[00:00:00] Speaker 01:
The United States Court of Appeals for the Federal Circuit is now open and in session.

[00:00:06] Speaker 01:
God save the United States and this honorable court.

[00:00:14] Speaker 04:
Good morning.

[00:00:16] Speaker 04:
We have four cases for argument this morning, all involving the same parties or largely the same parties.

[00:00:26] Speaker 04:
As counsel just said, the first case is Caterpillar

[00:00:29] Speaker 04:
Pradadi Stradali versus ITC, and the case involves also a cross-appeal.

[00:00:40] Speaker 04:
We have decided to argue, or allow argument consecutively with respect to the appeal and the cross-appeal.

[00:00:47] Speaker 04:
I understand that arguments are going to be divided from the appellee, and you'll have to keep track of your own time limits so you don't step on each other's.

[00:00:58] Speaker 04:
Mr. Barney, are you ready to proceed?

[00:01:01] Speaker 00:
I am, Your Honor.

[00:01:03] Speaker 04:
Okay, you may.

[00:01:06] Speaker 00:
Good morning, Your Honors.

[00:01:06] Speaker 00:
May it please the Court?

[00:01:07] Speaker 00:
I'd like to begin with the construction of Controller Configured 2 in Claims 2, 5, and 16 of the 530 patent.

[00:01:15] Speaker 00:
Workin and the Commission contend that because Controller was found to be the name for a class of structure, that's the end of the 112.6 inquiry, but it's not.

[00:01:25] Speaker 00:
This court has made clear that in determining whether 112-6 applies, you must consider not just the introductory phrase like controller, but also the claimed function.

[00:01:35] Speaker 00:
The question is not whether the claim resides some structure, it's whether it resides sufficient structure to support the claimed function.

[00:01:43] Speaker 00:
Here the claims require not just a controller, but a controller configured to perform specific tasks, like raising the lifting column synchronously.

[00:01:52] Speaker 00:
There's no dispute that those functions require specialized programming.

[00:01:56] Speaker 00:
The Commission simply did not consider those functions in its analysis.

[00:02:01] Speaker 04:
What about the fact that you have separately argued in your obviousness case that COTA would know

[00:02:11] Speaker 04:
What a controller is, it's a well-known sort of off-the-shelf product and it would not be anything complicated.

[00:02:19] Speaker 00:
Your Honor, we're accepting for the sake of argument that controller was a name for a class of structures.

[00:02:27] Speaker 00:
We'll accept for the sake of argument work in this position that it's a device that includes a processor that can be programmed to carry out specific functions.

[00:02:37] Speaker 00:
But that doesn't answer the question of whether

[00:02:40] Speaker 00:
its sufficient structure to perform the claimed functions, because this court has repeatedly held that for a computer implemented invention like this one, the structure that performs a specially programmed function is an algorithm, not a generic processor.

[00:02:58] Speaker 00:
Now, Workin and the Commission argue that this rule only applies to the second step of the 112.6 analysis, not the first, and they ask the court to adopt a double standard

[00:03:07] Speaker 00:
by which a black box controller that even if they admit would not support a specially programmed function if recited in the specification can somehow be sufficient structure to support that same function if recited in the claim.

[00:03:21] Speaker 00:
Well that makes no sense logically and in fact it contradicts the language of the statute.

[00:03:26] Speaker 04:
Section 112- What do we do with the fact that the ALJ made a specific factual finding with respect to what would be understood with respect to the controller?

[00:03:37] Speaker 04:
I mean, the ALJ, based on expert testimony, said that the opposer would know that it's just simple, again, off-the-shelf software, even, for purposes of performing the function.

[00:03:52] Speaker 00:
Well, Your Honor, if you look at the ALJ's analysis, and I would refer you to appendix page 430 to 31, the... Let me make sure I'm in the right volume here.

[00:04:08] Speaker 00:
The court, let me see, I would refer you to page 430 to 31, yeah, on page 430 is the sum total of the commission's

[00:04:22] Speaker 00:
rationale on construing the claim.

