[00:00:06] Speaker 03:
industry versus Duke manufacturing company.

[00:01:23] Speaker 02:
May it please the court, Kevin Kennealy, for Duke Manufacturing.

[00:01:28] Speaker 02:
The preliminary injunction entered by the district court that took all of Duke's accused products off the market until a trial on merits was an abuse of discretion on several grounds, and it should be vacated.

[00:01:40] Speaker 02:
There's also a motion to stay pending before this panel.

[00:01:42] Speaker 02:
We'd ask that the motion to stay be granted if the court vacates.

[00:01:48] Speaker 02:
I'm going to start this morning with

[00:01:50] Speaker 02:
the focus of all the errors that the court committed with regard to the Finnegan reference.

[00:01:56] Speaker 02:
And there were multiple.

[00:01:59] Speaker 02:
First, the court made a clearly factual error by saying that Finnegan was deemed considered by the examiner in the 761 and 970 patents when it clearly was not.

[00:02:11] Speaker 02:
And then it imposed a higher burden, citing the Tokai case, saying that because it was cited, that We Duke had a higher burden to show that Finnegan was relevant.

[00:02:21] Speaker 02:
Both are wrong.

[00:02:23] Speaker 02:
And then, and this often happens as the court knows in these patent cases,

[00:02:27] Speaker 02:
that the claim construction giveth and the claim construction taketh away.

[00:02:31] Speaker 02:
And that's exactly what happened here with the insulative air gap construction.

[00:02:36] Speaker 02:
On that construction, the court sided with our friends and said that insulative air gap could be a gap that includes foam.

[00:02:43] Speaker 02:
Now, on that current construction, finnegan has that very element, which renders finnegan an anticipatory reference, not merely one that can contribute to obviousness.

[00:02:55] Speaker 02:
The court just got that wrong and treated Finnegan as only part of an obviousness case.

[00:03:02] Speaker 02:
So our contention below and here is that the Finnegan reference by itself anticipates seven of the eight claims on which were enjoined.

[00:03:11] Speaker 02:
And I can address the eight.

[00:03:12] Speaker 04:
The air gap limitation wasn't a basis for the district court's conclusion that Finnegan is unlikely to invalidate the claims, right?

[00:03:22] Speaker 02:
It wasn't one of the bases, no.

[00:03:23] Speaker 02:
But what's important is that once the air gap.

[00:03:26] Speaker 02:
It takes that issue off the table.

[00:03:29] Speaker 02:
It takes that issue off the table and renders Finnegan anticipatory, not merely part of the opposite case.

[00:03:34] Speaker 04:
Well, there were other elements that the district court found were lacking in Finnegan.

[00:03:40] Speaker 02:
And I'd like to turn to those now, if I may, Judge Shin.

[00:03:43] Speaker 02:
So after the insulative air gap was off the table, it was legal air for the court to construe the term adjacent.

[00:03:52] Speaker 02:
By adding another word in there, the court said immediately adjacent.

[00:03:55] Speaker 02:
Our friends say that to be adjacent under the patent, something must have butt or touch.

[00:04:02] Speaker 02:
And that's strictly too narrow of a construction.

[00:04:05] Speaker 02:
And when you apply it, and then they said, when you apply it to Finnegan, you can see that the wells or the pans, however you want to term them, the pans 18A and 18B that are shown in Figure 7 of Finnegan,

[00:04:17] Speaker 02:
that they don't abut or touch, or they're too far away, or you can't tell.

[00:04:21] Speaker 02:
Well, anyone.

[00:04:23] Speaker 02:
You don't need experts on both sides to look at Figure 7 of Finnegan and see that they are adjacent.

[00:04:28] Speaker 02:
They lie next to it.

[00:04:29] Speaker 04:
Well, that depends on what adjacent means.

[00:04:31] Speaker 02:
I suppose it does, Your Honor.

[00:04:32] Speaker 04:
Let's assume it doesn't necessarily mean abutting.

[00:04:36] Speaker 04:
It doesn't necessarily require touching the hot pan, touching the cold pan in some way.

[00:04:42] Speaker 04:
then what does it mean?

[00:04:44] Speaker 04:
What is the right articulation for adjacent in the context of this patent?

[00:04:48] Speaker 02:
Lying next to, lying near.

[00:04:50] Speaker 02:
That's one of the dictionary definitions.

[00:04:53] Speaker 03:
Well, I thought your contention was based on the specification that it could be three inches or more separate.

[00:05:01] Speaker 02:
That's also one of our contentions.

[00:05:04] Speaker 02:
When you look at the, if we use the 761 patent,

[00:05:13] Speaker 02:
It's almost as if Low Temp is trying to talk out of both sides of the mouth and say, to be adjacent, you have to a butt or touch.

