[00:00:03] Speaker 01:
Please be seated.

[00:00:09] Speaker 01:
Our next case for argument is 21-1381.

[00:00:11] Speaker 01:
Our first case for argument this morning is 20-1046, Kyocera versus the ITC.

[00:00:21] Speaker 01:
Mr. Schulman, please proceed.

[00:00:29] Speaker 07:
the court.

[00:00:30] Speaker 07:
The commission erred in its determination of non-infringement for two reasons.

[00:00:34] Speaker 07:
First, because it misconstrued the driven position, and second, because it erroneously...

[00:00:41] Speaker 07:
With the court's permission, thank you.

[00:00:43] Speaker 07:
It's second because it erroneously excluded the doctrine of equivalence testimony of Dr. Pratt.

[00:00:48] Speaker 01:
How do I pronounce your name?

[00:00:49] Speaker 07:
Referring to the driven position.

[00:00:51] Speaker 07:
The driven position is the position near or at the bottom-most travel position where the rotary member re-engages the driver member to lift it back up to its ready position.

[00:01:03] Speaker 07:
This is near or at the bottomless travel position because of recoil.

[00:01:08] Speaker 07:
There is a piston bumper.

[00:01:09] Speaker 07:
And in pages 1939 and 1940 of the record, it is admitted that every tool ever made has had this piston bumper.

[00:01:17] Speaker 07:
Because otherwise, tools would crash together.

[00:01:20] Speaker 07:
The whole thing would explode.

[00:01:21] Speaker 07:
You'd only be able to use it once.

[00:01:22] Speaker 07:
And once it recoils, and the evidence on 1935 of the record was that the accused tool recoils to 1 16th of an inch from the bottomless travel position.

[00:01:33] Speaker 07:
at that point or at the bottom-most travel position, the rotary member lifts it back up to the top, to the ready position.

[00:01:42] Speaker 07:
And if the court looks at page 51 of our reply brief, which is figure 20 from the 296 patent, and I'll refer to the 296 patent as representative of all of them, and look at that figure 20, that annotated figure 20,

[00:02:00] Speaker 07:
along with, and you can follow along in appendix 362, column 26, which is the description in the 296 patent of this particular drawing.

[00:02:10] Speaker 07:
And it begins on line 43.

[00:02:14] Speaker 07:
It says, referring to figure 20, the piston 458, so this is in the red box, is depicted near or at its bottom-most travel position.

[00:02:26] Speaker 07:
And in this configuration, the displacement volume and the main storage chamber are at their largest combined volumes, while the cylinder venting chamber is at its minimum volume.

[00:02:35] Speaker 07:
This bottom position, referring to a position near or at the bottom-most travel position, is also sometimes referred herein as the driven position.

[00:02:46] Speaker 07:
goes on to say in figure 20, movable piston 458, this is the blue box, is now in contact with the station, I'm sorry, the piston 458, still in the red box, is now in contact with the stationary piston stop, that's the bumper, which is why the cylinder venting chamber is at its minimum or zero volume.

[00:03:05] Speaker 07:
If we're at its zero volume, it would be at its bottom-most travel position, but it might not be zero.

[00:03:10] Speaker 07:
In figure 20, now at the blue box, the driver is also at its bottom-most travel position, and this lower-most tip can be extending out the exit port.

[00:03:19] Speaker 07:
This demonstrates that the bottom position is nearer at the bottom-most travel position.

[00:03:26] Speaker 07:
In fact, everywhere in the patent,

[00:03:29] Speaker 07:
in which the patentee wished to describe the bottom-most travel position, it literally said bottom-most travel position.

[00:03:39] Speaker 07:
The only time in the patent where it's referred to as a bottom position generally is when it describes the driven position as distinct from the bottom-most travel position.

[00:03:49] Speaker 07:
And given the proper construction, I don't believe there's any dispute that that 1 16th of an inch difference

[00:03:55] Speaker 07:
was near the bottom-most travel position, and therefore there would be infringement.

[00:04:03] Speaker 07:
Moving on to the doctrine of equivalence issue in Dr. Pratt.

[00:04:07] Speaker 00:
What was Dr. Pratt going to testify as to the doctrine of equivalence?

[00:04:13] Speaker 00:
What was he going to say?

[00:04:14] Speaker 00:
Does the record show that you submit a proposed testimony by him?

[00:04:20] Speaker 07:
Yes, Your Honor.

[00:04:21] Speaker 07:
So that was, again, in the record around pages 1931 to 1940 is a description of Dr. Pratt's testimony.

[00:04:32] Speaker 07:
What the testimony would have been, and again, it depended on this driven position.

[00:04:45] Speaker 07:
would be, Your Honor, in volume two of the appendix.

[00:04:49] Speaker 07:
So again, it was around 1931 to 1940.

[00:04:56] Speaker 07:
There is a description of what Dr. Pratt, and for that matter, Dr. Valley's testimony was surrounding the bottom position.

[00:05:07] Speaker 07:
Once the court had determined that the driven position meant at the bottom-most travel position,

[00:05:15] Speaker 07:
At that point, the testimony would have been that 1 16th of an inch difference would have been equivalent to that bottom most travel position.

[00:05:25] Speaker 07:
But what's interesting, Your Honor, I think, and what reflects why the court's, the commission's determination on Dr. Pratt's testimony was faulty, is there is an anomaly here.

[00:05:39] Speaker 07:
Because had the ALJ,

[00:05:41] Speaker 07:
construed the driven position at or near the bottomless travel position.

[00:05:48] Speaker 07:
The ALJ would have let Dr. Pratt testify as to literal infringement.

[00:05:53] Speaker 07:
He would have been able to testify that 1 16th of an inch is near the bottomless travel position.

[00:06:00] Speaker 07:
But once the ALJ ruled and the commission agreed that the driven position is only the bottomless travel position,

[00:06:07] Speaker 07:
Now it ruled, because of his lack of qualifications as being a literal person of ordinary skill in the art, that he could not testify that 1 16th of an inch was equivalent to the bottomless travel position.

[00:06:17] Speaker 07:
So you have these two basically essentially the same testimony, that 1 16th of an inch was near, that he would have been allowed to testify, and 1 16th of an inch away was equivalent, which he wasn't allowed to testify.

[00:06:29] Speaker 01:
Why should someone who isn't qualified as a skilled artisan be allowed to offer expert testimony

[00:06:36] Speaker 01:
on how a skilled artisan would view these factual questions.

[00:06:43] Speaker 07:
Well, Your Honor, this Court has never said that an expert has to literally be a person of ordinary skill.

[00:06:50] Speaker 01:
No, we said they have to, at a minimum, possess a level of skill in the art of an ordinarily skilled artisan.

[00:06:56] Speaker 01:
Well, Your Honor... It would be impossible to find someone who literally meets the definition, an expert, by

[00:07:02] Speaker 01:
very nature of the word would likely exceed the minimum level of qualification.

[00:07:07] Speaker 01:
So why should it be though someone who doesn't possess the minimum level of qualification should nonetheless be allowed to be testifying as an expert on factual matters?

[00:07:18] Speaker 07:
I think, Your Honor, this court's decision in SEB provides a useful answer to that.

[00:07:22] Speaker 07:
In SEB, where the invention was a fryer, and the expert admittedly had no expertise in fryers, but the limitation in question had to do with polymers.

[00:07:35] Speaker 01:
Yes, but in that case, the parties

[00:07:38] Speaker 01:
had a different level of ordinary skill in the art.

[00:07:42] Speaker 01:
The expert in that case was not excluded by virtue of failing to meet the level of skill in the art.

