[00:00:01] Speaker 00: The United States Court of Appeals for the Federal Circuit is now open and in session. [00:00:05] Speaker 00: God save the United States and its honorable court. [00:00:10] Speaker 01: Good morning. [00:00:11] Speaker 01: We have two argued cases this morning. [00:00:13] Speaker 01: The first is number 20-2129, Pulse Electronics Inc. [00:00:19] Speaker 01: versus UD Electronic Corporation. [00:00:22] Speaker 01: Mr. Carr. [00:00:26] Speaker 03: May it please the court. [00:00:28] Speaker 03: The board erred in its construction of effectively curved portion to mean any form of bend of the first conductors. [00:00:37] Speaker 03: This is overly expansive and impermissibly broad given the structure outlined in every claim. [00:00:44] Speaker 03: For example, in claim one, the effective radius of each said effectively curved portion being different for each of said first conductors. [00:00:56] Speaker 03: Also, this is incompatible with the purpose of the invention. [00:01:00] Speaker 03: At the top of Appendix 4, the board points out the purpose of the invention that a convector assembly is claimed to have a highly efficient use of interior volume to mitigate crosstalk and EMI to a high degree and to allow for use of a variety of different components as well as [00:01:25] Speaker 03: a reduction of the labor cost. [00:01:29] Speaker 04: Mr. Carson, excuse me, this is Judge Lynn. [00:01:33] Speaker 04: Wouldn't the reduction in crosstalk and interference occur any time the respective electrical connectors are offset from each other and not entirely parallel? [00:01:54] Speaker 03: Your Honor, there are lots of factors that go into crosstalk and EMI. [00:02:01] Speaker 03: The most pertinent purpose of the invention is to have a highly efficient use of the interior volume and to allow for the components to fit with inside the connector. [00:02:11] Speaker 04: Well, why does that mandate that the curve portion be 90 degrees? [00:02:19] Speaker 03: The purpose of the invention does not mandate it. [00:02:23] Speaker 03: The claim structure mandates that the effectively curved portion to be construed as having approximately 90 degree curve. [00:02:35] Speaker 04: Well, the problem, though, is in those early claims, claim one, for example, the claim is not limited in that respect. [00:02:46] Speaker 04: You obviously know how to do that because that was done in, for example, Claim 22. [00:02:53] Speaker 04: But Claim 1 is broader. [00:02:56] Speaker 04: And what gives you a basis to argue that the claim should be narrowed, that a limitation should be read into the claim? [00:03:09] Speaker 03: Your Honor, the basis for that is at the end of Claim 1 where it recites [00:03:15] Speaker 03: the effective radius of each said effectively curved portion being different for each of said first conductors. [00:03:24] Speaker 03: So that if the radius is different for each of said first conductors, the only way that this connector assembly as claimed in claim one could be designed is that the effectively curved portion has to approximately curve by 90 degrees. [00:03:40] Speaker 00: Counsel, this is Judge O'Malley. [00:03:42] Speaker 00: You rely heavily on Figure 1, which does show essentially a switchback that looks like 90 degrees. [00:03:53] Speaker 00: But I don't see anything in your description of Figure 1 that calls out a 90-degree switchback as either being required or desired or even discussed. [00:04:05] Speaker 00: Am I missing something? [00:04:08] Speaker 03: Your Honor, at the top of Column 17, [00:04:13] Speaker 03: lines four through eight, the specification describes figure one and the description of the conductors. [00:04:23] Speaker 03: And in that description, it explicitly states 90-degree turn. [00:04:35] Speaker 03: And figure one is not the only figure with a 90-degree turn. [00:04:39] Speaker 03: It's every figure of the 302 pad. [00:04:42] Speaker 03: And also, in the provisional that was filed, there were pictures of the actual prototype before these claims were written. [00:04:50] Speaker 03: And the reason these claims were written so broadly was so competitors could not design around them. [00:04:59] Speaker 03: But there's simply no way to have a different. [00:05:02] Speaker 01: That's quite, as Judge Steing, I mean, that's quite an admission. [00:05:05] Speaker 01: It admits that you wrote it more broadly than 90 degrees. [00:05:09] Speaker 01: to prevent competitors from designing around it. [00:05:12] Speaker 01: So under those circumstances, why should we limit the claim to language that you didn't use? [00:05:22] Speaker 03: The claims are not limited to just 90 degrees. [00:05:26] Speaker 03: Someone could design a connector that has an 89 degree curve, a 91 degree curve. [00:05:34] Speaker 