[00:05:21] Speaker 02:
However, in their patent specification, and I think that's it.

[00:05:26] Speaker 04:
Can you say something like, most preferably, three inches?

[00:05:29] Speaker 02:
Yes.

[00:05:30] Speaker 02:
But it could be more.

[00:05:32] Speaker 02:
And someone of ordinary skill in the art would understand that there could be variations, and the invention could work.

[00:05:37] Speaker 02:
So obviously, they don't think it's a budding.

[00:05:41] Speaker 02:
But I think another key aspect of this is when we look at the 256 patent.

[00:05:47] Speaker 02:
And I'll turn now to that.

[00:05:50] Speaker 04:
What's the 256?

[00:05:51] Speaker 02:
Well, that's the third patent that's in the case, but it's not part of the, sorry, the 253.

[00:05:56] Speaker 02:
I misspoke.

[00:05:57] Speaker 02:
The 253 patent.

[00:05:58] Speaker 02:
And I'm an appendix.

[00:06:01] Speaker 02:
This is a patent on which we're not enjoying.

[00:06:07] Speaker 02:
But I'd like to direct the court's attention at Appendix 72 to Column 5, the first claim, about line 43.

[00:06:18] Speaker 02:
Each of the wells being isolated thermally from an adjacent well such that at least one exterior wall of one well

[00:06:27] Speaker 02:
is spaced an insulative distance from an exterior wall of an adjacent well.

[00:06:32] Speaker 02:
They use the term adjacent in a way that clearly connotes that they don't have to abut.

[00:06:38] Speaker 02:
in the same claim, I mean, in the same patent family.

[00:06:41] Speaker 02:
So that's it.

[00:06:41] Speaker 02:
And we think that's strong evidence as well.

[00:06:43] Speaker 04:
Right.

[00:06:44] Speaker 04:
But I guess it comes down to a judgment call of looking at figure seven of Finnegan, that diagram, and the fact finder having to ask itself, is pan 18A adjacent to pan 18B?

[00:07:02] Speaker 04:
And maybe we don't know.

[00:07:04] Speaker 04:
We don't know the answer to that, because this is a schematic.

[00:07:09] Speaker 04:
And it's not so clear that the schematic itself is illustrating a pan right next to another pan.

[00:07:18] Speaker 02:
Well, Judge Chen, you just said right next to.

[00:07:21] Speaker 02:
OK, next to.

[00:07:23] Speaker 02:
Right.

[00:07:24] Speaker 02:
Well, I think that someone of ordinary skill, looking at Figure 7 on APPX 2185,

[00:07:32] Speaker 02:
sees a continuous countertop 14, and there's no dispute in the record that the countertop 14 is one continuous piece despite the break lines, thereby 82, and that those two pans, 18A and 18B, are next to each other.

[00:07:47] Speaker 02:
There's nothing shown in between them.

[00:07:48] Speaker 02:
There's nothing else.

[00:07:50] Speaker 02:
And we also have to look at figure seven in the context of the full disclosure of Finnegan.

[00:07:55] Speaker 02:
Figure seven uses the same markings, uses the same description of elements as figure one.

[00:08:01] Speaker 02:
And it's just unreasonable to read adjacent to require abutment or immediate touching in a way that excludes finnigan.

[00:08:13] Speaker 02:
So that's adjacent, and that's the error that was made.

[00:08:16] Speaker 02:
And as you pointed out, it would be up to someone

[00:08:20] Speaker 02:
a fact issue about whether or not Finnegan teaches that.

[00:08:24] Speaker 02:
We think it does, and we think that given the record we have to show a substantial question of invalidity.

[00:08:30] Speaker 03:
Did your expert testify as to what adjacent man in this art?

[00:08:40] Speaker 02:
Adjacent, he understood it in the ordinary dictionary definition of lying near to.

[00:08:48] Speaker 02:
So nothing in the record, except competing experts for competing parties, have a dispute about whether or not the pans of 18A and 18B are casing.

[00:09:02] Speaker 03:
Well, I guess what I'm asking is, in this art, did anybody testify that it was usual to have pans near each other?

[00:09:13] Speaker 02:
I mean, there is evidence that one ordinary skill would understand that in a counter where you're serving food, the pans would be near each other for space saving.

[00:09:26] Speaker 02:
But again, nothing disqualifies figure seven when you read it in the context of all of Finnegan from meeting that, from having two pans in the same serving well.

[00:09:35] Speaker 02:
And when you look at figure one, they show that.

[00:09:37] Speaker 03:
They show that there are quite a part from Finnegan, I guess,

[00:09:44] Speaker 03:
The point is that in the industry, it was normal to have the pans next to each other.