[00:04:24] Speaker 00:
And all the Commission did was find that controller is the name for a class of structure.

[00:04:29] Speaker 00:
There's no analysis whatsoever that that class of structure was sufficient to perform the claim functions.

[00:04:36] Speaker 00:
The court, the ALJ, didn't even recite the claim functions in its analysis.

[00:04:43] Speaker 00:
And that's the error.

[00:04:45] Speaker 00:
That's the error.

[00:04:45] Speaker 00:
Because MCD products and other cases from this court have said that you must consider the claim's function.

[00:04:51] Speaker 00:
It's not enough just to say this is structure.

[00:04:55] Speaker 00:
If you look at the ITC's brief, for instance, they admit on page 28 of their brief that once the ALJ figured out that controller is the name for a class of structure, and I'm quoting them from their brief, they say beyond that finding, which they call the essential inquiry,

[00:05:12] Speaker 00:
Further application of the means of function jurisprudence was not warranted and did not take place.

[00:05:17] Speaker 00:
So they admit that they didn't go further and look to see whether that structure was sufficient to accomplish the claimed functions.

[00:05:25] Speaker 00:
That's the error, Your Honor.

[00:05:29] Speaker 00:
Now, referring back to the statute and this proposed double standard, 112.6 speaks in terms of whether a claim function has structure, quote, in support thereof.

[00:05:39] Speaker 00:
If it lacks the structure in support thereof, 112.6 applies and the claim covers the corresponding structure.

[00:05:45] Speaker 00:
But either way, the structure is the same.

[00:05:48] Speaker 00:
It has to be structured in support thereof, in support of the claim function.

[00:05:52] Speaker 00:
There's no way to read that statutory language

[00:05:55] Speaker 00:
as imposing a double standard where the amount of structure necessary to support the claim's function would depend on the superficial happenstance of where in the specification it's recited.

[00:06:07] Speaker 04:
And as we pointed out... What you're saying is that, you know, all they would need was just one more diagram with arrows showing what's going to happen?

[00:06:17] Speaker 00:
Well, Your Honor, I would point to the Apple Motorola case as an example where there was a claim heuristic.

[00:06:24] Speaker 00:
And the court determined that that was not a means plus function limitation.

[00:06:28] Speaker 00:
But as part of that analysis, it looked at the claim and said there's things in the claim that explain how that heuristic actually works.

[00:06:38] Speaker 00:
So that's akin to an algorithm.

[00:06:40] Speaker 00:
But here, there's nothing in the claim language that explains how this black box controller, which is essentially just a processor, actually accomplishes the function like raising the legs synchronously.

[00:06:52] Speaker 00:
That's what's missing in these claims, and that's what invokes 112.6.

[00:06:57] Speaker 00:
And it's also important to note, as we point out in our brief, that these limitations are the sole purported point of novelty of these claims.

[00:07:06] Speaker 00:
Workin' doesn't contest that the RX 500 anticipates claim one, from which all three of these claims depend.

[00:07:12] Speaker 00:
And the Supreme Court long ago identified the vice that is inherent when an inventor is painstaking when he recites what has already been seen

[00:07:20] Speaker 00:
and then uses conveniently functional language at the exact point of novelty.

[00:07:26] Speaker 00:
That's what Workin has done here.

[00:07:27] Speaker 00:
It seeks to claim all methods and all algorithms and all controllers for regulating lifting columns using leg sensor data while conveniently disclosing no methods, no algorithms, and no controller.

[00:07:40] Speaker 00:
That is pure functional claiming.

[00:07:42] Speaker 00:
And this is precisely what 112.6 was designed to address.

[00:07:46] Speaker 00:
But Workin only wants the benefit of 112-6.

[00:07:49] Speaker 00:
It wants the ability to claim functionally at the exact point of novelty, but it doesn't want to pay the price, the quid pro quo, of actually disclosing an algorithm to perform these claimed functions.