03: The issue is that the effective [00:05:38] Speaker 03: the curve portion has to have a different radius for each of said first conductors. [00:05:49] Speaker 03: And that's just claim one. [00:05:51] Speaker 03: I would direct the court respectively to claim six where it's explicit. [00:05:57] Speaker 03: The substrate is substantially vertical and substantially orthogonal to the front face of the housing. [00:06:05] Speaker 03: So the only way the first conductors can electrically connect with the substrate is they have to make the 90-degree turn because the connector assembly, everything in these connector assemblies is built at 90-degree angles. [00:06:25] Speaker 03: Everything has to be orthogonal. [00:06:26] Speaker 03: There's just no way around it. [00:06:29] Speaker 00: So... Council, but Judge Dyke's point is a good one. [00:06:32] Speaker 00: If you were arguing [00:06:34] Speaker 00: infringement here and you had the alleged infringer had an eighty-degree bend and they argued that we should take these ninety-degree references from the specific specification and read them into the claims you'd be arguing that we shouldn't. [00:07:00] Speaker 03: Right? [00:07:02] Speaker 03: Your Honor, I don't [00:07:04] Speaker 03: I think you can make the argument because the purpose of the invention is to have a highly efficient use of the interior volume. [00:07:13] Speaker 03: If you have an 80 degree bend, then the connector would have to be larger. [00:07:20] Speaker 03: And there's no way for the connector to use the volume efficiently if there's an 80 degree [00:07:32] Speaker 03: Or let's just say 60 degree bend. [00:07:35] Speaker 03: There's no way for the connector. [00:07:36] Speaker 00: But my point, counsel, my point is that the rule that says you don't read limitations from the specification into the claims, unless it's very clear that that is absolutely necessary, applies both to the patent holder and to the putative infringer, right? [00:07:59] Speaker 03: Yes. [00:08:00] Speaker 03: Yes, your honor. [00:08:03] Speaker 03: Pulse disagrees that you could have a 60-degree angle. [00:08:08] Speaker 03: The connector has to come in straight at 90-degree angle. [00:08:15] Speaker 03: And the conductors have to make approximately a 90-degree angle to hit the substrate that's vertical and orthogonal to the front face of the housing. [00:08:30] Speaker 03: And the problem with the board's construction is it also improperly construes the term in isolation. [00:08:37] Speaker 03: The board did not construe it with the context of the rest of the claim. [00:08:42] Speaker 03: They simply looked at effectively curved portion without taking into account the effective radius that has to be different for each of the conductors. [00:08:55] Speaker 03: And there's no technical explanation [00:08:58] Speaker 03: in the final written decision on how any bend can mitigate EMI or allow for use of a variety of different components within the connector. [00:09:13] Speaker 04: Mr. Carr, this is Judge Lynn. [00:09:15] Speaker 04: Could you direct your attention to the claims that were in the amendment that were not allowed for indefiniteness? [00:09:27] Speaker 04: Sure. [00:09:32] Speaker 04: And just to start the conversation, if you look at claim 17 on appendix page 593. [00:09:39] Speaker 04: Right. [00:09:40] Speaker 03: So claim 17, producing a desired effect of being curved by approximately 90 degrees. [00:09:50] Speaker 04: What does the language producing a desired effect of being add to that claim? [00:10:01] Speaker 04: Because without that language, it would read, it includes a portion curved by approximately 90 degrees. [00:10:09] Speaker 04: So what does that language add? [00:10:14] Speaker 03: Producing a desired effect adds that the conductor does not exactly have to curve by approximately 90 degrees. [00:10:23] Speaker 03: It allows for a broader reading of the statement that directly follows [00:10:28] Speaker 03: which is being curved by approximately 90 degrees. [00:10:31] Speaker 04: Maybe you should have used the word approximately. [00:10:36] Speaker 04: Approximately curved or something like that, because I'm confused by this language. [00:10:45] Speaker 03: Yes, Your Honor. [00:10:46] Speaker 03: I see that I'm into my rebuttal time. [00:10:48] Speaker 04: All right. [00:10:49] Speaker 04: That was not a question, so thank you. [00:10:54] Speaker 01: OK. [00:10:57] Speaker 01: Thank you, Mr. Carl. [00:10:58] Speaker 01: I'll hear from Mr. Schlott. [00:11:01] Speaker 02: Thank you, Your Honor. [00:11:02] Speaker 02: Good morning, and may it please the Court. [00:11:05] Speaker 02: Picking up on the discussion regarding the claim construction, I think the Court has it right that by limiting the claim the way that Pulse