[00:09:49] Speaker 03:
So someone trying to do this would necessarily want to have the pans next to each other.

[00:09:56] Speaker 03:
I'm sorry.

[00:09:56] Speaker 03:
I didn't hear you.

[00:09:57] Speaker 03:
Someone creating pans for serving would want to have the pans near each other.

[00:10:04] Speaker 03:
They would.

[00:10:05] Speaker 03:
I mean, quite apart from what Finnegan may or may not show.

[00:10:09] Speaker 02:
Judge Steig, we understand and we think in this art you would want the pans or the serving wells near each other when you're serving food like this.

[00:10:18] Speaker 04:
There's something unique about Finnegan's disclosure though.

[00:10:21] Speaker 04:
It talks about frosting the top perimeter flange of the cold pan.

[00:10:28] Speaker 04:
And so then the question is, how close can you get the hot pan to the cold pan in Finnegan Figure 7 and still maintain the aesthetically pleasing frosting of the flange of the top of the cold pan?

[00:10:45] Speaker 02:
That would be an engineering issue for people who have ordinary skill in the art.

[00:10:49] Speaker 02:
And I would just point us back to the specification.

[00:10:52] Speaker 04:
I guess the point would be, the inference would be that perhaps you can't get the hot pan too close to the cold pan in such a way that you can actually say that the hot pan is adjacent to the cold pan.

[00:11:04] Speaker 02:
Well, that's a matter of degree that you're referring to with respect to the actual engineering of the two pans.

[00:11:10] Speaker 02:
But Finnegan talks about having frosting in one pan.

[00:11:14] Speaker 02:
But it doesn't preclude or say that you can't have another pan near it that wouldn't at the same time be hot.

[00:11:22] Speaker 02:
Nothing about Finnegan defeats that idea that they could be spaced apart and still meet the claims.

[00:11:29] Speaker 02:
So this idea of a narrowing definition of adjacent isn't supported by any claim construction principles.

[00:11:38] Speaker 02:
And figure seven, when read in light of the whole disclosure of Finnegan, we believe, especially when you compare it to figure one, teaches that pans 18A and 18B meet the adjacency.

[00:11:54] Speaker 02:
It was also clearly erroneous to conclude that the two pans or wells are not in the same unit in the module.

[00:11:59] Speaker 02:
This is another contention.

[00:12:01] Speaker 02:
And it's just factually wrong.

[00:12:04] Speaker 04:
When you look at figure seven and relate it to figure one and you and you look at the entire disclosure the Did the district court rely on that and I can't remember and make a finding that figure seven is teaching a hot pan in a different display apparatus than the other

[00:12:28] Speaker 02:
Well, with respect, the district court kind of ran things together in its analysis.

[00:12:32] Speaker 02:
So it isn't broken out as neatly.

[00:12:34] Speaker 02:
But it does say that Finnegan doesn't show two pans within a single module that can be operated at different temperatures simultaneously.

[00:12:42] Speaker 02:
And that's what I think Low Temp is picking up on, that it's not part of the same module or unit.

[00:12:49] Speaker 02:
And if I may, when you look at figure one,

[00:12:54] Speaker 02:
It's a single food storage display unit, with a single self-service food top, with a single countertop, with a pan shown, and with one single display and input device.

[00:13:08] Speaker 02:
And then when you look further down, I think if you look at column 11, this is on 8PPX 2172, column 11 talks about the unit.

[00:13:20] Speaker 02:
And that in the unit, the pans or wells, 18A or 18B,

[00:13:24] Speaker 02:
are clearly treated as separately controlled.

[00:13:28] Speaker 02:
So they talk about the two pans being in the unit, and the unit is the buffet unit described elsewhere in Finnegan and also shown in Figure 1.

[00:13:37] Speaker 02:
We think that it was clear error for the court to distinguish Finnegan based on this idea that they're not part of the same unit or module.

[00:13:46] Speaker 02:
Now I'm on to the clearly erroneous finding that the court couldn't see or didn't see that Finnegan had two wells that are independently heated or cooled.

[00:13:55] Speaker 02:
And on this one, in fairness to the examiner who never saw Finnegan, her reasons for allowance make sense that she didn't see what Finnegan teaches.

[00:14:08] Speaker 02:
The district court, on the other hand, had Finnegan right in front of it.

[00:14:11] Speaker 02:
And I'm going to refer now to the appendix at 2170.

[00:14:15] Speaker 02:
This is what Finnegan teaches in column nine.

[00:14:19] Speaker 02:
One control system allows the user to control the temperature of two pans independently.

[00:14:25] Speaker 02:
Next sentence.

[00:14:26] Speaker 02:
For example, one pan could be hot and the other pan could be cold.