[00:07:48] Speaker 01:
In this case, you have a level of skill that's been decided as a factual matter, and your expert doesn't meet it.

[00:07:56] Speaker 01:
So the SEB case is irrelevant to that.

[00:07:59] Speaker 07:
Well, Your Honor, respectfully, I don't think SCB ever, I searched, SCB never refers to the level of ordinary skill in the art in the decision.

[00:08:07] Speaker 01:
But that's exactly what distinguishes that case from this one, counsel.

[00:08:12] Speaker 01:
In this one, there is a clear assertion.

[00:08:15] Speaker 01:
of what qualifies for a level of skill in the art.

[00:08:19] Speaker 01:
And there were those three different tiers of level, depending on whether you had a bachelor's, a master's, or a doctorate.

[00:08:24] Speaker 01:
But all of them required accompanying work in the particularized field.

[00:08:32] Speaker 07:
Well, Your Honor, so Dr. Pratt's experience, and this was all he lacked, the ALJ ruled, was experience.

[00:08:39] Speaker 07:
He had the education.

[00:08:41] Speaker 07:
But the issue was,

[00:08:43] Speaker 07:
He had experience in fastener driving tools.

[00:08:46] Speaker 07:
And the question was, did he have experience in power nailers?

[00:08:48] Speaker 07:
And in Appendix 755, he gives his experience.

[00:08:51] Speaker 01:
Yes, but now what you're suggesting is that we should disregard a level of skill in the art once it's ascertained or stipulated to, and that we should undertake some factual analysis of whether we in particular

[00:09:04] Speaker 01:
think somebody has enough relevant experience, even though they don't meet the minimum standard?

[00:09:09] Speaker 01:
Is that how you would like future cases to proceed?

[00:09:13] Speaker 01:
It seems squishy and not very consistent with the whole FOSEDA concept.

[00:09:19] Speaker 07:
Well, Your Honor, admission of expert testimony is always reviewed for abuse of discretion.

[00:09:24] Speaker 07:
The court has discretion.

[00:09:25] Speaker 07:
And the court can ask, the district court can ask, whether or not this particular person

[00:09:32] Speaker 07:
is capable of testifying from the perspective of one having ordinary skill in the art.

[00:09:37] Speaker 07:
And in this case, the difference in the skill in the art, the qualifications of what he had, was minimal.

[00:09:44] Speaker 07:
The ALJ let him testify as to literal infringement, saying, I believed it was a close call, and said that the only reason the ALJ did not let Mr. Pratt testify as to doctrine of equivalence is because he thought aquitex forbid him from doing so.

[00:10:01] Speaker 07:
The level of ordinary skill in the art yes, yes your honor that was that was That was set forth in markman, and we're not arguing to change the level of ordinary skill in the art ruling here

[00:10:17] Speaker 02:
Did you ever preserve an objection to it later, or was it basically that you preceded it?

[00:10:24] Speaker 07:
We continue to argue it, Your Honor, but we believe it's irrelevant to the point.

[00:10:30] Speaker 07:
We believe it's not determinative of the point here, because his experience, which was years of designing pneumatic fasteners, including rivets,

[00:10:41] Speaker 07:
allowed him to testify from the perspective of ordinary still in the art as to the particular equivalent in question, which is what SED says.

[00:10:48] Speaker 07:
You look at his experience relevant to the equivalent in question, and nobody has raised any argument that because of his experience in pneumatic fastener drivers, like rivets, that he couldn't tell the equivalence of 1 16th of an inch from the bottomless travel position.

[00:11:02] Speaker 01:
I believe that Judge Dyke was asking you a question a minute ago, which didn't get completed.

[00:11:09] Speaker 01:
But I believe I'm going to guess what the question was.

[00:11:11] Speaker 01:
And it is, doesn't AquaTex actually preclude this panel from doing exactly what you're seeking to do?

[00:11:17] Speaker 01:
In this case, it seems quite clear to say the doctrines require that evidence be presented to the jury or other fact finder through the particularized testimony of a person of ordinary skill in the art.

[00:11:30] Speaker 01:
So doesn't that preclude?

[00:11:31] Speaker 01:
I mean, that is a case that binds this court and that we have to give binding precedent to.

[00:11:38] Speaker 01:
Doesn't that preclude exactly what you're asking us to determine in this case?

[00:11:42] Speaker 07:
I see I'm in my rebuttal time, so I'd like to answer that question, Your Honor.

[00:11:46] Speaker 07:
First of all, I believe when it says of, if you look at the first sentence of that paragraph, it says, both the Supreme Court and this court have made clear the evidence of equivalence must be from the perspective of someone skilled in the art.

[00:12:00] Speaker 07:
For example, through the testimony of experts or others versed in the technology, which seems to be

[00:12:07] Speaker 07:
an expert who's not necessarily a person having ordinary skill in the art, but could testify from the perspective, or by documents, so not even an expert, not a person, including text or treatises.

[00:12:18] Speaker 07:
I think, Your Honor, that the word of is holding far too much weight in this circumstance.

[00:12:24] Speaker 07:
The rest of aquatext is all about particularized linking testimony.

[00:12:29] Speaker 07:
In fact, Your Honor, I would argue, and I do argue, we do argue, that

[00:12:34] Speaker 07:
The phrase that you're relying on in aquitex was dicta.

[00:12:38] Speaker 07:
The court is not bound by that statement.

[00:12:41] Speaker 07:
The holding in aquitex was that the CEO who gave generalized equivalence testimony did not give particularized linking testimony to the equivalent in question.

[00:12:51] Speaker 07:
That was the holding and why his testimony was excluded.

[00:12:57] Speaker 07:
In additional fact, that he also didn't happen to be an expert.

[00:13:00] Speaker 07:
But the court had already determined that he didn't give particularized linking testimony.

[00:13:05] Speaker 07:
And the rest of AquaTex is all about the requirement for particularized linking testimony.

[00:13:09] Speaker 07:
I see I'm into my rebuttal time.

[00:13:12] Speaker 07:
If there are no further questions.

[00:13:13] Speaker 01:
No problem.

[00:13:13] Speaker 01:
Thank you, Mr. Shulman.

[00:13:14] Speaker 07:
Thank you, Your Honor.

[00:13:28] Speaker 01:
Mr.. Is it mr.. Parikh am I saying that right okay?

[00:13:54] Speaker 06:
May I remove my thank you

[00:14:11] Speaker 06:
Good morning, Your Honors.

[00:14:12] Speaker 06:
So I'd like to follow up on one thing Mr. Schulman said about how the district court can determine whether a person of ordinary or whether an expert can testify from the perspective of one of ordinary skill in the yard.

[00:14:26] Speaker 06:
And I believe he said that there was no finding in this case that Dr. Pratt could not testify from the perspective of one of ordinary skill in the yard.

[00:14:36] Speaker 06:
But the record shows otherwise.

[00:14:38] Speaker 06:
At Appendix 1358, there was an issue during trial about whether Dr. Pratt could testify from the perspective of one of ordinary skill in the art.

[00:14:48] Speaker 06:
And Judge Bullock found below that

[00:14:51] Speaker 06:
And he said, well, unfortunately, order 20.8, I believe, has resolved that.

[00:14:55] Speaker 06:
So you're going to have to move on to another question.

[00:14:58] Speaker 06:
So there was a specific finding below that Dr. Pratt could not testify from the perspective of one of ordinary skill in the art.

