[00:00:00] Speaker 04:
OK, the next appeal we're going to hear argument on is appeal number 21-2370, Grace Instrument Industries versus Chandler Instruments Company and Ametek Incorporated.

[00:00:13] Speaker 04:
Mr. Laney?

[00:00:15] Speaker 02:
Yes, Your Honor.

[00:00:16] Speaker 04:
You're arguing today for Grace Instrument?

[00:00:18] Speaker 04:
Yes, Your Honor.

[00:00:19] Speaker 04:
OK.

[00:00:20] Speaker 04:
And you've reserved five minutes of time, right?

[00:00:23] Speaker 04:
Yes, Your Honor.

[00:00:23] Speaker 02:
OK.

[00:00:24] Speaker 02:
My apologies for the delay, Your Honor.

[00:00:28] Speaker 02:
Please go ahead.

[00:00:31] Speaker 02:
May it please the court.

[00:00:32] Speaker 02:
Good morning, Your Honors.

[00:00:33] Speaker 02:
Thank you for having us here.

[00:00:33] Speaker 02:
It's so nice to be back in person again.

[00:00:39] Speaker 02:
We're here to flip two claim constructions from the district court.

[00:00:43] Speaker 02:
One is the enlarged chamber term, and one is the driving means term.

[00:00:47] Speaker 02:
I've got three major points I'd like to leave with you all today for each term, if I do nothing else.

[00:00:53] Speaker 02:
So I'll start with the enlarged chamber term.

[00:00:56] Speaker 02:
The good news is your eyes get a break from that tiny writing the PTO puts in the patents that we all have to struggle and read.

[00:01:05] Speaker 02:
You actually don't even have to look at the 877 patent.

[00:01:10] Speaker 02:
You can look straight at the district court's opinion.

[00:01:13] Speaker 02:
You can look on page 10, second paragraph.

[00:01:15] Speaker 02:
The district court assumed that a person of ordinary in skill in the art, the 877 patent tells them the enlarged chamber must be large enough to fill that compression void to make sure there's no mixing in that bottom chamber.

[00:01:36] Speaker 02:
By saying large enough, of course, that's a baseline.

[00:01:39] Speaker 02:
It must be that large, but also could be bigger.

[00:01:42] Speaker 02:
And if you look at all this court's guidance, Nautilus II, Mentor Graphics, Sonics Tech, they all say, if you give that type of parameter in the specification, you give an example of what Lucida would understand it can go by, that's enough of a baseline.

[00:01:57] Speaker 01:
Has the district court defined the level of skill and the art in this case as of yet?

[00:02:01] Speaker 02:
We have an expert declaration that defines it, but that was not adopted into the court's holding.

[00:02:11] Speaker 02:
So right there, Your Honor, you don't even have to look at the patent.

[00:02:14] Speaker 02:
That is one way the district court's holding must be overturned.

[00:02:18] Speaker 02:
So that's point one.

[00:02:19] Speaker 02:
Point two, the district court said, well, it doesn't say why the enlarged chamber is different than the prior art.

[00:02:26] Speaker 02:
Because it doesn't say that,

[00:02:29] Speaker 02:
It must be an indefinite term of degree.

[00:02:31] Speaker 02:
Now, there are cases, the Hong Dong case we cite in our briefs that say that is one way to define a term of degree, how it's different than the prior art.

[00:02:39] Speaker 02:
It's not the exclusive way.

[00:02:41] Speaker 02:
It's not the only way.

[00:02:41] Speaker 02:
But it's one way you can do it.

[00:02:43] Speaker 02:
And the district court was just flat wrong with that.

[00:02:46] Speaker 02:
Our patent says in seven different places.

[00:02:50] Speaker 02:
what the problem with the prior art was and how we fixed it.

[00:02:54] Speaker 02:
And if you look in the first column, you look in the descriptions of all the preferred embodiments, it says the problem with the prior art chambers is they weren't big enough.

[00:03:02] Speaker 02:
They didn't hold enough fluid.

[00:03:03] Speaker 02:
So these machines get into these enormous pressures, 30,000 psi.

[00:03:08] Speaker 04:
Would you say that your specification defines the claim term enlarged chamber?

[00:03:13] Speaker 02:
It defines it in the context of what it must be able to do, and how big it needs to be.

[00:03:19] Speaker 04:
The term enlarged chamber shows up in only a single sentence, pretty much at the tail end of the written description.