[00:14:31] Speaker 02:
Next sentence.

[00:14:32] Speaker 02:
The PLC, the controller, will control one pan or two pans depending on the requirements.

[00:14:39] Speaker 02:
And so it's quite clear that Finnegan teaches

[00:14:42] Speaker 02:
independently heating and cooling two wells or pans.

[00:14:46] Speaker 00:
That was a clear error by the district court as well.

[00:14:57] Speaker 02:
It was submitted in 2014 in continuing prosecution by our friends in the 253 application.

[00:15:04] Speaker 00:
And I guess when I quickly looked at that, that's in the appendix.

[00:15:09] Speaker 00:
It's just there without anybody commenting on it.

[00:15:12] Speaker 00:
Is that right?

[00:15:12] Speaker 02:
That's exactly right.

[00:15:14] Speaker 02:
It's of record.

[00:15:15] Speaker 02:
It's not discussed.

[00:15:17] Speaker 02:
It's not distinguished.

[00:15:19] Speaker 04:
And in fact, it came in late in the prosecution.

[00:15:22] Speaker 04:
Is that right?

[00:15:23] Speaker 02:
I believe it did.

[00:15:24] Speaker 02:
and I'll just note parenthetically it came in after Low Temp had attempted to enforce the earlier patents against a competitor Volrath and Volrath cited and showed them in a letter back oh by the way this Finnegan reference this makes your patents invalid and after it's right sometime after that in 2014 but they submitted it to the patent office and

[00:15:47] Speaker 02:
So we have one left, and that's Finnegan's wells are thermally isolated.

[00:15:54] Speaker 02:
If you look at figure four, you can see that Finnegan's pans are thermally isolated.

[00:16:01] Speaker 02:
They're thermally isolated because they do the exact same thing that our pans do.

[00:16:05] Speaker 02:
We fill the area between the inner wall and the outer wall with foam.

[00:16:10] Speaker 02:
So figure four, item 40, is that foam.

[00:16:12] Speaker 02:
So on all these grounds, Finnegan has what

[00:16:17] Speaker 02:
the patents claim.

[00:16:19] Speaker 02:
It anticipates each and every element.

[00:16:21] Speaker 02:
And I want to turn briefly to, if I may, before I sit down for rebuttal, claim four of the 761.

[00:16:29] Speaker 03:
I think we're out of time unless my colleagues have questions.

[00:16:33] Speaker 03:
You have two minutes for rebuttal.

[00:16:36] Speaker 03:
Thank you.

[00:16:57] Speaker 01:
May it please the court, Clay Holloway for LTI.

[00:17:00] Speaker 01:
Judge Dyke, I want to start with a comment slash question you posed to counsel that wasn't it just known that you would want to put the pans close to each other?

[00:17:10] Speaker 01:
That's actually incorrect.

[00:17:11] Speaker 01:
That's precisely what the invention was here.

[00:17:15] Speaker 01:
And that's why it's claimed and why the examiner distinguished existing prior art on the idea of adjacent wells being close together

[00:17:24] Speaker 01:
but thermally isolated one from another so one could be hot and the other could be cold.

[00:17:30] Speaker 01:
I then want to switch a little bit to Judge Chin where he said wasn't there an inference that there could be this switch from hot to cold and there was some talk about the three inch separation.

[00:17:44] Speaker 01:
I want to address those together.

[00:17:45] Speaker 03:
OK, but let me start by

[00:17:48] Speaker 03:
asking isn't there at least one significant error in the district court's opinion where it says Finnegan does not contemplate an invention with the ability to heat one tray of food in the unit's pan while at the same time cooling another tray in that pan when Finnegan expressly talks about having one pan hot and one pan cold under a single control system.

[00:18:14] Speaker 01:
So Your Honor, I believe you're referring to basically Appendix 22 to 23 where the district court judge is having this conversation.

[00:18:22] Speaker 01:
Finnegan Figure 7 describes an embodiment where in a single food counter,

[00:18:29] Speaker 01:
There is one pan that could have up to seven types of food in it that's hot.

[00:18:33] Speaker 03:
No, I don't think you're responding to my question.

[00:18:35] Speaker 03:
I'm not talking about the adjacency limitation.

[00:18:39] Speaker 03:
He says that, or she, whichever it is, I forget.

[00:18:43] Speaker 03:
Finnegan does not contemplate invention with the ability to keep one tray of food in the unit's pan while at the same time cooling another tray.

[00:18:50] Speaker 03:
It explicitly contemplates that, right?

[00:18:53] Speaker 01:
No, that is incorrect, Your Honor, respectfully.