[00:08:01] Speaker 00:
And so we would ask the court to construe these claims as 112-6 limitation, and that would necessitate a finding of indefiniteness, because Workin does not dispute that these claims are indefinite if they're covered by 112-6.

[00:08:13] Speaker 00:
I'd like to use my... Yes.

[00:08:16] Speaker 03:
Mr. Barney, this is Joe Strondo, and it's also right that you don't make a separate 112-2 indefiniteness argument apart from your argument that this claim falls within 112-6.

[00:08:30] Speaker 00:
Well, I think that's correct, Your Honor, although I would point out, and we did explain in our brief, the interaction of the Halliburton line of cases with 112-6.

[00:08:39] Speaker 00:
I don't know whether I would call that a separate one, a standalone

[00:08:43] Speaker 00:
112-2 argument, but our point there is that there is a body of case law from the Supreme Court that says if you try to claim functionally at the point of novelty... I think you understand the point.

[00:08:57] Speaker 03:
Of course, when something that belongs in 112-6 doesn't meet 112-6 requirements, it therefore fails 112-2.

[00:09:10] Speaker 03:
My question is whether you have a 112... you have made a 112-2 indefiniteness argument separate and apart from your argument that this belongs in 6 and Flunk 6.

[00:09:25] Speaker 00:
I think that's fair, Stephen, Your Honor.

[00:09:27] Speaker 00:
We did not make a standalone 112-2 argument.

[00:09:34] Speaker 00:
I heard a tone, I'm not sure if that was my tone, but to the extent I have some time left, I'd like to just quickly address obviousness of those same three claims, 2, 5, and 16.

[00:09:43] Speaker 00:
The commission found that in terms of obviousness, all three of those claims rise and fall with claim 2, and Workin does not dispute this.

[00:09:52] Speaker 00:
We believe the commission's finding that claim 2 is not obvious is irreconcilable with its refusal to apply 112.6 for the controller-configured 2 limitations.

[00:10:03] Speaker 00:
to avoid a finding of indefinite as Workin argued in the commission accepted that a person of ordinary skill in the art would already know how to select the controller and program it to perform the claim function specifically using leg sensor data.

[00:10:19] Speaker 00:
Caterpillar never argued that you would take Davis's entire grade and slope control system and drop it into the RX 500.

[00:10:28] Speaker 00:
which already had a gradient slope control system.

[00:10:31] Speaker 00:
That was a straw man created by working.

[00:10:34] Speaker 00:
Caterpillar's argument was simple and straightforward.

[00:10:37] Speaker 00:
Davis teaches a basic well-known type of controller called a deviation elimination controller.

[00:10:44] Speaker 00:
And as a working expert conceded that this concept is well-known and that even a graduate student would be able to implement it in the RX 500.

[00:10:54] Speaker 00:
And so we believe the commission air as a matter of law and accepting work and bodily incorporation argument where the entire grades and slope controller in Davis had to be reprogrammed and incorporated wholesale into the RX 500.

[00:11:09] Speaker 00:
We never argued that and that's then the law doesn't require it.

[00:11:12] Speaker 00:
And one last point.

[00:11:13] Speaker 00:
The commission also aired as a matter of law and focusing on whether the modification would disrupt Davis's principle of operation.

[00:11:21] Speaker 00:
And the IPC concedes at page 30 of its brief that that was the main premise of the ALJ's finding.

[00:11:27] Speaker 00:
But we believe it's legally incorrect because in our combination, Davis is a teaching reference.

[00:11:33] Speaker 00:
It's only being used to supply a simple and well-known teaching.

[00:11:37] Speaker 00:
And to be clear, Davis itself is not being modified in our proposed in our proposed combination.

[00:11:43] Speaker 00:
only the RX 500 is being modified, and therefore the inquiry should be whether that modification disrupts the RX 500's principle of operation and working does not dispute that.

