[00:00:07] Speaker 02:
The United States Court of Appeals for the Federal Circuit is now open and in session.

[00:00:13] Speaker 02:
God save the United States and this honorable court.

[00:00:19] Speaker 04:
Good morning.

[00:00:19] Speaker 04:
We have one argued case this morning, number 20-1665, Kilbourne versus Apple, Incorporated.

[00:00:27] Speaker 04:
Mr. McCaulkin.

[00:00:31] Speaker 01:
Yes, good morning and may it please the court

[00:00:34] Speaker 01:
The PTAB panel below erred in its construction of dependent claim 14, and as a result, erred in its finding that claim 14 was shown invalid.

[00:00:46] Speaker 01:
Specifically, the panel erred in failing to give proper weight to the plain language of claim 14 that requires an active method step of composing a holster, in particular a deadbolt activating system, of three separate

[00:01:04] Speaker 01:
components, namely a gear carrier.

[00:01:07] Speaker 04:
Do you agree that if the board got the claim construction right that you lose in this case?

[00:01:16] Speaker 01:
Yes.

[00:01:17] Speaker 01:
If the claim only requires that the completed composite structure meet the requirements, and by that I mean that you can find in that composite completed structure

[00:01:32] Speaker 01:
something that is a gear carriage, something that is motor and battery carriage, and something that is a gear base, I believe if that construction is confirmed, then the finding of invalidity would be appropriately affirmed.

[00:01:48] Speaker 01:
I think this all turns on the claim construction and whether or not the claim requires you to engage in a step of combining the three components recited in the claim

[00:01:59] Speaker 01:
to provide the whole or whether or not you can look at that claim as the board did in simply finding that you look at the completed assembly and see if you can check off each of the features recited in the claim.

[00:02:16] Speaker 04:
Okay, go ahead.

[00:02:17] Speaker 01:
So, and I think that claim construction issue is absolutely critical because if the claim is found to actually require the method of

[00:02:28] Speaker 01:
composing a whole by combining these, the three discrete elements recited in the claim, that that is not disclosed by the Pire Art Patiak reference.

[00:02:39] Speaker 01:
And I don't believe there's really a lot of significant dispute on that because the Patiak reference does not in fact show that method of assembling or forming the device.

[00:02:50] Speaker 01:
Now, the boards found that the claim does not require the combination of these three components

[00:02:57] Speaker 01:
but simply look to see does the completed assembly in the prior art have features that would meet what it looked at as limitations in the claim.

[00:03:07] Speaker 01:
And we believe that's an improper construction of the claim because claim 14 is not an apparatus claim.

[00:03:15] Speaker 01:
Claim 14 is a dependent claim from a method claim that adds a method step requiring the composing of a whole from three discrete components.

[00:03:27] Speaker 01:
And in order to violate that claim and in order to show that claim is invalid, the method step of combining those three elements must be shown.

[00:03:37] Speaker 01:
And I think that's clear from the claim language itself because the claim doesn't simply recite a deadbolt activating system having a gear carriage, a motor and battery carriage, and a gear base.

[00:03:50] Speaker 01:
It instead recites an active step of composing a deadbolt activating system of those three separate components.

[00:03:59] Speaker 01:
And I think that very clearly shows that this is not something that you look at the end apparatus, but you actually look at that that method step is performed.

[00:04:08] Speaker 01:
And I think there's at least two things in the claim that confirm that.

[00:04:13] Speaker 01:
One is the active verb composing.

[00:04:15] Speaker 01:
which, in fact, is a verb talking about the combining of discrete components to yield a whole.

[00:04:22] Speaker 01:
So when the claim talks about composing the deadbolt activating system and then recites three components, it very clearly indicates that it's talking about an active assembly of those three components and not simply characteristics or features of the final assembled device.

[00:04:41] Speaker 01:
I think it's also important to note

[00:04:43] Speaker 01:
that because the claim says that you compose the whole, i.e.

