04:13] Speaker 01: Anywhere on the record? [00:04:15] Speaker 02: They were discussed during the oral argument in the claim construction proceeding where the court asked, what reasons would you have for reversibility apart from adapting to different tailpiece members? [00:04:28] Speaker 01: But what I think is point to anything in the patent history. [00:04:35] Speaker 02: No, Your Honor. [00:04:37] Speaker 02: The evidence in the prosecution history was that when the client, when the patentee discussed the reversibility feature being adapted to tail pieces of different shapes, it specifically did that in the context of claims that required not only a reversibly elongated member, [00:04:57] Speaker 02: but a reversibly elongated member having first and second ends with each end having, in one instance it says a different shape, in another instance it says a cross and either a half oval or the slash. [00:05:12] Speaker 02: But all of the discussions of reversibly elongated members having different opening on each end was in the context of a specific claim that not only recited a reversibly elongated member in general, [00:05:25] Speaker 02: but went on to define that member in more specific terms by saying that it had two ends with each end having either different shapes or the specific shapes were recited. [00:05:37] Speaker 02: So the question is, is reversible elongated member in isolation and as a whole necessarily restricted to one having different shaped openings on each end? [00:05:49] Speaker 02: And I would say if you look through the patent and the claims of the patent, [00:05:53] Speaker 02: there's nothing in there that would suggest that that phrase, reversibly elongated member, would require in any way different shape openings on each end. [00:06:03] Speaker 02: Now the prosecution history does discuss the claims that have more specific limitations requiring that, and when it talks about the benefit of having the different shapes on each end, it talks about it in the context of claims that specifically have it. [00:06:19] Speaker 02: So I think the issue is, instead of looking [00:06:23] Speaker 01: Yes, Your Honor. [00:06:25] Speaker 01: Let me take you back to the oral argument you were discussing and the arguments that were made by counsel. [00:06:35] Speaker 01: Do you have any expert testimony in support of those arguments? [00:06:39] Speaker 01: What I'm driving at is, is it purely attorney argument? [00:06:44] Speaker 01: For example, wear and tear or ease of use, the ones you mentioned. [00:06:52] Speaker 02: It's not pointed to anything specifically in the intrinsic record. [00:07:01] Speaker 02: And to that extent, it's going to be predominantly attorney, it's going to be attorney argument. [00:07:08] Speaker 02: But I would say from our perspective, it really goes to do the words reversibly elongated member. [00:07:17] Speaker 02: necessarily imply different shape openings on each end. [00:07:20] Speaker 02: Now, whether the patent describes a benefit from that or whether it doesn't, the question is, are those terms, if we're looking at the patent and we're looking at the specification, do those three broad words require different shape openings on each end? [00:07:36] Speaker 02: And if you look in the specification and you look in the claims, you're not going to find anywhere that it says that this has to have [00:07:45] Speaker 02: different shape openings on each end. [00:07:48] Speaker 02: In fact, if you look at the claims that are in the issued patent, claims one and eight, they recite not only reversible elongated member, but they go on to recite more specifically that the reversible elongated member has first and second ends with inner and outer surfaces where the configurations are adaptable to substantially all tail pieces. [00:08:12] Speaker 02: That's claim one. [00:08:13] Speaker 02: are claimates as where you have two ends, one with the half shape and one with the cross shape or a rectangular shape. [00:08:21] Speaker 02: And so, regardless of whether the specification describes the benefits or the desired functionality of the reversible member, there's nothing in the specification that would suggest that those otherwise broad terms should be restricted [00:08:36] Speaker 02: to a reversible elongated member that has the very specific configuration of two different shaped openings on each end, whether it has a... Let me interrupt you for a minute. [00:08:47] Speaker 04: This is Judge Prost. [00:08:50] Speaker 04: I just can't get