[00:11:53] Speaker 00:
That's an undisputed point.

[00:11:54] Speaker 00:
It does not disrupt the RX 500's principle of operation.

[00:11:59] Speaker 00:
I know that I'm into my rebuttal time, so unless your honors have questions, I will.

[00:12:04] Speaker 04:
Okay, Council, thank you.

[00:12:05] Speaker 00:
Thank you.

[00:12:09] Speaker 04:
Let's hear from the other side.

[00:12:12] Speaker 05:
Good morning, may it please the court.

[00:12:16] Speaker 05:
So I would address the issues raised by Caterpillar.

[00:12:21] Speaker 05:
First, with respect to the claim construction, the record doesn't support Caterpillar's argument.

[00:12:28] Speaker 05:
In this case, both intrinsic and extrinsic evidence show that control is not claimed as means plus function term.

[00:12:35] Speaker 05:
So the claim limitation in question doesn't use the word means.

[00:12:40] Speaker 05:
And furthermore, the term control is not a non-sword.

[00:12:43] Speaker 04:
So therefore... What if the intrinsic record tells us that it's not a mean... Well, I'm referring to claim language.

[00:12:50] Speaker 05:
Intrinsic record... Okay.

[00:12:51] Speaker 05:
Well, let's go past the claim language.

[00:12:55] Speaker 05:
So there is a presumption, rebuttal presumption, that this limitation is not claimed in the means plus function format.

[00:13:03] Speaker 05:
And Caterpillar Fair to Prove provides sufficient evidence to overcome this presumption.

[00:13:08] Speaker 05:
Now, if we fast claim language, I referred the court to page 1088, 1089 of the appendix, which refers to the discussion of the provisions in the specification and how one of ordinary skills in the art will view the specification.

[00:13:37] Speaker 05:
Based on this discussion and based on the specification, the term controller denotes a well-defined class of structures.

[00:13:48] Speaker 05:
And that's the understanding of one of ordinary skill in the arts.

[00:13:52] Speaker 05:
And that's the inquiry that the ALJ had to perform.

[00:13:58] Speaker 05:
So based on this discussion and based on the specification and provisions addressed in this discussion,

[00:14:07] Speaker 05:
including the functions that a controller has to perform.

[00:14:12] Speaker 05:
There is substantial evidence in the form of Dr. Loomki's testimony and Dr. Wilinski's declaration that supports the ALJ's finding that this term is not functionally claimed and controller refers to a standard controller such as

[00:14:36] Speaker 05:
programming logic controller.

[00:14:39] Speaker 05:
So... Well, how is this case different from MDT?

[00:14:44] Speaker 05:
Well, the case is different because in MTB, there was no finding that one of orderly skill in the art will understand the term in question.

[00:14:57] Speaker 05:
In that case, it was mechanical control assembly.

[00:15:04] Speaker 05:
That the term in question connotes

[00:15:06] Speaker 05:
a well-known class of structures.

[00:15:08] Speaker 05:
So that's a major difference, and the result is different.

[00:15:13] Speaker 05:
Now, in this case, both, as I said, both the claim language and specification show that one of ordinary skills in the art will understand this term to be well-defined structurally.

[00:15:30] Speaker 05:
In addition, I want to say that it was Caterpillar's burden to overcome the presumption

[00:15:37] Speaker 05:
by preponderance of the evidence.

[00:15:41] Speaker 05:
In other words, Caterpillar had to show that one of ordinary skills in the art would not understand this term to mean a well-known class of structures, and Caterpillar failed to do that.

[00:15:54] Speaker 05:
And that's a determinative point based on this court's precedent.

[00:16:02] Speaker 05:
For example, I can

[00:16:03] Speaker 05:
referred to ethics decision which was favorably cited and quoted in the recent MTD decision.

[00:16:12] Speaker 05:
So after that, the judge's finding essentially results affirmatively.