[00:15:07] Speaker 06:
And subsequently, the discussion about aquatex, I think aquatex clearly demonstrates that evidence of equivalence

[00:15:14] Speaker 06:
has to be from or has to have testimony from the perspective of someone skilled in the art.

[00:15:20] Speaker 06:
And here there is no question that Dr. Pratt did not meet that minimum level.

[00:15:25] Speaker 00:
So apart from his testimony about the doctrine of equivalence, you're assuring me that he should not have been able to testify as to other claim limitations, correct?

[00:15:36] Speaker 06:
That's correct.

[00:15:36] Speaker 00:
And it seems to me outside of the doctrine of equivalence area,

[00:15:40] Speaker 00:
Let's take a hypothetical that the invention is an automobile with leather seats.

[00:15:44] Speaker 00:
One of the limitations is leather seats.

[00:15:48] Speaker 00:
Shouldn't someone under those circumstances, who's an expert in leather, be allowed to testify whether the particular material used was considered in the art to be leather?

[00:16:02] Speaker 06:
If the level of skill in the art that's found is somebody who has experienced some other seats, then I would agree.

[00:16:09] Speaker 00:
I'm saying that the level of skill in the art is someone who's been in the automobile industry, has a degree in automotive engineering, has had 10 years designing automobiles.

[00:16:23] Speaker 00:
To testify about whether a particular material is leather or not, an expert in leather might actually be able to testify

[00:16:32] Speaker 00:
with more credibility about that issue than someone who has a more general expertise in automobile technology, right?

[00:16:42] Speaker 06:
It's possible, and I think under SEB, that testimony, if it's helpful to the trier of fact, then that testimony should be permitted.

[00:16:52] Speaker 00:
Okay, so what is it here that Pratt was testifying about?

[00:16:56] Speaker 00:
Put aside the doctrine of equivalence as to other infringement issues that was

[00:17:02] Speaker 00:
where he should have been excluded because he wasn't supposed to.

[00:17:09] Speaker 06:
So, for example, the lifter member is one of the terms that the Chief Administrative Law Judge relied on Dr. Pratt for understanding whether the lifting pins on the face surface of the accused product met the lifter member limitation.

[00:17:29] Speaker 06:
So that's one example of where the Chief Administrative Law Judge actually relied.

[00:17:34] Speaker 00:
Why do you have to be expert in power lifters to testify as to that?

[00:17:38] Speaker 06:
Because in, so Dr. Valley, Koki's expert, provided testimony explaining why one of ordinary skill in the yard needed to have experience in power nailers.

[00:17:50] Speaker 06:
So one example is the recoil of the tool.

[00:17:54] Speaker 06:
Another example is the power cycle of the tool and the effect that the recoil, these are complicated tools.

[00:18:02] Speaker 06:
When the nail comes out at a high pressure,

[00:18:06] Speaker 06:
it has a recoil and how that impacts the other components in the tool.

[00:18:11] Speaker 06:
So, for example, the lifter member limitation, you know, whether those pins are on the face or... And what else do you think he was properly allowed to testify about?

[00:18:23] Speaker 06:
So, that's what the Chief ALJ relied on Dr. Pratt for.

[00:18:31] Speaker 06:
And in our view, he should also not have been able to provide testimony on obviousness, for example.

[00:18:36] Speaker 06:
Now, there may not be as much error there because I don't think the Chief ALJ appeared to rely on Dr. Pratt's testimony.

[00:18:44] Speaker 06:
But the Chief ALJ certainly relied on Dr. Pratt's testimony with respect to Lyft remember.

[00:18:49] Speaker 06:
And under Sundance,

[00:18:52] Speaker 06:
So the law is that you need to be an expert in order to opine on patent issues.

[00:18:59] Speaker 00:
Okay, so as to the 112-6 issue, how does that help you on infringement?

[00:19:07] Speaker 00:
I'm just wondering how this case comes out differently, whether it's 112.6 or not, because the structure described for the lifter member, even under 112.6 theory, is still this

[00:19:26] Speaker 06:
So, there's not evidence on the record because the claim construction came out and then the parties operated under the claim construction that was adopted.

[00:19:37] Speaker 00:
Okay, but how did the case come out?

[00:19:39] Speaker 00:
I mean, you would have to agree that under 116 analysis, this description of the lifter member in the specification is the corresponding structure, right?

[00:19:51] Speaker 00:
Correct.

[00:19:52] Speaker 00:
How does that help you then?

[00:19:54] Speaker 00:
I'm just not... What am I missing?

[00:19:57] Speaker 06:
Yeah, so before the claim construction, when the party started competing claim construction, Cokie had a non-infringement argument.

[00:20:03] Speaker 06:
that it did not meet the lifter member limitation under if it were construed as 112 paragraph 6.

[00:20:11] Speaker 06:
The case would have to be remanded.

[00:20:12] Speaker 00:
Why would that be true?

[00:20:13] Speaker 00:
Because the... I mean you've got to show harmful error here.

[00:20:16] Speaker 00:
I'm just not understanding how saying that it should have been analyzed as 112 6 leads to a different result.

[00:20:23] Speaker 06:
Yeah, so again, there's not evidence in the record because of what the parties operated, but to answer your question, Your Honor, Cokie's lifter member structure is different.

[00:20:34] Speaker 06:
It has two faces and it has pins going from one face through one face to another face.

[00:20:42] Speaker 06:
It also engages the driver member in a different orientation than the lifter member that's disclosed in the assertive patents in this case.

[00:20:53] Speaker 06:
But there would have to be a remand.

[00:20:55] Speaker 00:
I'm not sure that I understand how that helps you, because whether a lifter member is analyzed under the doctrine of equivalence, it's not a 112-6 situation, or whether it's analyzed under 112-6.

[00:21:09] Speaker 00:
The same arguments about equivalence apply.

[00:21:12] Speaker 00:
What's the point here?

[00:21:14] Speaker 06:
Well, the parties never got to whether Cokie's lifter member would be equivalent to if the lifter member were construed as 112 paragraph 6.

[00:21:25] Speaker 06:
Cokie had a non-infringement argument on literal infringement.

[00:21:29] Speaker 06:
I don't think, and again, it's not on the record, but I don't believe Kyocera ever made the argument that Cokie's lifter would have infringed under the Doctrine of equivalent.

[00:21:38] Speaker 06:
So there's nothing in the record on that.

[00:21:40] Speaker 06:
That would have to be, again, expert testimony as to why Cokie's lifter member would not meet, or I'm sorry, Cokie's, the component in Cokie's tool would not meet the lifter member limitation if it were construed as a 112-paragraph system.

[00:21:55] Speaker 00:
I don't want to take all of your time.

[00:21:56] Speaker 00:
Go ahead.

[00:21:57] Speaker 01:
Can I back up for one second to the expert, the expert in this case that you think should not have been allowed to offer testimony because he wasn't at a minimum a skilled artisan.

[00:22:10] Speaker 01:
Am I understanding correctly that he offered testimony on claim construction, on infringement, literal and then attempted on DOE and also on obviousness?

[00:22:20] Speaker 04:
Yes.

[00:22:21] Speaker 01:
And so your view is that he should not have been allowed to offer any of that testimony.

[00:22:26] Speaker 06:
That's correct, Your Honor.

[00:22:27] Speaker 01:
Does that result in vacating and remanding this case?

[00:22:30] Speaker 01:
What is the result of, if we were to agree with you, the exclusion of that expert's testimony?

[00:22:36] Speaker 06:
So for the 718 patent, it would result in remanding the case.

[00:22:45] Speaker 06:
For the other patents, the 296, the 297, the 722, and the 282 patent, which were excluded, that would result in an affirmance.