[00:03:26] Speaker 04:
The tail end sentence doesn't say enlarged chamber, and here's what we mean by large chamber.

[00:03:35] Speaker 02:
Yes, Your Honor.

[00:03:37] Speaker 02:
In large chamber, if we look at the claims and we say, what is the large chamber, the claim specifically defines it as the area between the top section, between the bottom section.

[00:03:48] Speaker 02:
That's where it is.

[00:03:49] Speaker 02:
So we can now go look at the preferred embodiment and the other three example embodiments.

[00:03:54] Speaker 02:
Where is that area?

[00:03:55] Speaker 02:
It's that combination of 45 plus 49.

[00:03:58] Speaker 02:
So by knowing in the claims where it is, we can now look at the preferred embodiments and see that.

[00:04:04] Speaker 04:
And when they describe... How do we know that the preferred embodiments aren't just preferred embodiments as opposed to being an actual definition of what it means to be in a large chamber?

[00:04:17] Speaker 02:
Because we had an expert go through in very great detail that

[00:04:21] Speaker 02:
a pusita would see large enough, see this intermediate area, he would understand that is the enlarged portion that needs to be large, that needs to be big enough.

[00:04:31] Speaker 02:
Of course, large enough and enlarged are synonyms.

[00:04:35] Speaker 02:
They mean the same thing.

[00:04:36] Speaker 02:
And our expert went through in great detail with the patent.

[00:04:39] Speaker 04:
He said, hey, this is... This gets into a very tricky question, which is to what part of this exercise is a question of law versus a question of fact.

[00:04:50] Speaker 04:
I know that when it comes to reading intrinsic evidence, usually in our case law, we say that's a question of law.

[00:04:59] Speaker 04:
It's up to us as a court to read this fully integrated legal instrument and try to discern what the meaning of it is.

[00:05:11] Speaker 04:
You're telling us that you had an expert comment on the meaning of the specification.

[00:05:18] Speaker 04:
And there are times where that is appropriate.

[00:05:21] Speaker 04:
I'm just trying to figure out if this particular instance is one of those instances.

[00:05:25] Speaker 02:
Well, the district court completely ignored our expert.

[00:05:28] Speaker 04:
I understand that.

[00:05:28] Speaker 04:
The question I'm putting to you is, when is it appropriate for an expert to

[00:05:37] Speaker 04:
be testifying as to the meaning of the patent, as opposed to that question really being a de novo legal exercise?

[00:05:48] Speaker 02:
Yes, Your Honor.

[00:05:48] Speaker 02:
If we look at the Phillips v. ADWH case, which is sort of what I look at as the primary claim construction.

[00:05:55] Speaker 02:
And I know everybody in here is familiar with it.

[00:05:57] Speaker 02:
But it starts off and says, the intrinsic record's best.

[00:06:01] Speaker 02:
We want to look at it first.

[00:06:03] Speaker 02:
But it also says,

[00:06:05] Speaker 02:
When trying to find out the meaning of terms in a patent, extrinsic evidence can be helpful and can be used.

[00:06:12] Speaker 02:
And I believe it gives examples of dictionary definitions and experts.

[00:06:16] Speaker 02:
And that's especially true in this case, where our expert, and you'll notice in the brief, they say, well, he didn't align with the patent, but they don't give any examples.

[00:06:25] Speaker 02:
He literally goes line by line in the patent,

[00:06:28] Speaker 02:
This is where my large chamber feature is.

[00:06:30] Speaker 02:
This is how it's discussed.

[00:06:32] Speaker 02:
This is what it's supposed to do.

[00:06:33] Speaker 02:
He gives two examples.

[00:06:36] Speaker 02:
He goes through two tests.

[00:06:37] Speaker 02:
He says, this is why the prior art doesn't have one.

[00:06:40] Speaker 02:
It allows that oil to seep into the bottom chamber.

[00:06:42] Speaker 02:
And then he also says, here is a current design that does have one.

[00:06:47] Speaker 02:
The chamber is big enough to prevent that seepage.

[00:06:49] Speaker 04:
I have just an ancillary question that's not directly related to what you're arguing, but I just want to understand

[00:06:57] Speaker 04:
Claim 1 talks about a top section of the pressure vessel, quote, filled with a pressurization fluid.

[00:07:07] Speaker 04:
And then it also talks about a bottom section, which I believe is, or a lower section that's filled with a test sample.

[00:07:20] Speaker 04:
Is it your understanding of this claim that it's not just directed to the device itself, but it's the device with the fluids contained inside the device?