[00:16:20] Speaker 05:
The essential inquiry under Williamson and that essentially ends the first step of the analysis by finding that this term is not functional claim and therefore

[00:16:34] Speaker 05:
the analysis doesn't proceed to the second step.

[00:16:37] Speaker 05:
Caterpillar conflates the step and is looking for something that shouldn't be looked for in this situation.

[00:16:45] Speaker 05:
So based on that, the intrinsic evidence entirely supports the ALJ decision and extrinsic as well.

[00:16:57] Speaker 05:
And in this case, the judge properly relied on the extrinsic evidence in the form of the experts

[00:17:03] Speaker 05:
testimony because this testimony, this intrinsic evidence is consistent with the intrinsic evidence.

[00:17:10] Speaker 05:
And it serves to explain understanding of one of ordinary skill in drugs, which is perfectly acceptable and appropriate under the established rules of claim construction.

[00:17:22] Speaker 05:
So now I want to address the obviousness issues.

[00:17:30] Speaker 05:
The reason why the commission found that

[00:17:34] Speaker 05:
Caterpillar failed to prove by clearly convincing evidence that the asserted claims of 530 patents are not rendered obvious by RX 500 and DAIS has nothing to do with the claim construction of the term controller.

[00:17:57] Speaker 05:
The reason for that was substantial evidence in the form of Dr. Luprich's testimony.

[00:18:04] Speaker 05:
And Dr. Lucas testified that, and by the way, going back to, I'm sorry, I just wanted to mention one more thing, that the term controller was construed not in isolation, it was construed in light of the functions that it was supposed to perform under the,

[00:18:34] Speaker 05:
claims of the patent.

[00:18:36] Speaker 05:
So, there is no argument that it was improperly construed.

[00:18:42] Speaker 05:
Now, back to the RX500 and Davis.

[00:18:50] Speaker 05:
So, Dr. Lucas opined that the proposed modification would entail substantially design that it would require a significant change to the control scheme

[00:19:02] Speaker 05:
And it's not a trivial modification.

[00:19:05] Speaker 05:
Essentially, it will alter the principle of operation of this external reference system.

[00:19:10] Speaker 05:
And that's the reason why the judge relied on this substantial evidence and made his factual finding, which should not be disturbed.

[00:19:19] Speaker 03:
Mr. Lieberman, this is Judge Toronto.

[00:19:21] Speaker 03:
I think Mr. Barney says,

[00:19:23] Speaker 03:
at least as to part of what you just said, that it was simply legally erroneous to focus on changing the principle of operation of Davis.

[00:19:34] Speaker 05:
Right.

[00:19:34] Speaker 05:
I understand this point, and I am going to address it.

[00:19:37] Speaker 05:
The judge, at least not aware of any decision that would specifically say that this principle applies only to one of the references

[00:19:54] Speaker 05:
considered in the combination.

[00:19:55] Speaker 05:
And the judge actually cited two decisions in the RETI and less packed industries in his ID.

[00:20:05] Speaker 05:
And these decisions indicate that that principle actually applies to any reference, even to the second reference in the combination.

[00:20:16] Speaker 05:
And I will, for example,

[00:20:17] Speaker 05:
I will quote Plaspect industry's decision.

[00:20:20] Speaker 03:
No, can you not quote decisions from different contexts?

[00:20:26] Speaker 03:
Tell me why at the proper level of generality of the principle that Davis teaches, a skilled artisan would not take that principle to make a modification of the RX500.

[00:20:47] Speaker 05:
We have to look into these references through the eyes of one of ordinary skills in the art.

[00:20:54] Speaker 05:
And my understanding that based on the testimony of Dr. Lunkis, when one of ordinary skills in the art will see that this modification would alter the principle, it won't, the one of ordinary skills in the art would not reasonably consider this reference

[00:21:15] Speaker 05:
as a proper reference for the combination, because in his mind, in his view, it will be an entirely different animal as compared to how it's going to be used in the combination.

[00:21:28] Speaker 05:
Not used, but the principle of operation.

