[00:00:01] Speaker 01:
Good morning, everyone.

[00:00:01] Speaker 01:
The first auger case this morning is number 21, 1857, SCON LLC against Ashley Furniture Industries.

[00:00:15] Speaker 01:
Mr. Holohan.

[00:00:19] Speaker 03:
Thank you, Judge Newman.

[00:00:20] Speaker 03:
I'm going to please the court.

[00:00:22] Speaker 03:
Would you prefer that I remove the mask or?

[00:00:24] Speaker 01:
No, remove it.

[00:00:36] Speaker 03:
Your Honor, this is a narrowly drawn appeal, all the more so because I'm the only one here.

[00:00:42] Speaker 03:
The case below involved a very scant two-page order, effectively, declaring that all claims of the subject patent were invalid for lack of written description as to a particular claim term.

[00:01:01] Speaker 02:
And this went off on summary judgment, right?

[00:01:05] Speaker 02:
Yes, Your Honor.

[00:01:05] Speaker 02:
So where's the material dispute of fact over whether this discloses, or whatever the term is, the relatively hoarse zonal bottom?

[00:01:15] Speaker 02:
Point to me in the patent or the specification exactly what facts support your view of this.

[00:01:23] Speaker 02:
Your Honor, that the patent discloses a relatively flat bottom.

[00:01:29] Speaker 03:
Your Honor, as argued in our brief, we would point to figures 58A through C, along with the context and the personal ordinary skill in the art.

[00:01:42] Speaker 02:
So these don't show up the bottom at all?

[00:01:45] Speaker 02:
Correct, Your Honor.

[00:01:46] Speaker 02:
And so what else do you have?

[00:01:50] Speaker 03:
We have the top, and we have the fact.

[00:01:52] Speaker 02:
But the top's the top.

[00:01:53] Speaker 02:
The bottom could be entirely different than the top, right?

[00:01:56] Speaker 03:
No, because the bottom has to be complementary to the top in order to successfully mate.

[00:02:02] Speaker 03:
And the district court acknowledged that.

[00:02:03] Speaker 02:
What support do you have for that?

[00:02:05] Speaker 02:
It has to be complementary in the sense that it has to fit into it.

[00:02:09] Speaker 03:
Yes, Your Honor.

[00:02:09] Speaker 02:
But does it necessarily have to be flat on the bottom?

[00:02:13] Speaker 02:
Couldn't it be hollow?

[00:02:17] Speaker 02:
If it was hollow,

[00:02:19] Speaker 02:
Would it still fit together?

[00:02:20] Speaker 03:
It wouldn't fit in a full complementary fashion to the substantially horizontal top.

[00:02:25] Speaker 03:
How do we know that?

[00:02:27] Speaker 03:
Well, the district court itself found that there must be a substantially horizontal area in the bottom surface for the mating to occur properly.

[00:02:35] Speaker 03:
That was in the district court's order.

[00:02:37] Speaker 02:
I'm not asking about what the district court said.

[00:02:39] Speaker 02:
I'm asking where in the patent and the specification there's evidence for that.

[00:02:44] Speaker 03:
Well, I think even if it were a hollow, if there were a hollow portion to it, the actual portion that would mate to the top would have to be substantially horizontal.

[00:02:55] Speaker 03:
And I think the other thing to consider is that we're dealing with a simple, predictable art here where the written description requirement is less rigid.

[00:03:03] Speaker 02:
I know, but you keep dancing around pointing to me to any evidence beyond these drawings, which don't show a bottom at all.

[00:03:12] Speaker 02:
So look, I mean, I understand.

[00:03:14] Speaker 02:
And it does seem common sense that this is the most likely way it would work.

[00:03:18] Speaker 02:
But I'm not sure that you have disclosure if it's just obvious rather than actually showing it.

[00:03:27] Speaker 03:
Your Honor, I believe you'll find in the case law that I agree that the terminology might not be if it's obvious.

[00:03:33] Speaker 03:
But I think that the case law is clear, and we've cited it in our brief, that there's no in-hoc verbal requirement.

[00:03:41] Speaker 03:
requirement that there's an express and explicit disclosure of every iteration of the claim.

[00:03:46] Speaker 03:
And you can consider the level of skill in the art and what a skilled artisan would assume.

[00:03:50] Speaker 02:
And I think that the argument in the... Where is the evidence that a skilled artisan would know to put a flat bottom on this rather than just a hollow bottom?

[00:04:00] Speaker 02:
Like if you had less material, it would be cheaper, right?

[00:04:03] Speaker 02:
It wouldn't fit as well.

[00:04:04] Speaker 02:
How do we know that?

[00:04:09] Speaker 02:
Evidence.