off the claim language myself. [00:08:53] Speaker 04: And looking at claim 11, the only term there isn't just reversible elongated member. [00:08:59] Speaker 04: It talks about selecting the end which matches. [00:09:03] Speaker 04: So language such as selecting and matching implies, does it not, that the ends of the elongated member are different? [00:09:11] Speaker 04: Otherwise, why would it be necessary to select or match a particular end of the reversible elongated member? [00:09:18] Speaker 04: I'm not getting it. [00:09:20] Speaker 04: This is just relying on the claim language, not the specification, not the prosecution history. [00:09:25] Speaker 04: What is the matching? [00:09:27] Speaker 04: What would be matching? [00:09:29] Speaker 02: I think matching means that you have to have an end of a tailpiece member that matches an end of the reversibly elongated member that matches that particular tailpiece. [00:09:42] Speaker 02: And because there are three possible shapes, in general, you have to select an end of a reversibly elongated member that matches that shape. [00:09:51] Speaker 02: But that doesn't necessarily imply. [00:09:53] Speaker 00: But that seems to me exactly a confession that [00:09:57] Speaker 00: Does the selecting involve ends which have different matching shapes? [00:10:03] Speaker 02: I would say it does not. [00:10:05] Speaker 02: And the reason is that several. [00:10:09] Speaker 02: One is, if you have three adapters where each adapter has an end that is associated with one of the three tail pieces, and you select an adapter or the end of the adapter that matches that tail piece, that would completely comply [00:10:27] Speaker 02: with the terms of claim 11, and that you would select the end of a reversibly elongated member that matches the tailpiece. [00:10:34] Speaker 02: Just like if you were to reach into your toolbox and select the end of the screwdriver that matches the particular screw you're trying to turn, be it a Torx, a Phillips, or a flathead, the recitation that you have an end that matches with the tailpiece [00:10:51] Speaker 02: Simply means that that reversible elongated member serves as an adapter that allows you to configure this assembly to a particular pre-existing lock. [00:11:01] Speaker 02: It doesn't mandate that the other end has a different shape. [00:11:07] Speaker 02: And in fact, if we look at figure 6C again that shows three shapes, if you were going to have adapters configured to all three locks, you might have a member with different shapes on each end. [00:11:20] Speaker 02: you might have one member, which would be the third or the oddball shape, which would have the same on each end, but it's not necessarily inherent in the concept of a reversibly elongated member that you have different shapes. [00:11:33] Speaker 02: And again, this court case in Baldwin v. Siebert that says simply referring to A element doesn't exclude the possibility of having multiple ones would suggest that in a method step of selecting [00:11:47] Speaker 02: the end of a reversibly elongated member that matches the tailpiece, that's not necessarily limited to a step of selecting one member that has different ends, but would in fact encompass the idea of selecting a member from a group of three members that has an end that matches the particular tailpiece at issue. [00:12:11] Speaker 02: And I would point out [00:12:12] Speaker 02: What I think is important is that, and I'm going into rebuttal time, but I want to make this point. [00:12:20] Speaker 02: I think it's important to note that the idea of claim 11 not being specific in requiring different shape openings on each end, [00:12:31] Speaker 02: also illuminates the prosecution history. [00:12:35] Speaker 02: If you look at the arguments that were identified in the district court opinions, they're all arguments made specifically in the context of a claim limitation that recited not only a reversible elongated member, but rather a reversible elongated member that had either different shape openings on each end that met all known locks or substantially all locks [00:12:58] Speaker 02: are one that actually explicitly recited the shape of the different ends. [00:13:03] Speaker 02: And that claim language would have been meaningless and unnecessary if the concept of having different shaped openings on each end was an intrinsic and inherent part of a reversibly long-ended member. [00:13:17] Speaker 02: Thank you. [00:13:19] Speaker 04: Well, we serve the remainder of your time for