[00:18:55] Speaker 01:
When Finnegan talks about pans,

[00:18:58] Speaker 01:
as opposed to trays, it is talking about long sections that would hold, for example, seven trays of food within one pan.

[00:19:10] Speaker 01:
That pan must either be hot or cold.

[00:19:14] Speaker 01:
Figure 7 describes an embodiment where you could have two such pans in the same food unit.

[00:19:22] Speaker 01:
That has nothing to do with how close together they are or whether they're in the single module.

[00:19:27] Speaker 01:
It is very clear, as the expert at the hearing agreed, that within a single pan, it's either all hot or all cold.

[00:19:35] Speaker 01:
So all those trays of food must either be all hot or hot cold.

[00:19:39] Speaker 04:
Now, I'm getting a little lost.

[00:19:41] Speaker 04:
Why wouldn't having a, in Finnegan, the hot pan and the cold pan all in one integrated display apparatus unit not satisfy the limitation?

[00:19:55] Speaker 04:
Putting aside the adjacency question for a moment.

[00:19:58] Speaker 01:
Because they're not in the same modular frame.

[00:20:00] Speaker 01:
The expert agreed, Dr. Homan's expert duke agreed, that when you're looking at a food bar,

[00:20:06] Speaker 01:
And you see, for example, a module in the food bar that is capable of doing hot, cold, and freeze next to each other.

[00:20:14] Speaker 01:
It's surrounded by a frame.

[00:20:16] Speaker 01:
separated by countertop from another module surrounded by a frame.

[00:20:21] Speaker 01:
That's two different modules in the same food service bar.

[00:20:25] Speaker 01:
That's the difference between the invention.

[00:20:28] Speaker 01:
The invention was able to get all of these things in a single modular frame that could be, for example, dropped into a counter.

[00:20:37] Speaker 04:
I'm a little lost, to be honest.

[00:20:40] Speaker 04:
You're talking about modules, units, and frames in a way that is a little confusing to me.

[00:20:47] Speaker 04:
When I think about your patent, there's not a lot to this patent.

[00:21:00] Speaker 04:
And the claim refers to a frame, right?

[00:21:04] Speaker 01:
Correct.

[00:21:04] Speaker 01:
For example, at appendix 52... In a module.

[00:21:07] Speaker 01:
Yeah, claim one says a food presentation module generally immobile and used comprising a frame with adjacent first and second wells inscribed.

[00:21:15] Speaker 04:
If you stay in the patent and go to... So why, just getting back to Finnegan, why doesn't Finnegan, with the hot pan and the cold pan, disclose a hot pan and that cold pan in a single frame as part of one food presentation module?

[00:21:33] Speaker 01:
Because they're separate, as counsel just acknowledged, they're separated by countertop.

[00:21:38] Speaker 01:
And you have one pan that is an apparatus, as described by Finnegan.

[00:21:42] Speaker 01:
The apparatus 10 is, for example, pan 18A.

[00:21:46] Speaker 01:
Apparatus 10 is also pan 18B.

[00:21:50] Speaker 01:
What do you mean, apparatus 10?

[00:21:54] Speaker 01:
In Finnegan, that's how it's described.

[00:21:56] Speaker 01:
When Finnegan is describing its invention, it talks about an apparatus 10.

[00:22:00] Speaker 01:
The apparatus being a pan.

[00:22:02] Speaker 01:
and the components necessary to heat and cool things.

[00:22:05] Speaker 04:
Is apparatus 10 the entire figure of figure seven?

[00:22:10] Speaker 01:
No, sir.

[00:22:11] Speaker 04:
We would say that apparatus 10 is referring to... When I look at figure seven and I see the element number 10 with an arrow pointing down,

[00:22:21] Speaker 04:
There's just one element 10, and it seems to be pointing to the entire structure illustrated in Figure 7.

[00:22:29] Speaker 01:
You think there's two 10s in here?

[00:22:31] Speaker 01:
Nope.

[00:22:32] Speaker 01:
If you look to example Figure 1 and Figure 2, they're talking about the food service bar being 12, pointing to the whole thing.

[00:22:41] Speaker 01:
Included in that is apparatus 10 when you go down to figure 2 it has apparatus 10 numeral pointing at the pan surrounded by countertop 14 the specification makes clear at page 5 that the countertop is part of food service bar 12 not apparatus 10

[00:23:02] Speaker 01:
So when you go to figure seven, and the second embodiment is being described, where you have a temperature controller that can modulate two different pans, it's not saying the pans are adjacent to each other within a frame.

[00:23:14] Speaker 03:
But that's not what the district court said.

[00:23:16] Speaker 03:
What the district court said on its face is wrong.

[00:23:20] Speaker 03:
He didn't make the distinction that you're making.