[00:04:10] Speaker 02:
I mean this is what your problem is.

[00:04:12] Speaker 02:
There's nothing in the specification that says any of this.

[00:04:16] Speaker 02:
You're asking us to use common sense, and I can look at those diagrams and use common sense, but I'm not a skilled artisan, and you're not a... Well, maybe you are.

[00:04:23] Speaker 02:
I assume you're not a skilled artisan.

[00:04:25] Speaker 02:
There's nothing in the specification that says this is a flat horizontal bottom.

[00:04:30] Speaker 02:
What if there was no... All there was on the bottom was the round part with the indentation and a very slight lip like this much.

[00:04:39] Speaker 02:
Is that substantially horizontal bottom or whatever the term is?

[00:04:43] Speaker 03:
I believe as a district court fan, that would be a substantially horizontal bottom area, and that would be the surface, and that would give you your horizontal surface.

[00:04:50] Speaker 02:
Does substantially horizontal mean that it doesn't have to have any structure at all?

[00:04:55] Speaker 02:
It can be just, it will fit flush because there's nothing there?

[00:04:59] Speaker 02:
That can't be what it means.

[00:05:01] Speaker 03:
Well, the district court did

[00:05:04] Speaker 02:
Again, can you point to me in the specification anything beyond these drawings you're relying on?

[00:05:10] Speaker 03:
The drawings are all the specifications.

[00:05:11] Speaker 03:
Within the four corners of the specification, there's the drawings and there's the claim language.

[00:05:15] Speaker 00:
Council, when I look at the drawings, let's take a look at figure 58A and also with B and C, and I see that the bottom part there, you know, the top part has that what appears to be a bolt, right?

[00:05:30] Speaker 00:
And then down at the bottom,

[00:05:32] Speaker 00:
I see that round circle and everything.

[00:05:35] Speaker 00:
That part is part of the image.

[00:05:38] Speaker 00:
This is an actual image from the specification.

[00:05:41] Speaker 00:
Is that right?

[00:05:42] Speaker 03:
Yes, your honor.

[00:05:43] Speaker 00:
So looking at figure 58B, in order to make the bed frame higher off the ground, is it the case that I would lift up 58B and place it on top of 58A?

[00:05:56] Speaker 00:
And that would give me greater height?

[00:05:59] Speaker 03:
I believe that's one way to do it, your honor.

[00:06:02] Speaker 03:
I think there might also be embodiments for the mod.

[00:06:04] Speaker 03:
The top module was, I'm sorry.

[00:06:07] Speaker 03:
I believe there also might be embodiments where the top module does not also act as a bottom module, but I think that is one way to do it.

[00:06:13] Speaker 00:
Well, how do you make the bed higher?

[00:06:15] Speaker 00:
You stack these on top of each other, right?

[00:06:18] Speaker 03:
You take two modules and you stack them on top of each other.

[00:06:21] Speaker 00:
So for the frame to, to adjust and to hold the weight, it would have to,

[00:06:28] Speaker 00:
Somehow they'd have to it have to sit on top of let's say for example 58 C would sit on top of 58 B and You could have a frame that's higher than if you only use 58 a alone Yes, sir Is there anything in the specification that suggests you stack I mean all these figures look like they have a base and

[00:06:58] Speaker 02:
right we don't have much to go on here but they all look like they have a protruding base at the bottom is there anything that suggests you stack that based on top of another where you stack different components middle components to make them bigger i don't recall anything specific it's not just in fifty eight a where it's showing a stacking it doesn't show a separate base on the second component right that's correct your honor i'm not aware of seeing here any specific tax that would describe

[00:07:27] Speaker 03:
taking a component that has that lift base and stacking it on top of another component.

[00:07:33] Speaker 03:
As I said, I think there are embodiments.

[00:07:36] Speaker 03:
We could do it that way.

[00:07:37] Speaker 02:
We could have a standalone... Where in the specification does it say you could stack 58A or 58B on top of 58C or vice versa?

[00:07:45] Speaker 03:
Your Honor, I'm not aware of anything.

[00:07:47] Speaker 02:
But you just said there were embodiments.

[00:07:49] Speaker 02:
If there were embodiments, they should be in the specification.

[00:07:51] Speaker 03:
There are embodiments based on the claim language and how that would be understood.

[00:07:54] Speaker 03:
And it played an ordinary meaning of the various terms in the claims.

[00:08:00] Speaker 00:
When we're looking at substantially horizontal, just horizontal in relation to what?

[00:08:12] Speaker 03:
Well, I think if you look at the top surface in the components in figure 58, you can see it's horizontal, I guess.

[00:08:21] Speaker 03:
If you were envisioning it as a fully formed piece of furniture, it would be horizontal with respect to the floor.