[00:04:47] Speaker 01:
the deadbolt activating system of the discrete components, and one of those components is identified as a motor and battery carriage, that means that you have to have a motor and battery carriage component that exists independently and prior to the assembly of all the components to form the deadbolt activating system.

[00:05:10] Speaker 04:
This is Judge Dyke.

[00:05:13] Speaker 04:
When I look at this method claim and the independent claim being 11, it seems to me it's a method for moving the deadbolt rather than a method for assembling the overall apparatus.

[00:05:31] Speaker 04:
So why does that suggest that claim 14 is talking about a method for assembling the apparatus?

[00:05:40] Speaker 04:
as opposed to suggesting that it's part of the system in which the deadbolt is activated?

[00:05:49] Speaker 01:
Well, I think, Your Honor, it is because in order to move the deadbolt activating, in order to move the deadbolt activating assembly, in order to move the deadbolt, you have to perform the steps of claim 11

[00:06:07] Speaker 01:
And then Claim 14 also indicates that you have to do that through an initial step of composing the deadbolt activating system of these components.

[00:06:17] Speaker 01:
And the specification shows that the way that you end up moving the deadbolt is by first combining the three components that are identified in Claim 14.

[00:06:29] Speaker 01:
And that's important because what this patent is directed to

[00:06:33] Speaker 01:
is a method of allowing you to move a pre-existing deadbolt lock without necessarily having to change the inners of the lock.

[00:06:42] Speaker 01:
So you can keep the same key.

[00:06:44] Speaker 01:
You basically are engaging in a process to move that deadbolt.

[00:06:47] Speaker 01:
And in order to do that, you have to assemble something on the door that will allow a motor to interface with the mechanism in the lock that actually turns it.

[00:07:01] Speaker 01:
So in order to do that effectively, you've got to find a way of assembling that assembly on the door.

[00:07:07] Speaker 01:
And the patent teaches you doing that by using what the claim refers to a gear base.

[00:07:15] Speaker 01:
The patent describes as a template unit.

[00:07:17] Speaker 01:
And the board found that was a proper correlation.

[00:07:20] Speaker 01:
You first put that on the door.

[00:07:22] Speaker 01:
You then find an adapter that will fit that particular lock.

[00:07:28] Speaker 01:
And then you basically build the deadbolt activating system onto the door by the combination of the components recited in claim 14.

[00:07:37] Speaker 01:
The template or gear base that fits onto the door.

[00:07:41] Speaker 01:
You then have a carriage that will couple gears to allow an adapter to interface with the lock.

[00:07:49] Speaker 01:
And then you have the motor and battery carriage that will provide the power to turn the lock.

[00:07:54] Speaker 01:
So I think that

[00:07:56] Speaker 01:
if you look at claim 11 and 14, claim 14 is an initial step that is done to assemble the deadbolt activating system recited in claim 11.

[00:08:07] Speaker 01:
So I don't believe there's any inconsistency in simply treating claim 14 as reciting an additional method step of what's required in claim 11.

[00:08:18] Speaker 01:
I think if you looked at claim 14 and tried to say that, well, maybe that's really just talking about

[00:08:25] Speaker 01:
characteristics of the finished deadbolt activating system.

[00:08:29] Speaker 01:
Mr. McGowan?

[00:08:30] Speaker 03:
Yes.

[00:08:31] Speaker 03:
This is Judge Jen.

[00:08:33] Speaker 03:
Looking at figure two of your patent, we see an exploded view of the system with three main components.

[00:08:44] Speaker 03:
And it looks like the gears are mounted to the motor and battery carriage.

[00:08:53] Speaker 03:
Is that right?

[00:08:54] Speaker 03:
Is that what you're wrong?

[00:08:58] Speaker 03:
Isn't that what Secret 2 illustrates?

[00:09:02] Speaker 03:
Gears 9 and 11 mounted on the motor and battery carriage 17 element.