[00:23:02] Speaker 01:
Right.

[00:23:03] Speaker 01:
Because they were excluded because they were trying to prove it under DOE, and if we agreed it was correct, he couldn't give DOE testimony.

[00:23:09] Speaker 01:
That's just an affirm.

[00:23:10] Speaker 01:
So only the 718 would be vacated and remanded.

[00:23:14] Speaker 01:
Would we be, but can you tell me precisely what issues you believe we would be vacating and remanding for a new assessment of?

[00:23:22] Speaker 01:
Obviously, literal infringement is one of them, right?

[00:23:26] Speaker 06:
That's correct, Your Honor.

[00:23:29] Speaker 06:
At a minimum, it would be literal infringement on the Chief Administrative Law Judge's holding on whether the accused brought it to satisfy the face surface limitation of lifter member.

[00:23:43] Speaker 06:
Now, that's assuming that the court decides not to find lifter member subject to 112 paragraph 6.

[00:23:49] Speaker 06:
If the court finds that lifter member is subject to 112 paragraph 6, there may be additional, you know, depending on the construction, on whether the accused products meet that particular... But the only reliance on his testimony was in connection with this lifter member issue.

[00:24:09] Speaker 06:
That's correct, Your Honor.

[00:24:12] Speaker 00:
Yeah, pardon for me to see why the remand could go beyond that.

[00:24:16] Speaker 06:
Um, yeah, and yeah, for, for what the, the Chief Administrative Law Judge relied solely on Dr. Pratt's testimony for that one, of that particular limitation.

[00:24:26] Speaker 06:
Um, of course, the Chief Administrative Law Judge did rely on Dr. Pratt's testimony for obviousness.

[00:24:32] Speaker 06:
and the other limitations as well, but there was additional evidence there that the judge relied on as well.

[00:24:39] Speaker 06:
It wasn't solely doctor press testimony.

[00:24:42] Speaker 01:
Well, you don't think those things need to be vacated and remanded?

[00:24:45] Speaker 01:
The obviousness, for example, if one of the pieces of evidence that was relied upon was improper?

[00:24:51] Speaker 06:
I think it should be.

[00:24:53] Speaker 06:
Because the evidence may change if you don't have the battle of the experts anymore, right?

[00:25:00] Speaker 06:
You have one expert on one side analyzing the evidence in a particular way.

[00:25:06] Speaker 06:
no expert on the other side analyzing the evidence for obviousness on a particular issue.

[00:25:11] Speaker 06:
And of course, obviousness is analyzed from the perspective of one of ordinary skill in the art.

[00:25:15] Speaker 01:
Well, what precisely on obviousness did Dr. Pratt offer testimony on?

[00:25:21] Speaker 01:
What was the nature of his testimony as it pertained to obviousness?

[00:25:25] Speaker 06:
So one example, and we raised this in our brief in connection with the commission's finding of obviousness based on the Petasini reference.

[00:25:35] Speaker 06:
And the issue in Petasini is whether it has a main storage chamber.

[00:25:41] Speaker 06:
So there, Dr. Pratt testified as to whether that region above the piston is a, would be considered a main storage chamber or not.

[00:25:52] Speaker 06:
On the other hand, Cokie's expert Dr. Valley explained why...

[00:25:57] Speaker 06:
why that chamber is not a main storage chamber and why the construction of a volume is the displacement volume is only the volume in the main storage chamber limitation is anything outside of the displacement volume.

[00:26:12] Speaker 06:
So that's another area where the Chief Administrative Law Judge cited to Dr. Pratt's testimony in finding that the claims were not obvious.

[00:26:23] Speaker 02:
Are there open factual issues for the experts to weigh in on with respect to 112 paragraph 6?

[00:26:29] Speaker 02:
You mentioned there was no evidence in the record.

[00:26:31] Speaker 02:
I just want to know if you're contending there are any open factual issues to be considered there.

[00:26:35] Speaker 06:
Well, I think the factual issue would be, for example, whether, if it is 112 paragraph 6, whether the liftor member that's disclosed in the 718 patent is actually in the COTE products, if it's under the 112 paragraph 6.

[00:26:54] Speaker 01:
If you don't mind, would you mind if I moved you to a different issue briefly?

[00:26:59] Speaker 01:
Yes, Your Honor.

[00:27:00] Speaker 01:
If I thought the commission erred by interpreting the safety contact as part of the fastener driver mechanism, what would be the impact on this case?

[00:27:10] Speaker 06:
There would be no finding of infringement, Your Honor.

[00:27:15] Speaker 06:
already found that there is no infringement because the fastener driving mechanism did not contact the work surface to initiate the driving cycle.

[00:27:27] Speaker 06:
That finding was then reversed by the commission.

[00:27:31] Speaker 06:
But there was already a finding that KSRA did not meet their burden of proof to show that that limitation was met.

[00:27:47] Speaker 00:
I mean, you wouldn't trigger the force when it was an inch or so above the surface, correct?

[00:28:00] Speaker 06:
That's not true, Your Honor.

[00:28:01] Speaker 06:
You may have a little bit of space in between.

[00:28:03] Speaker 06:
So you have the safety contact element.

[00:28:06] Speaker 06:
And then you have the bottom of the fastener driving mechanism, which is a little bit higher.

[00:28:11] Speaker 06:
It's possible, and this is how Koki's tools operate, where when you initiate the safety contact element, there is a little bit of space in between the bottom of the fastener driving mechanism and the work piece.

[00:28:34] Speaker 00:
is in contact with the service, right?

[00:28:36] Speaker 06:
No, it's not.

[00:28:37] Speaker 06:
Only the safety contact element is.

[00:28:40] Speaker 06:
There's a little bit of space in between.

[00:28:46] Speaker 01:
Well, you're into your rebuttal time.

[00:28:47] Speaker 01:
Would you like to save some?

[00:28:48] Speaker 06:
Yes, please.

[00:28:49] Speaker 06:
Thank you.

[00:29:03] Speaker 01:
Mr. Garrett Dean.

[00:29:05] Speaker 01:
Oh, you're back there.

[00:29:06] Speaker 01:
No problem.

[00:29:16] Speaker 05:
Good morning, may it please the court.

[00:29:19] Speaker 05:
I'm turning first to the issue of Dr. Pratt's testimony.

[00:29:23] Speaker 05:
The commission did not use discretion here in excluding his testimony for proving infringement under the doctrine of equivalence.

[00:29:32] Speaker 05:
Consistent with the case precedent, the doctrine of equivalence, proving infringement under the doctrine of equivalence, requires particularized testimony from a person of ordinary skill in the art.

[00:29:44] Speaker 05:
It was undisputed that Dr. Pratt did not meet this level of power in narrow design

[00:29:50] Speaker 05:
However, on the other hand, regarding literal infringement and validity, the commission did not use expression in allowing his testimony for those purposes.

[00:29:59] Speaker 05:
Rather, in the same precedent, it describes that literal infringement is more of a straightforward, simple manner.

[00:30:06] Speaker 05:
In here, it was OK.

[00:30:07] Speaker 05:
It was not abusive discretion to allow in his testimony presenting the accused products, the accused product literature, the relevant prior art.

[00:30:18] Speaker 05:
for the ALJ and the commission to compare the claim limitations to this prior art or to the accused products, accused product literature to determine invalidity or literal infringement here.

[00:30:32] Speaker 01:
Let's turn into... Before you turn, don't you think that's a little weird?