is trying to do would improperly import limitations into the claim that just aren't there. [00:11:22] Speaker 02: And obviously, it's pretty much black letter law that that can't be done. [00:11:30] Speaker 02: I'd also like to point out that the patent, you know, we're looking at the figures. [00:11:34] Speaker 02: The pulse is relying on the figures to say that the only way this can be read is for the effectively curved portion to mean approximately 90 degrees. [00:11:43] Speaker 02: But the patent itself expressly states that the embodiments that pulse refers to [00:11:48] Speaker 02: are not the only embodiments described by the invention, or that the invention is supposed to cover. [00:11:56] Speaker 02: And I point the court to Appendix 820, which is a patent, Column 19, beginning around Line 18, where it says, this description is in no way meant to be limited, but rather should be taken as a lesson. [00:12:12] Speaker 00: Well, that language appears in every single patent, doesn't it? [00:12:16] Speaker 02: It does, but it has to have meaning. [00:12:18] Speaker 02: And I think in this particular case, it definitely has meaning. [00:12:22] Speaker 02: So I mean, I think it's important language. [00:12:25] Speaker 02: And I think it emphasizes the fact that the limitations that Paul is really relying on to give the claim term this narrow interpretation are not the only thing that should be considered, that the claims themselves are broader than that. [00:12:40] Speaker 00: But let me turn my question to your friend on the other side around. [00:12:43] Speaker 00: I mean, if this were infringement, I mean, [00:12:47] Speaker 00: Surely you'd be saying there's nothing in this patent except showing a 90-degree curve, right, or a 90-degree switchback. [00:12:56] Speaker 00: And so we should allow the broader claiming. [00:13:03] Speaker 02: We didn't argue the infringement part of this case. [00:13:06] Speaker 02: I mean, I suppose we would be trying to narrow the claims. [00:13:09] Speaker 02: But I really don't see how you can look at this particular patent and say that the only [00:13:16] Speaker 02: allowed is approximately 90 degrees. [00:13:19] Speaker 02: It doesn't say that. [00:13:20] Speaker 02: There's no language in this specification that would support that. [00:13:23] Speaker 02: If I were to argue it, I would probably be wrong and should lose, because the language is not there. [00:13:31] Speaker 02: And so while I understand your honor's question, I don't think that that would be the case here. [00:13:39] Speaker 01: Could I turn you to the desired effect language, the argument [00:13:46] Speaker 01: here, of course, is that desired effect, yes, standing alone is ambiguous. [00:13:54] Speaker 01: But here, the claim language of 1720 and 21 seems to define what the desired effect is, which is approximately 90 degrees. [00:14:06] Speaker 01: So why doesn't that bring clarity to something that would otherwise be ambiguous? [00:14:13] Speaker 02: Oh, two points, Judge Dyke. [00:14:17] Speaker 02: One is, and I think to follow up on the question you asked, Pulse's counsel, is if that's the case, why include the term desired effect at all? [00:14:26] Speaker 02: It doesn't add anything, but makes the language ambiguous and indefinite. [00:14:33] Speaker 02: So if it could be understood without the terms, as you know, patent claims every term is supposed to be given weight. [00:14:43] Speaker 02: And so if these terms don't add anything, why are they there? [00:14:47] Speaker 02: They just add confusion. [00:14:50] Speaker 00: Well, just because they're a separate language doesn't mean it's a separate term. [00:14:54] Speaker 00: I mean, a desired effect could be read, as Judge Dyke pointed out, in conjunction with the rest of that phrase. [00:15:01] Speaker 02: Yes, Your Honor. [00:15:02] Speaker 02: And if that is actually what the situation was in the Ropar case, which we cite in our brief, [00:15:10] Speaker 02: The term desired effect there was found by the court to be ambiguous, and the terms that it was modifying were understood. [00:15:18] Speaker 02: And so by adding the term desired effect, the whole phrase may have had meaning, but the court still found it to be ambiguous because the use of the term desired effect didn't add anything and added confusion. [00:15:33] Speaker 02: In many cases where a phrase such as desired effect is used, the subsequent language is understood, but it may still be, the whole phrase may still be indefinite because of the addition of the superfluous language. [00:15:52] Speaker 00: What about the colloquy with Judge Turner that polls had in discussing desired effect? [00:15:59] Speaker 02: Well, I think that's exactly the point Judge Turner was getting at, and I think he got it