rebuttal. [00:13:21] Speaker 04: Let's hear from the other side, Mr. Hine. [00:13:25] Speaker 03: Good morning, Your Honors. [00:13:27] Speaker 03: May it be the court. [00:13:28] Speaker 03: The district court's carefully considered construction of reversefully elongated member should be affirmed. [00:13:35] Speaker 03: And this is because the intrinsic evidence uniformly supports the district court's construction of that term, and none of the intrinsic evidence supports patent owner's construction. [00:13:49] Speaker 03: Let's first talk about the language of claim 11. [00:13:52] Speaker 03: I think the language of claim 11, Your Honors, makes clear [00:13:57] Speaker 03: that the reversible elongated member must have different shaped openings on each end to accommodate the different shaped tail pieces. [00:14:04] Speaker 03: It was amended during prosecution to require the steps of determining the cross-sectional shape of the tail piece member of a pre-existing deadbolt system and then selecting the end of the reversible elongated member that matches the predetermined tail piece member. [00:14:21] Speaker 03: And the step of selecting the end that matches just necessarily requires the ends to have different shaped openings. [00:14:29] Speaker 03: Otherwise, it would be impossible to select one end versus the other to match the predetermined shape of the tailpiece. [00:14:37] Speaker 03: Now, if the reversible elongated member has the same shape on each end, then that's as the patent owner contends, you're not really selecting the end which matches the tailpiece shape. [00:14:49] Speaker 03: So the only purpose for selecting the end of the reversible elongated member that matches the tailpiece is for accommodating different cross-sectional shapes of the various tailpiece members. [00:15:01] Speaker 03: And this requires different shaped openings on each end, and this is how the patent owner defined reversible elongated member during prosecution. [00:15:10] Speaker 03: Now what we just heard from the patent owner, and this shows up for the first time in the reply brief, [00:15:17] Speaker 03: They used to attempt to rewrite claim 11 to require just selecting a reversible elongated member that has an end that matches the cross-sectional shape of the tailpiece. [00:15:28] Speaker 03: But that's not what the claim says. [00:15:31] Speaker 03: The claim requires selecting the end of the reversible elongated member that matches the predetermined shape of the tailpiece. [00:15:42] Speaker 03: And this is consistent with the district court's construction and Apple's construction that the reversible elongated member has to have different shaped openings on each end in order to perform the recited function in the claim that would allow the user to select the end which matches the pre-existing tailpiece. [00:16:04] Speaker 00: We also... What they seem to be arguing now is that the adapters [00:16:10] Speaker 00: should be construed as part of the end. [00:16:12] Speaker 00: So if you have adapters which allow you to modify the end, then you have satisfied the claim language somehow. [00:16:23] Speaker 03: Yeah, if the adapter, if the reversible elongated member has different shaped openings on each end to accommodate different cross-sectional shapes of various tailpiece members, that's how this term was defined. [00:16:38] Speaker 03: It's consistent with the context [00:16:40] Speaker 00: of the claim and... I don't think you're understanding what I'm saying. [00:16:44] Speaker 00: What they are doing is that the end includes the adapter. [00:16:52] Speaker 03: Well, the end, the adapter certainly has an end. [00:16:56] Speaker 03: And the adapter has an end under both parties' construction. [00:17:02] Speaker 03: So even under their construction, they say, well, you know, the reverse fully elongated member means that it can just be used in either direction. [00:17:09] Speaker 03: but it has to be, even under their construction, adaptable to the tailpiece. [00:17:15] Speaker 03: So of course, the reversibly elongated member has to have an end. [00:17:21] Speaker 03: And what I'm saying is clear from the context of all of the intrinsic evidence that these reversibly elongated members have to have ends that have different shapes on each end, and that's clear [00:17:36] Speaker 03: from the definition that was provided during prosecution is clear from the claim language of claim 11, and it's clear from the specification as well. [00:17:47] Speaker 03: Did I answer your question, Your