[00:08:27] Speaker 03:
The floor would be horizontal.

[00:08:28] Speaker 03:
The leg would sit on the floor.

[00:08:30] Speaker 03:
The top surface would also be horizontal, parallel to the floor.

[00:08:33] Speaker 00:
That's what I thought, but the specification, the written description doesn't say that.

[00:08:39] Speaker 03:
I'm not aware of any explicit definition of substantially horizontal specification.

[00:08:46] Speaker 03:
I think the district court did address an indefiniteness argument with respect to that term and found that it was not indefinite.

[00:08:53] Speaker 03:
It would be clear to a person of ordinary skill in the art.

[00:08:56] Speaker 03:
And in that instance, the district court did discuss the different fields, you know, substantially horizontal and an electronic component might be different.

[00:09:06] Speaker 00:
Would the procedure look at this and say it's horizontal in relation to the top?

[00:09:10] Speaker 00:
Because the bottom has to fit on the top at some point in order for the invention to work.

[00:09:17] Speaker 03:
I'm sorry, Your Honor.

[00:09:17] Speaker 03:
I may have misunderstood your question.

[00:09:18] Speaker 03:
I thought you were asking what substantially horizontal meant.

[00:09:20] Speaker 00:
Yeah, I did.

[00:09:21] Speaker 00:
I did.

[00:09:21] Speaker 00:
But I'm moving on now to something else.

[00:09:24] Speaker 03:
Substantially horizontal on the bottom

[00:09:26] Speaker 03:
Yes.

[00:09:28] Speaker 03:
Part of the definition of that would be substantially horizontal vis-a-vis, I'm sorry, the bottom of the top would be substantially horizontal with respect to the top of the bottom because they must... Yes, because otherwise the invention would not work.

[00:09:43] Speaker 03:
Right.

[00:09:43] Speaker 03:
They wouldn't mate together.

[00:09:45] Speaker 02:
And it isn't court.

[00:09:46] Speaker 02:
But it can't have ridges or something like that.

[00:09:48] Speaker 03:
Yes, Your Honor, and actually that's.

[00:09:49] Speaker 02:
But it still could be hollow.

[00:09:50] Speaker 02:
This is my problem.

[00:09:52] Speaker 02:
Does the substantially horizontal just mean there can't be anything that disrupts the mating, or does it actually have to be like the top, a piece that is substantially horizontal?

[00:10:03] Speaker 02:
And how do we know that from looking at it?

[00:10:05] Speaker 02:
Look, I get it common sense you look at this and you think, well, the tops look like this to make the bottoms must look pretty similar.

[00:10:12] Speaker 02:
But I think you conceded there's nothing that shows us the bottom.

[00:10:16] Speaker 02:
There's nothing that describes the bottom.

[00:10:18] Speaker 02:
So you're asking us to infer from this that a skilled artisan would know that you have possession of a bottom that looked like the top.

[00:10:28] Speaker 02:
And how do we know that?

[00:10:31] Speaker 02:
Are you saying that there's no possible way that this could be not

[00:10:36] Speaker 02:
a horizontal bottom?

[00:10:38] Speaker 03:
No, that's not what I'm saying.

[00:10:40] Speaker 03:
In fact, if you read the district court's opinion, there were some prior art distinctions that the district court pointed to.

[00:10:45] Speaker 03:
There was prior art that had a grooved orientation and prior art that had a notched orientation.

[00:10:54] Speaker 03:
So if you were to put particular, beyond the bolt that we see here, if you were to put particular shaping or molding within the surface that would

[00:11:05] Speaker 03:
and use that to make the two pieces complementary, that would not be substantially horizontal just because of the representations made during prosecution.

[00:11:12] Speaker 02:
Well, sure.

[00:11:13] Speaker 02:
But you're still not answering my question.

[00:11:17] Speaker 02:
I don't mean to get hung up on this hollow idea, but it would work, right, if it was hollow.

[00:11:23] Speaker 02:
If there was no bottom whatsoever and all you had was the outer frame that sat down inside of it, of that, it would work, wouldn't it?

[00:11:35] Speaker 03:
You could fit the legs together if the top were hollow, but I think the... The bottom, not the top.

[00:11:41] Speaker 02:
You've obviously shown that the top is not.

[00:11:43] Speaker 03:
I meant the top piece.

[00:11:45] Speaker 02:
Right.

[00:11:45] Speaker 02:
You mean the bottom of the top piece.

[00:11:47] Speaker 03:
Yes.

[00:11:47] Speaker 03:
If the top piece were totally hollow, you could fit them together.

[00:11:50] Speaker 03:
However, that would render that substantially horizontal top surface of the bottom piece, which is undisputed, completely superfluous.