[00:30:38] Speaker 01:
That we... That you allowed his testimony on literal infringement, which is from the vantage point of a skilled artisan, but did not allow his testimony from DOE, which is also from the vantage point of a skilled artisan?

[00:30:49] Speaker 01:
He's qualified under one and not the other.

[00:30:52] Speaker 05:
Certainly understand the question, Your Honor.

[00:30:54] Speaker 01:
I'm sure you do.

[00:30:56] Speaker 01:
I don't envy your position right now.

[00:30:57] Speaker 01:
I don't know how you can stand here and argue that this really disparate, split the baby sort of approach is a good idea for the law.

[00:31:06] Speaker 05:
Yeah, I think the facts here are just very unique.

[00:31:09] Speaker 01:
Luckily for us, this isn't a factual question, is it?

[00:31:13] Speaker 01:
I'm sorry?

[00:31:14] Speaker 01:
This isn't a factual question.

[00:31:15] Speaker 05:
Right, it's the abuse of discretion.

[00:31:16] Speaker 01:
And there's no question that he does not qualify as a skilled artisan, is that correct?

[00:31:21] Speaker 05:
Right, is that ordinary skill in the art?

[00:31:22] Speaker 01:
He does not have ordinary skill in the art.

[00:31:25] Speaker 05:
Correct.

[00:31:26] Speaker 01:
He absolutely does not have any years of working experience in the drive tool industry which is required for a skilled artisan.

[00:31:33] Speaker 05:
It was power narrow design.

[00:31:35] Speaker 01:
He does not have any years of experience.

[00:31:37] Speaker 05:
Correct.

[00:31:38] Speaker 05:
He admitted to that, that he didn't qualify.

[00:31:40] Speaker 00:
Why did the commission distinguish between his testimony about Doctrine of Equivalence and his testimony about literal infringement?

[00:31:50] Speaker 00:
Why is he allowed to testify as to the latter but not the former?

[00:31:56] Speaker 05:
I think it's the Doctrine of Equivalence, consistent with this court's precedent,

[00:32:01] Speaker 05:
again, requires a person of ordinary skill in the art to opine on the range of equivalence on a limitation on limitation basis that has inherent complexities and difficulties that just aren't a part of literal infringement or involuntary or other issues.

[00:32:18] Speaker 05:
This is why it's required here and why, again, the facts of this case are very unique for he

[00:32:23] Speaker 05:
excluded for that purpose of doctrine of equivalence, but permissible, not abuse of discretion to allow and for below infringement and invalidity.

[00:32:33] Speaker 05:
Again, here are the issues of below infringement and invalidity.

[00:32:37] Speaker 05:
Again, we're comparing the accused product literature or the prior literature to the claim limitations, I think as stated by the ALJ appendix pages 182 and 183 where they were able to make that comparison.

[00:32:51] Speaker 03:
How do you distinguish Sundance?

[00:32:54] Speaker 05:
I'm sorry?

[00:32:54] Speaker 03:
How do you distinguish Sundance?

[00:32:57] Speaker 05:
Again, I think Sundance, again, didn't involve doctrine of equivalence here.

[00:33:02] Speaker 05:
Doctrine of equivalence just has inherent complexities and difficulties that require that particularized testimony as stated in aquatext.

[00:33:12] Speaker 01:
But Sundance does involve infringement and validity.

[00:33:16] Speaker 05:
Correct.

[00:33:18] Speaker 01:
And it says expressly that where an issue calls for consideration of evidence from the perspective of one of ordinary skill in the art, it is contradictory to Rule 702 to allow witnesses to testify on the issue who is not qualified as a technical expert in that art.

[00:33:33] Speaker 05:
Correct.

[00:33:34] Speaker 05:
Again, here, he did not meet the specialized nature of power nail design.

[00:33:38] Speaker 05:
He did meet, he was at the level, he did have generalized fastener driving mechanism, I mean, excuse me, fastener driver tools experience.

[00:33:48] Speaker 05:
Again, it's very quirky facts here, I admit, but not of your discretion, sorry.

[00:33:55] Speaker 01:
Again, it's not the facts that bother me.

[00:33:58] Speaker 01:
It's the failure to follow the law.

[00:34:01] Speaker 01:
I guess, I'll be honest, I guess I thought in Sundance, we made it really clear that to be, to give testimony on infringement or validity, you had to, at a minimum, be an ordinarily skilled artisan.

[00:34:13] Speaker 01:
And he's not.

[00:34:16] Speaker 05:
Right.

[00:34:16] Speaker 05:
That was admitted to.

[00:34:17] Speaker 05:
But again, here, under the particular facts, the infringement here, the invalidity,

[00:34:25] Speaker 05:
What he provided, again, was little more than what the ALJ and Commission did here as fact-finders in comparing the accused product literature, the accused products through the claim limitations at issue.

[00:34:37] Speaker 05:
Again, it's stated in those pages 182, 183 that he was able to do it for multiple claim limitations to basically make that comparison and make the determination of infringement.

[00:34:51] Speaker 05:
I think this issue was pretty well covered in our briefing.

[00:34:56] Speaker 00:
Is your theory that his testimony on literal infringement wasn't related necessarily to power nail drivers and concern more generally things that he wasn't expert in?

[00:35:14] Speaker 05:
I just think, again, under the unique facts of this case, it was more of a straightforward, simpler approach in just comparing the claim limitations to the Q's products, the Q block literature, and the prior literature in this case, that you were able to make that comparison as a fact finder.

[00:35:37] Speaker 01:
I mean, here's the problem in this case.

[00:35:39] Speaker 01:
It's not your problem.

[00:35:40] Speaker 01:
The problem in this case is that,

[00:35:45] Speaker 01:
One of the parties messed up here by not objecting and or rejecting the level of skilled art that was proffered by Kyocera.

[00:35:56] Speaker 01:
And once that had become binding in the case, you live and die by your own litigation choices.

[00:36:03] Speaker 01:
I mean, we ought not to mess up the entire law

[00:36:07] Speaker 01:
because one party screwed up and accepted a fact finding on the level of skill in the art that probably isn't exactly the right fact finding here.

[00:36:19] Speaker 01:
I mean, I'll tell you what, I don't let Dr. Pratt testify, but I wouldn't have ever agreed to that level of skill in the art.

[00:36:26] Speaker 01:
And once they agreed to it, he's out.

[00:36:29] Speaker 01:
And that's the way I see it.

[00:36:30] Speaker 01:
It's hard for me to see it any other way than that.

[00:36:34] Speaker 01:
And I really think that what you're asking me to do to uphold would mess up the law really badly.

[00:36:39] Speaker 01:
And it would create the mischief and havoc that I tried very hard in Sundance to eliminate.

[00:36:45] Speaker 05:
I understand the course perspective on this.

[00:36:48] Speaker 05:
Again, it's covered pretty well in our briefs that there was a distinction here, not abuse of discretion, and excluding it for doctrine of equivalence, but allowing it in for little infringement given under the particular lens of this case and the issues here.

[00:37:03] Speaker 01:
well do you want to read it, are there any other issues you wanted to cover today?

[00:37:06] Speaker 05:
Oh yeah, sure.

[00:37:07] Speaker 05:
Turning to the issue of driven position, and Kaisers Council makes the argument that somehow the second embodiment broadens the scope of the term driven position.

[00:37:20] Speaker 05:
However, again, the language mirrors each other.