[00:21:32] Speaker 05:
It will be entirely different.

[00:21:34] Speaker 05:
Again, we have to look into that.

[00:21:35] Speaker 05:
A lay person can view this differently, but one of the other skills is art.

[00:21:40] Speaker 05:
will view it in this way, one who is actually working in this art.

[00:21:44] Speaker 05:
And Dr. Lucas testified that in the view of one of ordinary skills in the art, the fact that it will alter the principle of operation of Davis external reference system, that will preclude this combination from the standpoint of one of ordinary skills in the art.

[00:22:03] Speaker 05:
And that's substantial evidence that the ALJ properly relied on.

[00:22:10] Speaker 05:
Okay.

[00:22:10] Speaker 05:
Now I just wanted to briefly respond to Heather Peeler's argument in the reply brief.

[00:22:27] Speaker 05:
Okay, I hear the signal.

[00:22:29] Speaker 05:
That's probably a yellow signal.

[00:22:31] Speaker 05:
So, I just wanted to say one thing.

[00:22:35] Speaker 04:
Substantially...

[00:22:38] Speaker 04:
you know, your co-counsel or the ITC?

[00:22:43] Speaker 05:
Well, I, we don't have any rebuttals, John.

[00:22:47] Speaker 05:
So, I just wanted to mention that substantial evidence supports the LGA's fighting with respect to the combination of SWISH and UMAR both under the express teaching and teaching by inherently.

[00:23:04] Speaker 05:
And that's the Dr. Lucas testimony response 342 to 346 at pages 14, 88, 89.

[00:23:16] Speaker 05:
That's the thing that I wanted to say with respect to that combination.

[00:23:24] Speaker 05:
And thank you very much.

[00:23:29] Speaker 04:
I'm not sure how much time is left.

[00:23:32] Speaker 01:
Your Honor, this is Patrick.

[00:23:35] Speaker 01:
He went on for about 11 minutes, so technically zero.

[00:23:39] Speaker 01:
But if you would like, I can give the intervener five minutes.

[00:23:44] Speaker 04:
OK, let's do that.

[00:23:46] Speaker 04:
And then we'll give some more to the other side for rebuttal.

[00:23:50] Speaker 01:
Yes, Your Honor.

[00:23:55] Speaker 02:
Thank you.

[00:23:56] Speaker 02:
May it please the court, this is Michael Joffrey for Birkin.

[00:23:59] Speaker 02:
I'd like to start off with Judge Toronto's question about why it is the case that a personal skill mirror would not combine the RX500 and David.

[00:24:10] Speaker 02:
And I want to point out that first off that this is a slightly different argument than what Caterpillar attributes to Birkin.

[00:24:18] Speaker 02:
Caterpillar essentially says that one could not, or bodily incorporate, one could not, you know, incorporate the controller of Davis

[00:24:26] Speaker 02:
into the RX 500.

[00:24:28] Speaker 02:
And that's not Birkin's point.

[00:24:29] Speaker 02:
Birkin's point is that a person with skill in the art would not.

[00:24:33] Speaker 02:
There's no reason that a person would take the Davis controller and incorporate it into the RX 500.

[00:24:38] Speaker 02:
And the reason's fairly simple.

[00:24:40] Speaker 02:
Davis has a controller that is used for grade and slope controlling.

[00:24:44] Speaker 02:
And that is a different function than what is being claimed in the 530 patent.

[00:24:49] Speaker 02:
But Caterpillar's obviousness combination would essentially take this Davis grade and slope controller

[00:24:55] Speaker 02:
And then add it to the RX 500, which already has a grade and slope controller.

[00:25:00] Speaker 02:
But then modify the Davis controller in that combination to work with a different mechanism that does not control grade or slope.

[00:25:09] Speaker 02:
And to arrive at the different still intelligent lay control mechanism that's actually claimed in the 530 patent.