Honor? [00:17:51] Speaker 00: Not really, but it's okay. [00:17:53] Speaker 03: Well, if there's anything else that you're getting at, I wanna make sure I get to your point. [00:18:03] Speaker 03: Well, in any case, Your Honor, sorry, go ahead. [00:18:07] Speaker 00: The point that they're making is that you can get a reversible elongated member by adding adapters to the two ends. [00:18:21] Speaker 00: And that is covered by the claim language. [00:18:24] Speaker 03: I think what they're arguing, Your Honor, is essentially this concept of using multiple adapters, multiple adapters that might have the same shape opening on each end, for example. [00:18:37] Speaker 03: And there's just simply no support whatsoever in the specification for the use of multiple adapters. [00:18:43] Speaker 03: In fact, the specification is very clear that it recites a universal spline stem, and the universal spline stem accommodates virtually all manufacturer's tailpiece shapes. [00:18:57] Speaker 03: And we could also look at claim one, your honor, and claim one recites a reversible elongated member that's adaptable [00:19:04] Speaker 03: to substantially all tailpiece members. [00:19:07] Speaker 03: So there, Your Honor, you would have a single reversible elongated member that could be adaptable to all three shapes that are disclosed in the specification. [00:19:17] Speaker 03: So the patent owner is just simply wrong, and it's just manufacturing the fact that the specification or the claims requires the use of multiple adapters. [00:19:28] Speaker 03: It's just simply not the case. [00:19:31] Speaker 03: It's an important point made in the specification that you have a universal flying stem that fits virtually all adapters. [00:19:42] Speaker 03: And that's also reflected in claim one. [00:19:44] Speaker 03: And I would also point out, Your Honor, that this argument shows up for the very first time in their reply brief. [00:19:50] Speaker 03: This was not briefed in their opening brief or ever made at the district court below. [00:19:55] Speaker 03: But most importantly, Your Honor, it's just wrong. [00:20:00] Speaker 03: I'd also like to talk about the specification because it also strongly supports the Apple's construction and the District Court's construction. [00:20:10] Speaker 03: The only passage in the specification that refers to an elongated member that can be used in either orientation does so by having different shaped openings on each end to accommodate the different manufacturer's tailpiece. [00:20:23] Speaker 03: And in fact, the specification says that the purpose of the dual-facing spline stem [00:20:29] Speaker 03: is so that it can be used with a plurality of standard deadbolt locks. [00:20:34] Speaker 03: And that's on appendix page 49. [00:20:36] Speaker 03: It's the 795 patent at column seven lines 29 through 37. [00:20:42] Speaker 03: So the only purpose in the specification for having these elongated members that can be reversed is for accommodating different manufacturers tailpiece. [00:20:52] Speaker 03: And Judge Wallach, you asked counsel for Mr. Kilborn a very good question. [00:20:58] Speaker 03: You say, [00:20:59] Speaker 03: You know, where in the specification do we get these? [00:21:03] Speaker 03: Well, maybe it eliminates where on the reversible elongated member and it's east. [00:21:09] Speaker 03: There's nothing in the specification that describes a purpose for reversibility other than to accommodate the different tailpiece shapes of different manufacturers. [00:21:23] Speaker 03: and his argument at the district court was rejected by the district court because it was just attorney argument. [00:21:30] Speaker 03: There's simply no record evidence whatsoever to support that purpose for reversibility. [00:21:37] Speaker 03: It's very clear from the intrinsic evidence that it's to accommodate different tailpiece shapes and it does so and the only basis for doing so or a way to do so is by having different shaped openings on each end. [00:21:51] Speaker 03: So, Your Honors, I think the specification then very strongly supports Apple's construction of reversible elongated member as well. [00:22:03] Speaker 03: And I would just state very briefly, Your Honor, that I think it's very clear that, again, this was a term that was not included in the original specification or claims. [00:22:17] Speaker 03: the patent owner has admitted it does not have a common meaning in the art, and when it was added to the claims, the patent owner described what it