[00:09:08] Speaker 01:
I think there are some gears mounted in motor and battery carriage 17.

[00:09:12] Speaker 01:
The actual description of the patent in column 4 describes the fact that the gear casing 12 is molded such that there is a hollow portion of size and shape

[00:09:24] Speaker 01:
to contain gears 9, 10, and 11 in such a way that they could rotate.

[00:09:30] Speaker 01:
And it further says that gears 9, 10, and 11 are preferably held within gear casing 12 by gear bracket 16.

[00:09:40] Speaker 01:
So the patent figure in combination with the written description in column 4 describe the fact that you have gears 9, 10, and 11 that it describes as being

[00:09:53] Speaker 01:
held within the gear casing 12 by gear bracket 16.

[00:09:59] Speaker 01:
So I think there certainly are gears that are located on the motor and battery housing 17, but the patent describes the gear casing 12, which corresponds to the gear carriage in the claim as having

[00:10:16] Speaker 01:
hollowed portions to securely contain the gears and being held within, and that the gears are held within that gear casing by the bracket.

[00:10:25] Speaker 03:
So I think the answer to your question is... And those same gears are mounted to the motor and battery carriage, right?

[00:10:31] Speaker 03:
The ones where you've got little holes in the gear casing.

[00:10:35] Speaker 03:
They accommodate the gears that are mounted to the motor and battery carriage 17.

[00:10:42] Speaker 01:
It shows some of the gears, yes, Your Honor, it shows some of the gears

[00:10:46] Speaker 03:
Are there other gears when you say some of the gears?

[00:10:48] Speaker 01:
Are there other gears?

[00:10:50] Speaker 01:
Well, one of the gears, Your Honor, we believe is actually the claim refers to a reversible elongated member.

[00:11:00] Speaker 01:
And that's a member that fits within an element of the motor and battery carriage and goes through the assembly into the lock to turn it.

[00:11:12] Speaker 01:
But in terms of the gears that are described in column four,

[00:11:15] Speaker 01:
It's 9, 10, 11, and you can see where those are in the figure, which it does show them as resting on the motor and battery carriage 17.

[00:11:24] Speaker 01:
They're just resting on the motor and battery carriage?

[00:11:29] Speaker 01:
Well, what the claim says is that the gear... Well, I'm talking about the figure 2 that I'm looking at.

[00:11:34] Speaker 01:
No, I see figure 2, and I think that if you look at the gear, it has an element 10

[00:11:43] Speaker 01:
that the patent describes as a gear, but if you look at the figure, that actually looks to be a cutout rather than a gear.

[00:11:51] Speaker 01:
I believe the gear would be as described in the spec would actually be held in the gear casing 12.

[00:11:59] Speaker 01:
If you look at 11 in figure 2, I think 11 is very clearly a gear that's on a 10 extending from

[00:12:07] Speaker 01:
element 17.

[00:12:08] Speaker 01:
And I think if you look at element 9, at least in figure 2, element 9 appears to be an element that is affixed to the motor and battery carriage 17.

[00:12:23] Speaker 01:
Now, if you look at figure 3, it illustrates those gears in a little bit more detail.

[00:12:30] Speaker 01:
And I think you can see that gear 10, if you look at figure 3, is actually shown

[00:12:37] Speaker 01:
as something that would fit into a recess within the gear carriage 12.

[00:12:49] Speaker 04:
Okay, Mr. McLaughlin, you're into your rebuttal time.

[00:12:52] Speaker 04:
Do you want to save it or do you want to continue?

[00:12:56] Speaker 01:
No, Your Honor.

[00:12:56] Speaker 01:
I will save my rebuttal time for rebuttal.

[00:13:00] Speaker 04:
Okay.

[00:13:01] Speaker 04:
Thank you.

[00:13:02] Speaker 04:
We'll hear from Ms.

[00:13:03] Speaker 04:
Knox.

[00:13:05] Speaker 00:
Good morning, Your Honors.