[00:23:24] Speaker 03:
On page 22, he says the pattern consistently emphasizes the objective

[00:23:29] Speaker 03:
I'm sorry, the detailed description explains that the unit described in the patent is provided for maintaining food at a desired temperature and that the apparatus is expected to be used in either a hot mode of operation or a cold mode.

[00:23:41] Speaker 03:
And he says Finnegan doesn't show that.

[00:23:43] Speaker 03:
That's not right.

[00:23:45] Speaker 01:
Respectfully, Your Honor, it is correct.

[00:23:47] Speaker 01:
When Finnegan talks about the pan, it is referring to one hot water bath and cold refrigerated pan.

[00:23:59] Speaker 01:
That pan... That's what you say.

[00:24:01] Speaker 01:
It's not what the district court said.

[00:24:04] Speaker 01:
Respectfully, Your Honor, that's what he's talking about.

[00:24:06] Speaker 01:
When Finnegan, at page five,

[00:24:10] Speaker 01:
talks about being used in either a hot mode operation or a cold mode operation.

[00:24:16] Speaker 01:
It is because in Finnegan... It says one pan could be hot and the other pan could be cold.

[00:24:21] Speaker 01:
That's a... Respectfully, Judge, like, that's a separate limitation.

[00:24:24] Speaker 01:
When the patent is talking about a pan, a pan must either be hot or cold.

[00:24:30] Speaker 01:
We can see that Figure 7 describes a controller

[00:24:33] Speaker 01:
in which two pans could be controlled by the same controller where one is hot and one is cold.

[00:24:39] Speaker 01:
The distinguishing feature over Finnegan in that regard is that they are not adjacent in a modular frame.

[00:24:45] Speaker 01:
Included in that is that the way Finnegan achieves its invention is not to have a thermally isolated pan.

[00:24:54] Speaker 01:
Council for Duke referred to the fact that they said that the Finnegan pan works just like theirs in that the double walls are insulated with foam.

[00:25:03] Speaker 01:
That is incomplete and incorrect.

[00:25:06] Speaker 01:
At the red brief at page 30, we reproduce the figure four from Finnegan.

[00:25:11] Speaker 01:
Element number 36 is a thermally conductive material that extends from the inner wall of the pan to the outer wall of the pan all the way to the top flange.

[00:25:22] Speaker 01:
The purpose of the thermally conductive material is, as the district court judge acknowledged, to draw cold energy away from the well so that you can frost the top.

[00:25:32] Speaker 01:
So even if we put aside whether it's in a single modular frame and even if we put aside that it's adjacent,

[00:25:39] Speaker 01:
The wells in Finnegan are not thermally isolated so that you could put them in close proximity.

[00:25:44] Speaker 01:
They are designed to have heat radiate out as opposed to stay in.

[00:25:47] Speaker 01:
The purpose of the invention was to not have that, to have thermal insulation and isolation so that two wells are touching to each other on their exterior walls.

[00:25:57] Speaker 03:
Where does the, where do you get the construction of adjacent to be immediately adjacent?

[00:26:04] Speaker 03:
The district court.

[00:26:05] Speaker 03:
You're touching as some of your experts said.

[00:26:08] Speaker 01:
At the preliminary injunction hearing, we presented argument on the extrinsic record as to what adjacency meant at pages 344 and 345 of the appendix.

[00:26:26] Speaker 03:
The distinguishing characteristic... Did your experts testify about that?

[00:26:30] Speaker 03:
Take account of the three inch separation that's described?

[00:26:33] Speaker 01:
Yes, the expert did discuss that.

[00:26:37] Speaker 01:
The three inch separation is measured from the inner wall of one well to the inner wall of the adjacent well.

[00:26:45] Speaker 01:
Not from the exterior wall to exterior wall.

[00:26:47] Speaker 01:
And the only way to do that reading is to acknowledge what the preferred embodiment teaches.

[00:26:52] Speaker 03:
Where does the patent say that's the way you measure it?

[00:26:55] Speaker 01:
I'll explain to you, Your Honor.

[00:26:57] Speaker 01:
Appendix 51, this is the specification.

[00:27:00] Speaker 01:
Column 4, line 63.

[00:27:02] Speaker 01:
The patent says the preferred embodiment has a page.

[00:27:05] Speaker 01:
What page?

[00:27:05] Speaker 01:
What page, Your Honor?

[00:27:06] Speaker 01:
Appendix 51, Your Honor.

[00:27:09] Speaker 01:
Column 4, line 63.

[00:27:12] Speaker 01:
Talks about the conventional pans that are going to be used in these wells are 12 inches wide.

[00:27:19] Speaker 01:
At column 3, line 49, it says the preferred embodiment that's being described throughout is a module that is 58.5 inches long.