right. [00:16:03] Speaker 02: I think he used the phrase that it was a nonce term, and I think he was trying to get some understanding of why the term was used in the first place, as Judge Dyke was, and I don't think he got a satisfactory answer. [00:16:16] Speaker 02: I think he was, you know, he realized that the addition of the language desired effect didn't add anything, and it was pointed out. [00:16:28] Speaker 02: If Pulse's goal was to make this a little broader, it could have used other language to do that. [00:16:35] Speaker 02: There are many ways to draft a claim such as that without using a phrase such as desired effect, which calls into question subjectivity. [00:16:45] Speaker 02: You know, what are the meets and bounds of the patent if a person of skill in the art is trying to determine what a desired effect is? [00:16:53] Speaker 02: What is infringement? [00:16:54] Speaker 02: If somebody designed a [00:16:56] Speaker 02: an apparatus that was similar but the desired effect was not to achieve that particular purpose was their infringement. [00:17:05] Speaker 02: If you have to look into the intent of the designer of the alleged infringing product, it's very difficult to really determine what the meets and bounds of the claims are. [00:17:21] Speaker 04: Mr. Swanson said, Judge Lynn, could you direct your attention to your cross-appeal for a minute before your time is up? [00:17:29] Speaker 02: Yes, I would, Judge Lynn. [00:17:30] Speaker 02: Thank you. [00:17:31] Speaker 02: I was going to turn to that. [00:17:31] Speaker 02: I think our position with respect to the cross-appeal is that the board cited no evidence in reaching its decision that claims 22 and 23 should be allowed. [00:17:45] Speaker 02: There are no citations to the record, but underlying that, you know, the [00:17:51] Speaker 02: legal point that the board relied on, that there was only a logical premise and not a true motivation to combine, I think is belied both by the record, because Dr. Letty talked about why a person of skill and the art would be motivated to combine the Hughes and Kahn references with respect to claims 22 and 23. [00:18:17] Speaker 02: But also, there's no explanation about what a logical premise is and why it would be inadequate in this particular case. [00:18:26] Speaker 02: And so I think the board got it wrong on that particular issue. [00:18:32] Speaker 01: Back up a moment, because I read what was said about proposed claims 22 and 23. [00:18:41] Speaker 01: And I see a lot of language about [00:18:45] Speaker 01: someone field could do this or could do that, which, of course, isn't sufficient to provide a motivation to combine. [00:18:52] Speaker 01: Is there any place that your expert says that somebody would have done it other than the sentence quoted by the board? [00:19:04] Speaker 02: Yes, Your Honor. [00:19:05] Speaker 02: I believe Dr. Levy in his supplemental declaration, which is paragraph 23 through 29, [00:19:14] Speaker 02: What appendix are we talking about here? [00:19:17] Speaker 02: Beginning on page 1394 of the appendix, Dr. Levy discusses at some length why Conn and Hughes can be combined. [00:19:31] Speaker 01: That's exactly the problem I'm talking about. [00:19:34] Speaker 01: Just look at paragraph 23, that the personal skill of the art could modify Conn. [00:19:40] Speaker 01: Where does he say that someone of skill in the art would do it and give a reason why they would do it? [00:19:54] Speaker 02: Well, I think, I mean, could and would. [00:19:57] Speaker 02: They are different words. [00:19:59] Speaker 02: I understand that. [00:20:00] Speaker 02: And they go to perhaps what a person of skill in the art would actually be able to do. [00:20:06] Speaker 02: But I think in this instance, the fact that he says they [00:20:10] Speaker 02: person of skill in the art could be motivated to do it is sufficient, because he's talking about how Khan and Hughes contain, you know, are of the same basic, cover the same art, and they cover this, you know, the same types of circuitry and other things. [00:20:32] Speaker 02: So I think using the word could is sufficient in this case. [00:20:43] Speaker 02: And if there are no further questions, I think I'll just reserve whatever time I have left for rebuttal. [00:20:50] Speaker 01: Okay. [00:20:52] Speaker 01: Any other questions? [00:20:52] Speaker 01: Mr. Schloss, thank you. [00:20:54] Speaker 01: Mr. Carr? [00:20:57] Speaker 03: Yes, Your Honor. [00:20:58] Speaker 03: Three points. [00:21:00] Speaker 03: We haven't talked about the prior art yet. [00:21:03] Speaker 03: The biggest issue with the board's decision [00:21:07] Speaker 03: was that if we look again at claim six that requires the substrate to be orthogonal and vertical within the housing, none of the four