meant by that term. [00:22:28] Speaker 03: And all of this evidence is consistent with the fact that reversibly elongated member has different shaped openings on each end to accommodate different manufacturer's tailpiece shapes. [00:22:40] Speaker 03: I would also just state very quickly, Your Honors, that [00:22:45] Speaker 03: as a separate and independent basis for the District Court's claim construction was prosecution history disclaimer. [00:22:55] Speaker 03: Now the District Court said we didn't need to get there because my definition is a plain and ordinary meaning in view of the intrinsic evidence. [00:23:02] Speaker 03: But that is a separate and independent basis for affirming the District Court. [00:23:10] Speaker 03: And I think it's worth noting, Your Honors, [00:23:14] Speaker 03: The patent owner doesn't even mention prosecution history disclaimer in its opening brief. [00:23:19] Speaker 03: It gets to it in its reply brief on page 20 by simply saying, well, no, we just, we distinguished Corey on grounds that it could be used in either direction. [00:23:31] Speaker 03: I mean, interestingly, your honors, there's not a single citation to the record for that proposition because that's, that's not the case. [00:23:37] Speaker 03: That's not how they distinguished Corey. [00:23:40] Speaker 03: There's a mountain of evidence to the contrary. [00:23:42] Speaker 03: that they distinguish it on grounds that it had different shaped openings on each end to accommodate different tailpiece shapes. [00:23:50] Speaker 03: So, Your Honors, I would submit that that is a separate and independent basis for affirming the district court's claims instruction. [00:23:58] Speaker 03: And if there are no other questions, that's all I have. [00:24:02] Speaker 04: Thank you. [00:24:06] Speaker 02: Mr. Ogham, we've got all time. [00:24:09] Speaker 02: Yes, and I'll just make a few points [00:24:12] Speaker 02: First, this court's precedent has always been clear that a patentee is entitled to use broad language in the claim and is entitled to the full scope of that language, absent some disavow or disclaimer. [00:24:26] Speaker 02: And here the terms, reversibly elongated member, are clear or unambiguous and in no way require that you have different shaped openings on each end. [00:24:37] Speaker 02: So if we look to the language of claim 11 and suggest that the different openings have to come into play because the claim refers to the step of selecting the end of a reversible elongated member that matches the tailpiece, that language would absolutely apply to someone who selects a reversible elongated member from a group of three that has a end that matches the tailpiece. [00:25:05] Speaker 02: The requirement that you select an end that matches the tailpiece is necessary to adapt this lock opener to the particular lock. [00:25:16] Speaker 02: It is in no way necessary to have different shape openings on each end to fulfill that adaption feature. [00:25:24] Speaker 02: So if you look at the language of the plane, it's broad. [00:25:29] Speaker 02: If you look at the language of claim 11, there's nothing that implies or requires different shaped openings. [00:25:36] Speaker 02: And I think it's important to consider claims one and eight because they show when the patentee wanted to recite different shape openings on each end, it referred not only to a reversible elongated member, but rather to one that has different shape openings on each end. [00:25:52] Speaker 02: And it did it very specifically. [00:25:54] Speaker 02: So that, from our view, speaks volumes as to the inappropriateness of restricting claim 11 in this way. [00:26:02] Speaker 02: And as a final point, I'll note that claim construction should apply the same way, whether you're analyzing the claim for infringement or invalidity. [00:26:18] Speaker 02: And if you look at how this would be in reverse, if a patent owner tried to argue [00:26:23] Speaker 02: that reversibly elongated member meant different shaped openings on each end to get around the prior art. [00:26:29] Speaker 02: I don't think that that type of construction would fly. [00:26:33] Speaker 02: Thank you for your time. [00:26:35] Speaker 04: Thank you. [00:26:35] Speaker 04: We thank both sides and the case is submitted. [00:26:38] Speaker 04: That concludes our proceeding for this morning. [00:26:40] Speaker 04: Thank you. [00:26:42] Speaker 03: Thank you, Your Honors. [00:26:44] Speaker 04: The honorable court is adjourned until tomorrow morning at 10 a.m.