[00:27:28] Speaker 01:
The preferred embodiment being described in the specification has four wells.

[00:27:32] Speaker 01:
So right there we're at 48 inches.

[00:27:35] Speaker 01:
Column 3, line 48, the space between the wells is 3 inches.

[00:27:40] Speaker 01:
The only way to have four 12-inch pans spaced 3 inches apart inside a 58.5-inch module is to measure from the inner wall of one well opening to the inner wall of the next well.

[00:27:54] Speaker 03:
There is... Okay, suppose we were to reject that and say it's 3 inches between the pans.

[00:28:03] Speaker 03:
There's a fact issue here, right?

[00:28:06] Speaker 01:
I didn't hear the last part of your question.

[00:28:07] Speaker 03:
There's a fact issue.

[00:28:09] Speaker 03:
If three inches means three inches between the pans, the exterior of the pans, there's a fact issue here.

[00:28:17] Speaker 01:
So for dependent claims that specify the requirement that the pans be spaced three inches apart,

[00:28:23] Speaker 01:
you would have a factual finding concern on whether Finnegan teaches two pans three inches apart.

[00:28:30] Speaker 01:
Finnegan teaches no dimensions and no specifications on those dimensions.

[00:28:36] Speaker 01:
So there's nothing in Finnegan to describe how close they can be together.

[00:28:40] Speaker 01:
Judge Chin pointed out that there is a problem with bringing those two pans together and maintaining... The idea is that if they're three inches apart, they can still be frosted.

[00:28:50] Speaker 03:
from the exterior, right?

[00:28:53] Speaker 01:
The question of whether they can be three inches apart and still have frosting would be a fact question.

[00:29:00] Speaker 01:
Yes, Your Honor.

[00:29:02] Speaker 01:
And we presented evidence that a person's skill in the art would not be motivated.

[00:29:06] Speaker 03:
And there's no finding by the district judge that that's the case, that you couldn't have frosting if it were three inches apart, right?

[00:29:12] Speaker 01:
That's correct, Your Honor.

[00:29:13] Speaker 01:
The district court judge relied on three findings to distinguish Finnegan over the invention.

[00:29:21] Speaker 01:
They're not in a singular modular frame.

[00:29:23] Speaker 01:
They're not immediately next to or adjacent.

[00:29:26] Speaker 01:
And lastly, that they are not thermally isolated.

[00:29:29] Speaker 01:
I already explained why they're not thermally isolated.

[00:29:31] Speaker 01:
The Finnegan pans include a conductive material designed to not be thermally isolated.

[00:29:37] Speaker 01:
The singular modular frame, we've already discussed.

[00:29:40] Speaker 01:
They are supposed to be together.

[00:29:41] Speaker 01:
They are not together in Finnegan.

[00:29:43] Speaker 01:
So there are separate independent reasons aside from the adjacency question.

[00:29:51] Speaker 01:
Importantly, the case presented to the district court for invalidity based on Finnegan was not even an element by element analysis.

[00:30:01] Speaker 03:
What about these other patents that the district court ignored?

[00:30:05] Speaker 03:
What about the other patents?

[00:30:06] Speaker 03:
Other prior art.

[00:30:07] Speaker 03:
He considered only Finnegan.

[00:30:09] Speaker 03:
He said, I don't need to consider any of the others.

[00:30:14] Speaker 03:
I mean, the others could also raise a substantial question of invalidity, right?

[00:30:18] Speaker 03:
Don't they have to be considered?

[00:30:20] Speaker 01:
If they had been presented, Your Honor.

[00:30:22] Speaker 03:
They weren't presented?

[00:30:23] Speaker 01:
No, Your Honor.

[00:30:24] Speaker 01:
There is no citation, either the blue brief or the gray brief, to a single page of briefing

[00:30:29] Speaker 01:
or argument at the hearing that there's a combination.

[00:30:33] Speaker 03:
They submitted their expert's testimony who did an element-by-element analysis, right?

[00:30:37] Speaker 01:
How would you have found that, Your Honor?

[00:30:39] Speaker 01:
The closest they even come to citing in their briefing that there was an element-by-element analysis is in the grade brief at page 16 where they say the district court judge had a table of contents to the declarations available to him to use.

[00:30:52] Speaker 01:
They repeatedly said in their briefing that the argument they were presenting for the purposes of the injunction was Finnegan as anticipatory or Finnegan as the base reference for obviousness.

[00:31:03] Speaker 01:
And that's at Appendix 6093 in their certify and 6100 at their certify.

[00:31:08] Speaker 01:
They said the same thing at the hearing.

[00:31:10] Speaker 01:
Your Honor, the examiner did the hard work for us.