[00:13:06] Speaker 00:
May it please the Court?

[00:13:08] Speaker 00:
I'm representing Petitioners Apple and August Homes.

[00:13:12] Speaker 00:
And this appeal can be resolved as counsel just confirmed on a single issue of the construction of the claim term, composing.

[00:13:22] Speaker 00:
The Board correctly concluded that the broadest reasonable interpretation of composing in the context of Claim 14

[00:13:29] Speaker 00:
simply requires a step of forming the deadbolt system so that it comprises or is composed of the three elements listed in the claim.

[00:13:40] Speaker 00:
And again, council has confirmed there's no dispute that under that board's construction, the PATI Act reference renders claim 14 obvious.

[00:13:51] Speaker 00:
So turning to the claim construction, there's no basis for patent owner's belated attempt to narrowly construe composing so that it would require assembling the deadbolt system by physically bringing together three separate pre-existing structures.

[00:14:08] Speaker 00:
That's just not the broadest reasonable interpretation.

[00:14:11] Speaker 00:
We've looked at the claim language, specification, and prosecution history, all of which support the board's construction.

[00:14:20] Speaker 00:
So looking just at the Claim 14 itself, it simply recites composing the system of three elements.

[00:14:27] Speaker 00:
And Judge Stike observed this is just a single step in a method of moving a deadbolt.

[00:14:34] Speaker 00:
Claim 14 doesn't specify any interrelationships between the elements that would suggest they have to be separate structures.

[00:14:45] Speaker 00:
And the term composing simply doesn't provide a hook that would require separateness either.

[00:14:50] Speaker 00:
In fact, patent owner's choice of the term composing in Claim 14 appears deliberately broad.

[00:14:57] Speaker 00:
In other claims like Claim 9 and Claim 11 itself, patent owner used the term attached or attaching to describe joining two structures together.

[00:15:07] Speaker 00:
But in Claim 14, patent owner selected the broader term composing, which only requires forming the system so that it constitutes or comprises those listed elements.

[00:15:19] Speaker 00:
And looking at the specification, there's again no support for patent owner's narrow construction.

[00:15:25] Speaker 00:
The specification does not use the term composing to describe attaching separate pre-existing structures.

[00:15:32] Speaker 00:
On the contrary, it discusses composing structures of a single material.

[00:15:37] Speaker 00:
For example, it talks about a casing that's composed

[00:15:45] Speaker 00:
And as Judge Chen observed, I think figure two clearly supports the board's construction as well.

[00:15:52] Speaker 00:
Figure two does illustrate the motor and battery carriage having the gears mounted on the bottom of it so that it's also a gear carriage.

[00:16:02] Speaker 00:
So therefore, figure two is showing that those two claim elements can be parts of the same physical structure.

[00:16:09] Speaker 00:
There's just no requirement for separate pre-existing structures here.

[00:16:15] Speaker 00:
An opposing counsel wants to map the elements of Claim 14 onto the three structures that are shown in Figure 2, and we disagree with that mapping.

[00:16:25] Speaker 00:
But even if you map those structures and say they correspond to the claim elements, that still provides no basis to limit Claim 14 to that specific embodiment.

[00:16:38] Speaker 00:
The specification doesn't ascribe any importance to constructing the deadbolt system out of three separate structures.

[00:16:45] Speaker 00:
The board found that Mr. Kilborn's testimony claiming a functional benefit of separate structures was not credible.

[00:16:53] Speaker 00:
That finding is clearly supported by substantial evidence, including the specification itself.

[00:17:01] Speaker 00:
As the board observed, the specification states that many variations in the structure and design of the system are acceptable.

[00:17:10] Speaker 00:
And finally, we also looked at the prosecution history here and at further support.

[00:17:15] Speaker 04:
Where did the board say that the suggestion of functional benefit was not credible?

[00:17:22] Speaker 00:
At appendix page 27 and again at page 38.