[00:25:16] Speaker 02:
So there's just too many multiple steps such that the ALJ properly found that it would disrupt the operation

[00:25:22] Speaker 02:
of the Davis and a personal skill in the art just simply would not make the combination that Calipilar proposes.

[00:25:28] Speaker 02:
And that's supported by substantial evidence.

[00:25:32] Speaker 03:
Mr. Zafri, what do you think is the proper role, if any, of this reference to changing the operation of the Davis device principal component, whatever the proper word is?

[00:25:51] Speaker 03:
As opposed to if you're starting with the RX 500, you may have given some reasons why an expert could, why the ALJ could properly find that there's just too many steps and too many uncertainties and that would be fine.

[00:26:12] Speaker 03:
But what does that have to do with changing the principle of the operation of Davis?

[00:26:18] Speaker 02:
The reason, Your Honor, is the following, is that both Davis and the RX 500 contain what's known as a gradient slope controller.

[00:26:26] Speaker 02:
And all the parties admit that the gradient slope controllers cannot perform the same functions that are claimed in the 530 patent.

[00:26:34] Speaker 02:
So it doesn't matter whether or not you change the operation of the Davis gradient slope controller or change the operation of the gradient slope controller that's already found in the RX 500.

[00:26:45] Speaker 02:
They're both

[00:26:46] Speaker 02:
a controller that does something quite different than what is found in the claims of the patent.

[00:26:52] Speaker 02:
And so therefore, regardless of whether you modify one or the other, those modifications simply would not make sense.

[00:26:58] Speaker 02:
They would essentially, there would be no reason to take this Davis controller and modify it however it needed to be modified to meet the claims of the 530.

[00:27:10] Speaker 03:
Would you mind just completely switching gears before your clock runs out back to 1.12?

[00:27:17] Speaker 03:
At the level of not the particular requirements of our Williamson and Nautilus and how 112-2 is different from 112-6, can you respond at the level of explaining why it makes sense to keep those inquiries quite separate so that one doesn't look

[00:27:39] Speaker 03:
for these purposes at step one of 112.6 and whether the structure is one that has enough definition to perform the function?

[00:27:52] Speaker 02:
I think, Your Honor, that the problem with Caterpillar's argument is that they flip what the statute requires.

[00:27:59] Speaker 02:
The question is, if we claim or declaim functionally, the question then is, well, is there sufficient structure that's found within the specification?

[00:28:09] Speaker 02:
But that presumes the conclusion that this was functionally claimed.

[00:28:14] Speaker 02:
That's contrary to what the ALJ found.

[00:28:17] Speaker 02:
And so to ask, well, did you perform, do you have enough in your claim such that you're indefinite or not, basically assumes that there was a functional claiming.

[00:28:28] Speaker 02:
But that's not allowable.

[00:28:31] Speaker 02:
That's not the way that the claim is written.

[00:28:34] Speaker 02:
And that's not what the ALJ found or the experts stated.

[00:28:38] Speaker 02:
One way to think of this is thinking of an electric drill.

[00:28:42] Speaker 02:
An electric drill obviously takes its names from its function.

[00:28:45] Speaker 02:
Furthermore, you can modify the drill by swapping out different bits.

[00:28:49] Speaker 02:
And therefore, you could use the drill on different things.

[00:28:53] Speaker 02:
Similarly, but that doesn't mean that the drill now somehow loses its structure or that we have trouble understanding in terms of an indefiniteness in query under 112-2.

[00:29:07] Speaker 02:
And so, similarly here, the controller is the controller.

[00:29:10] Speaker 02:
It obviously can be modified, but that does not strip it of its structure.

[00:29:16] Speaker 02:
I believe my time is up.

[00:29:18] Speaker 04:
Okay.

[00:29:18] Speaker 04:
Thank you, Council.

[00:29:20] Speaker 04:
Let's go back to Mr. Burney.

[00:29:23] Speaker 00:
Thank you, Your Honor.