[00:11:59] Speaker 03:
Why would that be there

[00:12:00] Speaker 03:
if not to support something, a complementary piece on the thing that sits on top of it.

[00:12:06] Speaker 03:
It's just extra, you know, that would be more expensive, that would be less reliable.

[00:12:10] Speaker 02:
So I really think that if, and again, just going back to the... I mean, you're probably okay because this is a summary judgment thing, and it seems like there could be a dispute of fact here, but I mean,

[00:12:24] Speaker 03:
Yes, we're not asking the court to rule in our favor on the merits on this issue.

[00:12:30] Speaker 03:
We're simply asking the court to recognize that the district court improperly reached a factual issue as a result of factual dispute against the nonmoving party at summary judgment.

[00:12:39] Speaker 00:
Is there an outstanding counterclaim in this case?

[00:12:42] Speaker 03:
Your Honor, so the case has

[00:12:45] Speaker 03:
All of the affirmative claims were dismissed with prejudice, and all of Ashley's claims were dismissed without prejudice.

[00:12:52] Speaker 03:
So as it stands now, there's no pending claims of district court.

[00:12:56] Speaker 00:
So you would like us not to remand.

[00:12:59] Speaker 00:
Is that true?

[00:12:59] Speaker 03:
Well, I think you would vacate.

[00:13:02] Speaker 03:
If you remanded, the district court would say, well, the case is dismissed, pursued a settlement, and then just dismissed the case.

[00:13:09] Speaker 01:
Let's talk about this procedure.

[00:13:12] Speaker 01:
Let's say that

[00:13:13] Speaker 01:
You prevail here on the summary judgment on the indefiniteness.

[00:13:18] Speaker 01:
Then what would happen would be a remand.

[00:13:22] Speaker 01:
We would vacate the summary judgment and remand.

[00:13:26] Speaker 01:
However, as I see the record, you no longer have a case of controversy.

[00:13:32] Speaker 01:
Is that right?

[00:13:32] Speaker 01:
It's settled.

[00:13:33] Speaker 01:
And they've agreed not to oppose.

[00:13:35] Speaker 01:
And so there is no controversy.

[00:13:39] Speaker 01:
And you wouldn't get from us.

[00:13:42] Speaker 01:
or from the district court, an adjudication of validity, the most you could hope for would be dismissal, is that right?

[00:13:51] Speaker 01:
Or voluntary dismissal?

[00:13:52] Speaker 01:
Or what?

[00:13:53] Speaker 03:
It would be vacature of the district courts from a decision order.

[00:13:56] Speaker 03:
And on the case of controversy Article 3 jurisdiction, I thought that might come out.

[00:14:02] Speaker 03:
There is a case

[00:14:03] Speaker 03:
Gerritsen v. Shirai, and that's 979, F.

[00:14:06] Speaker 03:
2nd, 1524.

[00:14:10] Speaker 03:
That was a case where, similar to here, the appellee had not participated in the appeal.

[00:14:16] Speaker 03:
This court proceeded to reach the merits of the dispute.

[00:14:20] Speaker 03:
And if you look at page 1527 of that opinion, there's a few cases, including a Supreme Court case, where that also happened.

[00:14:28] Speaker 03:
This court certainly retains jurisdiction to resolve this appeal, but I agree that if we prevail and there's vacature of the district court's order, there will no longer be any... But you've conceded non-infringement as well.

[00:14:40] Speaker 03:
Excuse me?

[00:14:40] Speaker 00:
Is there a concession as to non-infringement?

[00:14:45] Speaker 03:
There was a covenant not to sue.

[00:14:48] Speaker 03:
I'm not aware that there was an explicit concession non-infringement.

[00:14:52] Speaker 02:
So you just want us to get rid of the invalidity ruling and have your patent be potentially assertable again.

[00:14:59] Speaker 02:
But the case, this case is going to get dismissed for whatever reason as moot or settled or when it goes back.

[00:15:06] Speaker 02:
That's correct, Your Honor.

[00:15:10] Speaker 02:
And somebody else is going to have to resolve this issue again.

[00:15:13] Speaker 03:
If you assert it.

[00:15:16] Speaker 03:
If we find another infringer, yes, that will come back.

[00:15:20] Speaker 03:
It should be found, but hopefully in that case it'll be resolved by the jury and not the court, which I think is the proper approach here.

[00:15:27] Speaker 03:
Thank you, Your Honors.

[00:15:29] Speaker 01:
Any more questions?

[00:15:32] Speaker 03:
No.

[00:15:34] Speaker 03:
Thank you very much for your time, Your Honor.

[00:15:35] Speaker 01:
Thank you, Your Counsel.

[00:15:36] Speaker 01:
The case is taken under submission.