[00:17:30] Speaker 00:
So really what the board said was we've considered Mr. Kilborn's testimony, but we've looked at the specification.

[00:17:39] Speaker 00:
nothing in the specification that supports a functional benefit.

[00:17:43] Speaker 00:
We petitioners also had the testimony of Dr. Pratt, which the board discusses at appendix page 27, found Dr. Pratt's testimony persuasive that there was no problem with having a motor and battery carriage that's composed of two pieces.

[00:18:05] Speaker 04:
I see on 36 and 37 they say that the patent owner hasn't identified any functional benefit, but I'm not sure that I see where they said that Mr. Kilborn's testimony about functional benefit was incredible.

[00:18:25] Speaker 04:
Where exactly did they say that?

[00:18:28] Speaker 00:
Well, they said they accord little weight to Mr. Kilborn's testimony in the present claim construction.

[00:18:34] Speaker 00:
And at the top of page 38, Mr. Kilborn's testimony in support of requiring separate and distinct structures is not persuasive because the intrinsic evidence fails to reflect consideration of the functional benefit identified by Mr. Kilborn.

[00:18:53] Speaker 00:
So that's what I was referring to, Your Honor.

[00:18:58] Speaker 00:
And again, looking at the prosecution history,

[00:19:03] Speaker 00:
Claim 14 was not amended during prosecution.

[00:19:07] Speaker 00:
And interestingly, when the examiner identified in the prior arch the elements of claim 14, stated that the prior arch described each of these elements contained within a housing.

[00:19:23] Speaker 00:
Pat and owner never argued in response during prosecution that, well, there's this composing step that requires separate preexisting structures that have to be

[00:19:32] Speaker 00:
So that issue simply was never raised in prosecution.

[00:19:38] Speaker 00:
So there's clearly no basis to narrowly construe the composing term here.

[00:19:46] Speaker 00:
So in sum, all of the intrinsic evidence supports the board's construction of claim 14.

[00:19:53] Speaker 00:
And therefore, you don't even need to look at patent owner's extrinsic dictionary evidence.

[00:19:59] Speaker 00:
But if you do, it also shows that composing doesn't necessarily require bringing together separate and pre-existing structures.

[00:20:08] Speaker 00:
It can simply mean constituting, as it does here.

[00:20:12] Speaker 00:
Therefore, the board's construction should be affirmed.

[00:20:16] Speaker 00:
And under the board's, yep, sorry.

[00:20:18] Speaker 03:
Just curious, what if the claim, instead of saying the word of, said by combining so that

[00:20:29] Speaker 03:
Claim 14 would say, further comprising, composing the deadbolt activating system by combining a gear carriage, a motor and battery carriage, and a gear base.

[00:20:42] Speaker 03:
Would that then require that we're talking about three separate and distinct elements physically being combined?

[00:20:52] Speaker 00:
Your Honor, I think that language might

[00:20:56] Speaker 00:
connote separate structures, just as in some of the cases that were cited in the briefing, if you talk about attaching separate structures to one another, that type of language might further support a requirement for separateness.

[00:21:15] Speaker 00:
But really, you should look at the record as a whole and

[00:21:21] Speaker 00:
And here there's no support in the specification or prosecution for separate structures either.

[00:21:32] Speaker 00:
Now our briefing addressed two alternative bases for affirmance, both that patent owner waives the claim construction issue that's disputed in this appeal, as well as obviousness of claim 14 under patent owner's narrow construction.

[00:21:45] Speaker 00:
I'd be happy to address any questions the court might have on those issues, but otherwise we would rest on the brief because it is not necessary to reach those issues if you affirm the board's claim construction on the merits.

[00:22:02] Speaker 04:
Okay.

[00:22:02] Speaker 04:
Anything further?

[00:22:06] Speaker 00:
No, Your Honor.

[00:22:06] Speaker 00:
Thank you.

[00:22:08] Speaker 04:
Okay.