[00:31:13] Speaker 01:
They said the examiner identified three things missing from the prior art.

[00:31:17] Speaker 01:
We're going to focus on Finnegan as teaching all of those.

[00:31:21] Speaker 01:
So Your Honor's suggestion that Judge Shelp had to go hunting through thousands of pages of declarations to help Duke present its case would be suggesting that anybody who wants to try to show a substantial question of validity needs merely throw the evidence in the record and put their hands up and say, we showed our case.

[00:31:40] Speaker 01:
That would be a violation of this court's holding in Titan Tire.

[00:31:43] Speaker 01:
Titan Tire says you have to present the validity argument, and then you have to consider the rebuttal arguments in response.

[00:31:50] Speaker 01:
So despite Duke presenting an invalidity case at the district court in their briefing and at the oral argument, not in a claim-by-claim fashion, but instead by focusing on the reasons for allowance, we, however, demonstrated that Finnegan lacked specific teachings on specific claim elements.

[00:32:09] Speaker 01:
And as we just walked through, even the adjacency aside, there are independent reasons for the district court to have properly concluded Finnegan is not anticipatory.

[00:32:18] Speaker 01:
They're not arranged in the same way they're arranged in the claims.

[00:32:21] Speaker 01:
Nor does it get to the obviousness part for many reasons.

[00:32:24] Speaker 01:
You'd be frustrating the purpose of Finnegan by bringing them close together.

[00:32:27] Speaker 01:
You would be following the inventor's own motivation.

[00:32:31] Speaker 01:
The only evidence in the record of a person wanting to put these pans this close together is the inventor's own testimony

[00:32:36] Speaker 01:
during prosecution.

[00:32:38] Speaker 03:
My time is up.

[00:32:39] Speaker 03:
Thank you.

[00:32:42] Speaker 03:
Mr. Keneally you've got two minutes.

[00:32:55] Speaker 02:
Thank you, Your Honor.

[00:32:56] Speaker 02:
Just a few brief points on the truffle hunting.

[00:33:00] Speaker 02:
We submitted an expert's declaration that was fulsome and complete with our opposition to the motion.

[00:33:06] Speaker 02:
And we were time limited, as we are today, in a six hour, one day hearing to put on witnesses.

[00:33:11] Speaker 02:
If we had had four days, we would have put on every single one of our invalidity defenses through oral testimony.

[00:33:16] Speaker 02:
But it was before the district court, and he simply ignored it.

[00:33:19] Speaker 02:
That's one thing.

[00:33:20] Speaker 02:
The second thing is I'd refer the panel to

[00:33:22] Speaker 02:
of the appendix at 2257.

[00:33:24] Speaker 02:
Did you argue the declaration to the district court?

[00:33:27] Speaker 02:
I'm sorry?

[00:33:28] Speaker 02:
Did you argue the declaration to the district court?

[00:33:31] Speaker 02:
We told the court there were many other base references, such as Richmond and Tipton, that we were also relying upon at the oral argument.

[00:33:39] Speaker 02:
We did, absolutely.

[00:33:40] Speaker 02:
I wanted to move on to this question about whether someone would know from Figure 7

[00:33:47] Speaker 02:
how far apart to put the two pans, 18A and 18B.

[00:33:51] Speaker 02:
Appendix 2257 and 2258 is our expert's declaration showing what a poster would know after looking at Figure 7 about how you could space the two pans and address the issue of frosting.

[00:34:09] Speaker 02:
But the other thing, and this is really important, the thermally isolated term in the asserted patent claims

[00:34:18] Speaker 02:
It's qualitative.

[00:34:20] Speaker 02:
It's not quantitative.

[00:34:21] Speaker 02:
If they had said thermally isolated to meet an NSF standard, or so that you could have one pan be a certain degrees and keep another pan, if that was part of what they actually claimed, that would be one thing.

[00:34:34] Speaker 02:
But they didn't.

[00:34:35] Speaker 02:
All we have to meet, all we have to show in the prior is thermally isolated pans.

[00:34:39] Speaker 02:
And the presence of some conductive material in Finnegan doesn't defeat the fact that it is thermally conductive.

[00:34:46] Speaker 02:
I think those are the points I wanted to make unless the court has questions about irreparable harm or other aspects of this.

[00:34:53] Speaker 02:
We believe this case is clearly one of abusive discretion in failing to find that we had submitted a substantial question of validity.

[00:35:01] Speaker 02:
And of course, as the court knows, failure on the first element of a preliminary injunction requires reversal.

[00:35:09] Speaker 03:
Thank you.

[00:35:10] Speaker 03:
Thank both counsels.

[00:35:11] Speaker 02:
The case is submitted.

[00:35:12] Speaker 02:
That concludes our session.