[00:37:25] Speaker 05:
If you look at appendix pages,

[00:37:26] Speaker 05:
355 column 12 lines 56 through 65 States in this configuration the displacement volume 76 in the main storage chamber 74 at their largest combined volumes while the cylinder venting chamber 94 is at its minimum volume turning to

[00:37:45] Speaker 05:
The corresponding written description for Figure 20, the second embodiment, it's pretty much mirrored, Appendix Page 362, Column 26, Lines 43-53.

[00:37:53] Speaker 05:
And in this configuration, displacement volume 457 and the main storage chamber 454 are at their largest combined volumes, while the cylinder venting chamber, 492, is at its minimum volume.

[00:38:06] Speaker 05:
Again, the exact same configuration for both

[00:38:09] Speaker 05:
Figures, figure 3 and figure 20, the first embodiment, second embodiment indicating that the driven position is consistently defined as the bottom most traveled position or the bottom position has the same exact configuration for the tool.

[00:38:23] Speaker 01:
Mr. Gerardine, would you mind if I asked you to address the commission's position on the lifter member?

[00:38:29] Speaker 01:
And in particular,

[00:38:31] Speaker 01:
What do you think should be?

[00:38:33] Speaker 01:
Suppose that this panel found it was a 112-6 term, okay?

[00:38:39] Speaker 01:
We disagree with the Commission's finding and say it is a 112-6 term.

[00:38:44] Speaker 01:
What should happen then in this case?

[00:38:48] Speaker 01:
I think Judge Dyke was asking some questions about whether it would actually have any impact on the outcome or not.

[00:38:54] Speaker 01:
Does it create fact issues that the Commission would need to look at in the first instance?

[00:38:59] Speaker 05:
Yes, well, of course, arguably that should not be the case.

[00:39:02] Speaker 05:
If that was the case, it should be remanded.

[00:39:06] Speaker 00:
I don't understand what the difference is here.

[00:39:08] Speaker 00:
If it's literal infringement, in theory, this part of the specification describes what an elector member is.

[00:39:16] Speaker 00:
And if it's 112-6, the corresponding structure is the same thing.

[00:39:20] Speaker 00:
What difference does that make?

[00:39:21] Speaker 05:
I think if you go to appendix pages 178 to 179, where the ALJ goes over the testimony from each expert, it explains that the lifting pins for the accused products are on an interface.

[00:39:39] Speaker 00:
Basically the playing of the driver teeth My question is if it's literal infringement this part of the specification Describes what the lifter member is if it's one twelve six the same part of the specification Describes what the corresponding structure is what there is does it make whether it's one twelve six or literal infringement It's the same structure in either event

[00:40:06] Speaker 05:
All right.

[00:40:07] Speaker 05:
It would have to be something.

[00:40:08] Speaker 05:
There was no finding there on the French modern doctrine.

[00:40:13] Speaker 00:
Well, it doesn't require a finding.

[00:40:14] Speaker 00:
I mean, it's the same portion of the specification.

[00:40:18] Speaker 00:
One that says this defines what it is for purposes of liberal inference.

[00:40:30] Speaker 05:
Right.

[00:40:30] Speaker 05:
Again, the accused product and the patent are a little different structurally.

[00:40:36] Speaker 05:
They would have to be remand for analysis just to determine that there was the equivalence found in that instance.

[00:40:45] Speaker 01:
So to make sure I understand your argument, you're saying it's a factual question while the claim construction may be a question of law.

[00:40:54] Speaker 01:
And when you look, if this is 112.6, at what the corresponding structure is, that's a question of law.

[00:41:01] Speaker 01:
But under literal infringement, whether something's equivalent to that structure is a question of fact, and the commission has not yet addressed that.

[00:41:08] Speaker 05:
Correct.

[00:41:08] Speaker 05:
That was never addressed since it wasn't.

[00:41:10] Speaker 01:
And so the commission needs to address that.

[00:41:12] Speaker 05:
Correct.

[00:41:12] Speaker 01:
OK.

[00:41:13] Speaker 05:
Again, I would argue vehemently that that should not be the case here.

[00:41:18] Speaker 05:
The patentee first recited structural structure in the claim itself.

[00:41:24] Speaker 05:
They recited structural components that the lifter member is interconnected to, a prime mover and a driver member.

[00:41:32] Speaker 05:
Also, the patentee acts as his own lexicographer and specification, defining over and over that lifter member is a rotary, delineary lifter as they're rotating.

[00:41:43] Speaker 05:
structural component and then having a second structural component of a face was left of fence.

[00:41:50] Speaker 05:
This is throughout the specification.

[00:41:54] Speaker 00:
Do you have any other questions?

[00:41:57] Speaker 05:
I made a quick point on initiating the driving cycle.

[00:42:01] Speaker 01:
Sure, I'll give you a minute to address it.

[00:42:02] Speaker 01:
You're way over your time, but go for it.

[00:42:04] Speaker 01:
If you want to address it, go for it.

[00:42:07] Speaker 05:
Again, consistent throughout specifications, particularly for the second embodiment.

[00:42:11] Speaker 05:
It's consistently defined that the safety contact element is part of the tool.

[00:42:16] Speaker 05:
It's an extension of the bottom of the tool.

[00:42:19] Speaker 00:
The exit portion of the... Why is it the exit end?

[00:42:23] Speaker 00:
It may be certainly part of the tool, but why is it the exit end?

[00:42:27] Speaker 00:
That's how it's expressed in the fund.

[00:42:29] Speaker 00:
I think the exit end would be the driving mechanism.

[00:42:31] Speaker 05:
All right, that's not how it's described in the specification.

[00:42:33] Speaker 05:
I think if you go through both environments, particularly if you go through the appendix page, it's going to be 564, columns 11, line 60 through column 12, line 18.

[00:42:52] Speaker 00:
the exit end isn't the driving mechanism, then it's the safety mechanism.

[00:42:58] Speaker 05:
It's all throughout specification.

[00:43:01] Speaker 05:
You have to go to the second embodiment at appendix page 571, column 26, lines 10 through 39.

[00:43:20] Speaker 05:
In the middle of that section there, it says two independent actions must occur in a specific order.

[00:43:30] Speaker 05:
These two actions are pressing the nodes of the safety contact element against the solid surface and depressing the trigger actuator.

[00:43:37] Speaker 05:
The trigger actuator will cause the trigger switch 437 to change state, which is one condition that will start sending current to the motor 427.

[00:43:46] Speaker 05:
The safety contact element 418 has an upper arm 434.

[00:43:48] Speaker 05:
That would be moved as a nose.

[00:43:54] Speaker 05:
419 is pushed into the tool 401.

[00:43:57] Speaker 05:
This upper arm will actuate another sensor, which the illustrated body has a small limit switch.

[00:44:02] Speaker 00:
He doesn't even use the term exit end, right?

[00:44:04] Speaker 05:
Right, but it defines it earlier that this extension, the safety contact element, is part of the exit portion of the faster driving mechanism.

[00:44:16] Speaker 05:
That's defined at, shown in Figure 16, also defined at 568.

[00:44:26] Speaker 05:
column 20, line 7 through 17, this whole bottom portion includes the exit and the faster driving mechanism, the extension of the safety contact element, which has a nose, and it's depressing that nose against the workpiece that initiates the driving cycle.

[00:44:43] Speaker 01:
I guess one of the things, when we talk about exit end of the mechanism, I don't see how that isn't the exit end of the tool.

[00:44:53] Speaker 05:
Right, but it defines the safety contact element as part of the tool.

[00:44:57] Speaker 01:
Right, so the exit end of the mechanism has to be the exit end of the tool, right?

[00:45:05] Speaker 05:
Again, in that section in those figures, 568, column 20, line 7 through 17, it's defining a whole bottom portion of that tool.