[00:29:24] Speaker 00:
I'll go ahead and just start with the very last point that my colleague made with the example of the electric drill.

[00:29:32] Speaker 00:
The problem is, and the reason that you have to look at the function, is you can have a claim that says an electric drill configured to make a peanut butter and jelly sandwich.

[00:29:42] Speaker 00:
According to work and the commission's logic, all they have to prove is that electric drill is a known class of structures, and that's the end of the inquiry.

[00:29:51] Speaker 00:
Mr. Lieberman calls that the essential inquiry.

[00:29:53] Speaker 00:
It's not the essential inquiry.

[00:29:55] Speaker 00:
It's only half of the essential inquiry.

[00:29:57] Speaker 00:
The rest of the inquiry is,

[00:29:58] Speaker 00:
is that sufficient structure to actually perform the claim's function?

[00:30:02] Speaker 00:
And you mentioned MTD products, which is certainly on point.

[00:30:06] Speaker 00:
I would also point your honors to a more recent case, and we did cite this to our colleagues yesterday, so they're aware of it.

[00:30:13] Speaker 00:
E. genera versus Cisco is the presidential decision from August 28, 2020.

[00:30:21] Speaker 00:
And I would commend the panel to review that case as well.

[00:30:25] Speaker 00:
Very similar to MTD products.

[00:30:27] Speaker 00:
where the claim recited a particular limitation.

[00:30:33] Speaker 00:
It was a control limitation that included logic to modify messages.

[00:30:38] Speaker 00:
And what the court held was even if we assume that logic has some sort of structural connotation to it in the sense that it denotes software, firmware, circuitry, or some combination thereof, that's still not enough because it's not structure that performs the claimed function.

[00:30:56] Speaker 00:
And that is the error here.

[00:30:57] Speaker 00:
That's the problem here.

[00:30:59] Speaker 00:
Now, going back to the obviousness inquiry, my colleague from Workin says that the problem is we're trying to put a gradient slope controller into the RX500 that already has a gradient slope controller.

[00:31:18] Speaker 00:
That, again, is an absolute mischaracterization of what we argued.

[00:31:23] Speaker 00:
We never argued that you would take the entire grade and slope system from Davis and drop it into the RX 500.

[00:31:32] Speaker 00:
That would be illogical because the RX 500 already had a grade and slope control system.

[00:31:37] Speaker 00:
The teaching that we took from Davis was just that.

[00:31:39] Speaker 00:
It was a teaching.

[00:31:40] Speaker 00:
It was a teaching of a specific type of controller called a deviation elimination controller, which allows the user to preset a value and then it measures

[00:31:51] Speaker 00:
It has linear sensor measurements and it compares those linear sensor measurements with that preset value and moves the legs to eliminate any deltas between those values.

[00:32:02] Speaker 00:
That's the only teaching that is being taken from Davis.

[00:32:05] Speaker 00:
It has absolutely nothing to do with grade and slope control.

[00:32:08] Speaker 00:
That was a straw man that worked and brought into the case.

[00:32:12] Speaker 00:
That was not Caterpillar's argument.

[00:32:14] Speaker 00:
And so that is, again, the violation of the bodily incorporation doctrine.

[00:32:20] Speaker 00:
And again, you have to remember that working successfully argued in order to stave off the indefiniteness argument that a person of ordinary skill in the art would already know how to choose a controller and how to program it specifically using leg sensor data to accomplish the function, the very function

[00:32:40] Speaker 00:
that the RX500 and Davis teach.

[00:32:43] Speaker 00:
The RX500 already had a manual process for taking leg sensor data, showing it on a console, and allowing the user to manually adjust the legs using toggle switches to reach desired set points.

[00:32:57] Speaker 00:
The only thing we're modifying in the RX500 is we're automating that process.

[00:33:03] Speaker 00:
Unless your honors have specific questions, that's all I have.

[00:33:10] Speaker 04:
Okay, thank you, Council.

[00:33:13] Speaker 04:
The case will be submitted.