references discussed by the board, Conn, Hughes, Loudermilk, and Shear include a substrate that is vertical and orthogonal as claimed in claim six. [00:21:31] Speaker 03: And also to go back to your honor's earlier question about [00:21:35] Speaker 03: having the 80-degree curve, the patent explains that a reduced labor cost is important to the invention. [00:21:45] Speaker 03: So the smaller size that effectively uses efficient use of the interior volume would necessitate the 90 degrees in all the claims, including claims fixed, where the modular plugs must be inserted orthogonal to the front face [00:22:05] Speaker 03: And there's no other possible angle for the claim first conductors than approximately 90 degrees. [00:22:13] Speaker 03: And then the second point on desired effect in Pulse's yellow brief on page 49, Pulse explains that in Nautilus and Datamize and also in district court case mass engineer design, that the desired language has been found to not be indefinite when [00:22:33] Speaker 03: it's used in an objectively verifiable way as it is here. [00:22:38] Speaker 01: My understanding is that you're saying that that language does mean something. [00:22:46] Speaker 01: It isn't just referring to the approximately 90-degree language, that it has some meaning over and above that. [00:22:57] Speaker 01: and somehow brings in another concept of approximately. [00:23:01] Speaker 01: Did I understand you correctly about that? [00:23:06] Speaker 03: Your Honor, it's tied to the entire claim, but it's mostly tied to the first conductor and the approximately 90 degrees. [00:23:15] Speaker 01: No, but that's a desired effect. [00:23:17] Speaker 01: Wait, you're not answering my question. [00:23:19] Speaker 01: Earlier, I think perhaps in response to a question by Judge Lynn, you said, no, this language is not meaningless. [00:23:26] Speaker 01: It imports another concept of approximately into the claim. [00:23:32] Speaker 01: Is the language meaningless, or is it not meaningless? [00:23:37] Speaker 03: Your Honor, the language is not meaningless. [00:23:39] Speaker 03: It goes to the approximately 90 degrees, that the desired effect does not have to be exactly 90 degrees, but it needs to be approximately 90 degrees. [00:23:49] Speaker 04: Well, Mr. Carr, this is Judge Lynn. [00:23:53] Speaker 04: I mean, the claim says approximately already. [00:23:58] Speaker 04: After the language in question here, it says curve by approximately 90 degrees. [00:24:03] Speaker 04: So the approximate concept is already explicitly set forth in the claim. [00:24:12] Speaker 03: Correct, Your Honor. [00:24:13] Speaker 03: It's describing the first conductors, the bend of the first conductors, [00:24:19] Speaker 03: as the curve approximately turns 90 degrees. [00:24:25] Speaker 04: I have another question. [00:24:28] Speaker 04: Is the desired effect produced by the approximately 90 degree curvature, or is the desired effect the fact of curving the wires by 90 degrees? [00:24:49] Speaker 04: In other words, the desired effect could refer to the fact of the curvature, or it could refer to some result that's produced by the fact of the 90-degree curvature. [00:25:08] Speaker 04: And I'm not sure which one it means. [00:25:14] Speaker 03: Your Honor, it refers to when the connector [00:25:19] Speaker 03: enters the recess of the housing, those conductors, the desired effect of those conductors is that they approximately curve 90 degrees. [00:25:31] Speaker 00: So it's the fact of their curvature? [00:25:34] Speaker 03: Correct, Your Honor. [00:25:35] Speaker 00: Okay. [00:25:37] Speaker 03: And the second point on the prior art is neither con [00:25:43] Speaker 03: ladder milk or shear have 90 degree curvature of the conductors. [00:25:47] Speaker 03: The ultimate change in direction is that these conductors run in straight lines. [00:25:54] Speaker 03: So none of the prior art is even close to having a 90 degree turn other than this external connector of hues [00:26:03] Speaker 03: which is a sideways connector that's external. [00:26:07] Speaker 03: It doesn't have any substrate within the housing that is orthogonal or vertical. [00:26:14] Speaker 01: Okay. [00:26:14] Speaker 01: Mr. Carr, I think we're about out of time unless one of my colleagues has further questions. [00:26:20] Speaker 01: No. [00:26:21] Speaker 03: Thank you, Your Honor. [00:26:22] Speaker 01: And Mr. Schloss, I think you have no rebuttal time because the cross field wasn't discussed by Mr. Carr. [00:26:28] Speaker 02: Yes, I understand, Your Honor. [00:26:30] Speaker 01: I agree. [00:26:30] Speaker 01: Thank you. [00:26:31] Speaker 01: Thank you. [00:26:32] Speaker 01: Thank you, Mr. Carr. [00:26:33] Speaker 01: Thank you, Mr. Schloss. [00:26:34] Speaker 01: The case is submitted.