[00:45:19] Speaker 05:
Right, so Lisa defines

[00:45:25] Speaker 05:
that the area of the second embodiment tool 401, which a fastener is released, is indicated approximately by the reference number 417, which is the bottom of the fastener exit portion.

[00:45:36] Speaker 01:
So, Council, here's kind of part of my problem with this particular construction is that the parties agreed that the word mechanism refers to fastener driver mechanism.

[00:45:49] Speaker 01:
I don't think that's right.

[00:45:50] Speaker 01:
I don't think it can possibly be right in light of claim nine, the dependent claim.

[00:45:54] Speaker 01:
which refers for antecedent basis back.

[00:45:58] Speaker 01:
It says, said exit end of the tool.

[00:46:01] Speaker 01:
It can only be referring to the end of the mechanism itself, i.e., the whole tool, not just the end of the fastener driver means.

[00:46:10] Speaker 01:
So what does this court do in a situation where the parties stipulate the word mechanism refers to one thing, but the claim language, to me, means it's referring to something else?

[00:46:24] Speaker 05:
I don't think there's really a disconnect here because, again, the spec refers to an exit portion, which encompasses this exit end.

[00:46:32] Speaker 05:
All these elements are part of the bottom of the tool.

[00:46:34] Speaker 05:
The safety contact element, the exit end of the faster driving mechanism.

[00:46:40] Speaker 05:
That's all part of the tool.

[00:46:42] Speaker 05:
It's all this bottom portion referred to in these figures.

[00:46:44] Speaker 05:
Figures one and figure 16 was just consistent in supporting the claim language.

[00:46:51] Speaker 05:
so that you cannot divorce the safety contact element from the rest of the tool.

[00:46:55] Speaker 05:
It's all part of it, and that's consistent with the claim language.

[00:47:00] Speaker 01:
Okay.

[00:47:00] Speaker 01:
Anything further?

[00:47:01] Speaker 01:
Okay.

[00:47:02] Speaker 01:
Thank you, Council.

[00:47:05] Speaker 01:
We have some rebuttal time.

[00:47:06] Speaker 01:
Mr. Schulman, you have two minutes left, but we'll restore your whole five minutes.

[00:47:13] Speaker 07:
Thank you, Your Honor.

[00:47:15] Speaker 07:
Judge Moore, I'm going to try to make you comfortable that you're not going to ruin the law.

[00:47:20] Speaker 07:
Oh, I know I'm not going to ruin the law.

[00:47:27] Speaker 07:
I'm going to try to make you comfortable that if you rule in our favor, you're not going to ruin the law.

[00:47:32] Speaker 07:
Your Honor, the expert testimony is reviewed for abuse of discretion.

[00:47:36] Speaker 07:
And the question is whether or not a particular expert can testify from the perspective of one having ordinary skill in the art.

[00:47:43] Speaker 07:
And even in Sundance, what the court said is there is an abuse of discretion to permit a witness to testify as an expert on the issues of infringement or validity unless that witness is qualified as an expert in the pertinent art.

[00:47:57] Speaker 07:
not unless that expert is a person having ordinary skill in the art, but whether they are qualified as an expert, which a district court or the commission reviews and has discretion to determine after seeing everything about the expert.

[00:48:13] Speaker 07:
There's a reason why the district courts and commissions have discretion.

[00:48:18] Speaker 07:
The district court could have looked at Dr. Pratt and indeed did for purposes of literal infringement and said, look, he's got a lot of experience in pneumatic fastener drivers.

[00:48:27] Speaker 07:
Not necessarily power nailers, but pneumatic fastener drivers.

[00:48:31] Speaker 07:
And I believe, as the chief ALJ said, that he could testify from the perspective of one of ordinary skill in the arc.

[00:48:39] Speaker 07:
To affirm that would not wreck the law in any way, shape, or form.

[00:48:44] Speaker 07:
What you would be doing is reaffirming

[00:48:47] Speaker 07:
that district courts and the commission have discretion to allow experts to testify if the district court believes that they could testify from the perspective of one having ordinary skill in the art.

[00:49:00] Speaker 07:
And Judge Moore, as you said, I believe, not to put words in your mouth, but I believe you said you would have let him testify, which reflects the fact.

[00:49:07] Speaker 01:
I also said I never would have agreed the level of skill in the art.

[00:49:09] Speaker 01:
You screwed up.

[00:49:11] Speaker 01:
You accepted a level of skill in the art that excluded your own expert.

[00:49:15] Speaker 01:
You must have been shocked.

[00:49:16] Speaker 01:
when that happened, and you came to that realization?

[00:49:21] Speaker 07:
Our understanding, Your Honor, was that the literal level of ordinary skill in the art is not the litmus test for expert testimony.

[00:49:29] Speaker 01:
That cannot possibly be your understanding.

[00:49:31] Speaker 01:
That's absurd.

[00:49:32] Speaker 01:
Your Honor, I... You knew it was the level for aquatics.

[00:49:36] Speaker 01:
Is there any... There's no room in aquatics.

[00:49:38] Speaker 01:
You gotta be at least a level, an ordinarily skilled artisan, at least

[00:49:42] Speaker 01:
to offer that particularized testimony.

[00:49:44] Speaker 01:
You knew that.

[00:49:45] Speaker 01:
And you had to know it, because Aquitex is crystal clear.

[00:49:48] Speaker 01:
What you've asked this court to do is overrule binding precedent, which we can't do.

[00:49:52] Speaker 01:
And so then, now, you're sort of out of luck.

[00:49:55] Speaker 01:
It ruled out four patents, because you didn't have expert testimony on them.

[00:49:59] Speaker 07:
Your Honor, respectfully, I don't believe Aquitex holds

[00:50:04] Speaker 07:
that the person has to be literally, or even at a minimum, a person of ordinary skill in the art.

[00:50:09] Speaker 07:
What Aqua Tech says, and what SCB says, and what other cases have said, is that the person must be qualified to testify from the perspective of a person having ordinary skill in the art.

[00:50:21] Speaker 07:
And given the abuse of discretion standard, when somebody has the educational requirement and an experience in clearly an adjacent area,

[00:50:30] Speaker 07:
pneumatic fastener drivers for rivets versus power nailers, it is not an abuse of discretion to allow that person to testify and it is abuse of discretion.

[00:50:40] Speaker 07:
to when that decision is based on a clearly erroneous view of the law.

[00:50:45] Speaker 07:
And the chief ALJ viewed aquatexes, the word of requiring that the expert literally be a person of ordinary skill in the art, was not correct.

[00:50:53] Speaker 07:
This court has never said, even if you take at face value that it had to be a minimum, which I don't believe this court has ever said, it's never said the expert must literally be a person of an ordinary skill in the art.

[00:51:05] Speaker 07:
That ruling was based on a clear error of law.

[00:51:08] Speaker 07:
That is abuse of discretion, and there is no

[00:51:11] Speaker 07:
Wrecking of the law is completely consistent with aqua text and with Sundance to say somebody who had experience in Fastener pneumatic fastener drivers could testify from that perspective It can possibly be okay for the ITC to split the baby like they did here to exclude him from offering

[00:51:30] Speaker 01:
DOE testimony while allowing him to testify on literal infringement, or do you believe in assessing an expert's qualifications, it probably ought to be all or nothing?

[00:51:40] Speaker 07:
I believe it should have been all or nothing.

[00:51:42] Speaker 07:
I believe it should have been all or nothing in him being in because he was qualified to testify.

[00:51:48] Speaker 07:
I want to address Judge Dyke.