[00:22:09] Speaker 04:
Any questions from the panel?

[00:22:11] Speaker 04:
No.

[00:22:12] Speaker 04:
Okay.

[00:22:14] Speaker 04:
Hearing none, we'll hear from Mr. McGaughan on his rebuttal.

[00:22:20] Speaker 01:
Thank you, Your Honor.

[00:22:21] Speaker 01:
Just a few points.

[00:22:23] Speaker 01:
The question about whether, if Claim 14 said that you compose by combining, would that make a difference?

[00:22:32] Speaker 01:
I think the concept of combining is inherent in the ordinary meaning of compose.

[00:22:39] Speaker 01:
When you talk about

[00:22:40] Speaker 01:
composing a whole of discrete parts or composing a whole of different items, that is the active combination of various items to create a whole.

[00:22:53] Speaker 01:
When you talk about a composite structure, for example, a composite bow, for example, you're talking about independent discrete structures that are combined to compose a whole element.

[00:23:06] Speaker 01:
So I think from a claim construction perspective,

[00:23:09] Speaker 01:
we think saying composing by combining would be redundant and that that concept of combining the discrete elements is in fact embodied and imbued by the term composing.

[00:23:22] Speaker 01:
I think the emphasis that was made on whether the motor and battery carriage in the patent carries some gears and that that shows that a single structure can meet multiple limitations in a claim

[00:23:36] Speaker 01:
That really isn't the issue here.

[00:23:38] Speaker 01:
There's no dispute that if you have an apparatus claim that recites multiple limitations, a single structure can in fact meet multiple limitations.

[00:23:48] Speaker 01:
But here the claim talks about composing a whole from discrete parts.

[00:23:53] Speaker 01:
And we believe you have to have each of those discrete parts.

[00:23:57] Speaker 01:
And while it's true that Housing 17 does carry some gears, such that it might be a motor and battery carriage,

[00:24:05] Speaker 01:
and carry some gears, if you look at the patent, it's clear that the other structure shown in Figure 2, and in particular, Structure 12, is a gear carriage that carries a gear.

[00:24:17] Speaker 01:
So the specification does, in fact, show combining the three specific components recited in Claim 14 to create the whole.

[00:24:27] Speaker 01:
And as a final matter, the issue of whether or not there's evidence of a functional benefit.

[00:24:32] Speaker 04:
That seems to me kind of odd when the method is moving the deadbolt rather than assembling the apparatus or assembling the system.

[00:24:43] Speaker 01:
Well, I think in order to move the deadbolt when you're talking about an adaptive system that is being used to move a pre-existing deadbolt, you have to have that deadbolt assembly

[00:24:57] Speaker 01:
created and attached to the deadbolt.

[00:24:59] Speaker 01:
And so I think having a step in a dependent claim reciting how the system exists when you start to move the deadbolt.

[00:25:09] Speaker 01:
It does.

[00:25:10] Speaker 01:
It does.

[00:25:11] Speaker 01:
Yes.

[00:25:12] Speaker 04:
Go ahead.

[00:25:13] Speaker 01:
No, the system does exist when you start to move the deadbolt, but a priori before you can begin to do that, you have to

[00:25:22] Speaker 01:
assemble and form the deadbolt activating system, or as claim 14 would say, engaging the act of composing the deadbolt activating system.

[00:25:34] Speaker 04:
Okay.

[00:25:35] Speaker 04:
Unless my colleagues have questions, I think we run out of time.

[00:25:40] Speaker 04:
Thank you, Mr. McGulkin.

[00:25:41] Speaker 04:
Thank you, Ms.

[00:25:42] Speaker 04:
Knox.

[00:25:43] Speaker 04:
The case is submitted.

[00:25:44] Speaker 01:
Thank you, Your Honors.

[00:25:48] Speaker 00:
Thank you, Your Honor.

[00:25:51] Speaker 02:
The Honorable Court is adjourned from day to day.