[00:51:50] Speaker 07:
You asked a question about the lifter member

[00:51:54] Speaker 07:
relied on by Pratt.

[00:51:57] Speaker 07:
In appendix 178 and 179, the commission says, the crux of the dispute is whether the lifting pins of the pinwheel are on its face surface.

[00:52:10] Speaker 07:
So that was the lifter member.

[00:52:11] Speaker 07:
It wasn't a complicated question, as my friend suggests.

[00:52:15] Speaker 07:
It was a very simple question.

[00:52:17] Speaker 07:
Are the lifting pins on the face surface?

[00:52:22] Speaker 07:
Dr. Pratt's testimony, whether he was literally one of ordinary skill in the arc.

[00:52:27] Speaker 07:
The issue wasn't so complicated that he couldn't testify as to whether the lifting pins were on the face.

[00:52:33] Speaker 07:
And in fact, the ALJ relied on drawings from Dr. Valley's presentation.

[00:52:38] Speaker 07:
And again, this is all in appendix 178, 179, what they relied on.

[00:52:42] Speaker 07:
And he relied on a manufacturing schematic from the Koki tool.

[00:52:46] Speaker 07:
He cited RSO214C.

[00:52:49] Speaker 07:
So it wasn't just Dr. Pratt's testimony.

[00:52:50] Speaker 01:
Can I ask you to address, just briefly, because we're beyond your time,

[00:52:54] Speaker 01:
If the safety contact and the fastener driver mechanism are potentially separate components, what happens to this case?

[00:53:05] Speaker 07:
If they are separate components, well, then the court affirms on the cross appeal, because the exit end of the tool is a safety contact element.

[00:53:15] Speaker 07:
And if you look at, again, appendix 526 to 527, again, Judge Dyke, you asked about, well, can it be triggered

[00:53:23] Speaker 01:
Are you sure you don't mean reverse?

[00:53:26] Speaker 01:
You said the court affirms.

[00:53:27] Speaker 01:
I'm pretty sure you mean the court reverses, right?

[00:53:29] Speaker 07:
No, affirms on the cross appeal, because that refers to Cokie's appeal.

[00:53:38] Speaker 07:
If the court finds the safety that initiating the driving member is correct, then we prevail on the 718 patent.

[00:53:49] Speaker 07:
And I just wanted to point out to you, Judge Dyke, in figures 13A and 13B of Appendix 526 and 527, it shows that the trigger is triggered by the actuation of the safety contact element.

[00:54:01] Speaker 07:
I know it's a flow chart, but you'll see in the diamond shapes the safety contact element is what triggers driving.

[00:54:09] Speaker 07:
And we identify in pages 27 and 28.

[00:54:11] Speaker 01:
I think that maybe you misunderstood my question.

[00:54:14] Speaker 01:
OK, I'm sorry.

[00:54:15] Speaker 01:
If I don't think the district court or the ITC got the safety contact element construction right, what happens to this case?

[00:54:27] Speaker 07:
I'm struggling with that, Your Honor, because the question is what is the exit end of the tool?

[00:54:32] Speaker 07:
And the safety contact element is at the exit end of the tool.

[00:54:36] Speaker 07:
So the question that the commission asked is, what is the exit end of the tool?

[00:54:41] Speaker 07:
The commission found that the exit end of the tool is at safety contact.

[00:54:45] Speaker 07:
And so in the drawing that, in fact, that Koki has in their brief, it's 419, the part that actually touches the tool.

[00:54:52] Speaker 00:
I think what Judge Moore is asking is, what relief do we grant?

[00:54:58] Speaker 00:
if we agree that the ITC erred in this respect?

[00:55:05] Speaker 00:
If the ITC erred with respect to the accident construction, what do we do?

[00:55:14] Speaker 00:
Does that mean there is non-infringement?

[00:55:17] Speaker 07:
I believe there would have to be a remand then, because then this court would have to issue a claim construction that has never been tried.

[00:55:25] Speaker 07:
You'd be asking, because again, the safety contact element is not the claim limitation.

[00:55:29] Speaker 07:
The claim limitation is exit end of the tool.

[00:55:32] Speaker 07:
I don't know what this court would construe exit end to mean.

[00:55:37] Speaker 07:
And if it's a brand new construction, I suppose we'd have to remand.

[00:55:40] Speaker 01:
OK, so your idea is if we disagree with the commission's construction, the appropriate course of action would be to vacate and remand.

[00:55:48] Speaker 07:
Depending on what how you disagree with it.

[00:55:50] Speaker 01:
Yes, okay?

[00:55:52] Speaker 01:
All right.

[00:55:52] Speaker 01:
Thank you.

[00:55:53] Speaker 01:
Mr.. Schumann this mr. Parikh I'll restore your three minutes of rebuttal time

[00:56:08] Speaker 06:
Thank you, your honor.

[00:56:10] Speaker 06:
So to answer your last question, if this court finds that the exit end of the mechanism is what's required to contact the work surface in order to initiate the driving cycle, this court should reverse.

[00:56:27] Speaker 06:
So my colleague said that the claim

[00:56:31] Speaker 06:
uses the phrase exit end of the tool.

[00:56:34] Speaker 06:
That's not correct.

[00:56:36] Speaker 06:
He is, Judge Moore, you recognize the... Claim nine does, right?

[00:56:40] Speaker 01:
Or claim one?

[00:56:41] Speaker 06:
Claim nine does, but claim one, the asserted claim, uses the phrase from an exit end of the mechanism, and the parties agree that the mechanism in that limitation refers to the fastener driving mechanism, not the tool.

[00:56:59] Speaker 06:
I'm I'm I'm I'm I'm I'm I'm I'm I'm I'm I'm I'm I'm I'm I'm I'm

[00:57:17] Speaker 06:
In claim one, they specifically chose to use exit end of the mechanism, which the parties agreed is exit end of the fastener driving mechanism.

[00:57:26] Speaker 06:
And the claim specifically identifies that the fastener driving mechanism is just the hollow cylinder and the main storage chamber.

[00:57:34] Speaker 06:
And then it separately recites the safety contact element as a separate limitation, which is also consistent with the specification.

[00:57:42] Speaker 06:
I believe the ITC pointed you to

[00:57:44] Speaker 06:
a part of this specification where it talks about the exit end of the tool.

[00:57:50] Speaker 06:
But there's another part of this specification, appendix 568, which differentiates between the bottom of the fastener exit portion of the tool, the faster driving mechanism, and the bottom of the safety contact element.

[00:58:06] Speaker 06:
What claim one is directed to is the

[00:58:13] Speaker 06:
There's a logic flow diagram at appendix 575, which is column 33, lines 42 to 47.

[00:58:21] Speaker 06:
And there it says the step determines whether or not the safety contact element has been pressed against a solid object to an extent that actuates a sensor, which means that the tool is now pressed against the surface.

[00:58:36] Speaker 06:
And what it's referring to there, the tool being pressed against the surface, is the bottom of the fastener driving mechanism, not the bottom of the safety contact element.

[00:58:46] Speaker 06:
So we don't dispute that you have to actuate the safety contact element.

[00:58:52] Speaker 06:
The question is, how far does the safety contact element have to be actuated?

[00:58:58] Speaker 06:
And in claim one, it refers to this embodiment where the tool itself, the fastener driving mechanism,

[00:59:04] Speaker 06:
Has to be in contact with the work surface in order to actuate the driver And with that I see my time is up so unless the panel has any additional questions Okay, no, we thank all counsel this case is taken under submission.

[00:59:21] Speaker ?:
I