[00:07:30] Speaker 02:
device.

[00:07:31] Speaker 02:
It's a apparatus claim, Your Honor.

[00:07:34] Speaker 04:
It is an apparatus claim, but it could also be a claim that's not just the container itself, but the container with these fluids inside the container in the locations that are designated in the claim.

[00:07:49] Speaker 02:
Yes, Your Honor.

[00:07:49] Speaker 02:
It has to be a machine capable of having those fluids inside these different chambers.

[00:07:55] Speaker 04:
OK, so when it says top section filled with fluid, it's not actually calling for a claim that's a combination of the structure with the fluid inside that section of the device?

[00:08:08] Speaker 02:
No, Your Honor, I believe it's calling for a

[00:08:11] Speaker 04:
That's the way it reads, just to let you know.

[00:08:14] Speaker 02:
Yes, Your Honor.

[00:08:14] Speaker 02:
So if you look at the first column, it talks about how they used the old prior art.

[00:08:19] Speaker 02:
They used to have this rubber seal.

[00:08:22] Speaker 04:
I understand everything about the prior art.

[00:08:24] Speaker 04:
I just want to get your understanding of this claim on the record.

[00:08:30] Speaker 02:
I'm sorry.

[00:08:31] Speaker 02:
Let me answer your question.

[00:08:32] Speaker 02:
I went too far off on attention.

[00:08:34] Speaker 02:
Let me get more direct for you.

[00:08:36] Speaker 02:
This is what's called an open top viscometer.

[00:08:38] Speaker 02:
I don't know if you can tell from the drawings, but the whole top screws off and pops off and then pops back on.

[00:08:45] Speaker 02:
And so for an open top viscometer, there is no seal in between.

[00:08:50] Speaker 02:
You just have those liquids in the top and liquids in the bottom.

[00:08:54] Speaker 04:
You first pour in the test sample.

[00:08:56] Speaker 04:
And it fills up the bottom section, and then it also fills up this intermediate chamber, what you refer to as the enlarged chamber.

[00:09:03] Speaker 04:
And then you put the pressurization fluid in.

[00:09:06] Speaker 04:
And the pressurization fluid with the closed cap starts applying a lot of pressure on the sample fluid underneath, compressing it down

[00:09:14] Speaker 04:
to a point where the test sample fluid is not completely filling the enlarged chamber anymore.

[00:09:22] Speaker 04:
The level is going down inside there.

[00:09:24] Speaker 04:
But for what you'd want is to ensure that the level of the sample fluid doesn't go below the enlarged chamber and down into the bottom section.

[00:09:36] Speaker 02:
That is exactly right, Your Honor.

[00:09:37] Speaker 02:
This patent is all about eliminating what it calls mixing.

[00:09:40] Speaker 02:
And I used the blender example in my reply that that bottom chamber

[00:09:44] Speaker 02:
The prior art way of doing things, they just said, hey, these fluids have different densities.

[00:09:49] Speaker 02:
So if you think of a blender as the bottom chamber, the blender can be full almost always with drilling fluid, and then it can have oil on the top, which is what they used to pressurize.

[00:10:00] Speaker 02:
Great.

[00:10:00] Speaker 02:
When that's sitting on your kitchen counter, those liquids will stay separated.

[00:10:04] Speaker 02:
Whippy, right?

[00:10:05] Speaker 02:
That's how they did it the old way.

[00:10:07] Speaker 02:
The problem is these machines have these big rotors that vvvvvv.

[00:10:11] Speaker 02:
So if you think about when you turn on your blender, now all of a sudden that oil is not just floating at the top, it's everywhere in a million pieces.

[00:10:19] Speaker 02:
So the idea behind this invention is the prior art did that old way.

[00:10:23] Speaker 02:
They relied on the different densities of the fluids to separate, and ours is saying no.

[00:10:31] Speaker 02:
Excuse me, I don't know if I'm getting into my little bubble time, but ours is saying no, you have to completely eliminate

[00:10:37] Speaker 02:
any oil from going there.

[00:10:39] Speaker 02:
The enlarged chamber must be big enough to eliminate any oil from going in there.

[00:10:44] Speaker 02:
And although the enlarged chamber is only used in that one section, Your Honor, I think there's so much

[00:10:52] Speaker 04:
First off, it says large enough, large enough, large enough, sufficiently large in multiple times through the specification.

[00:10:58] Speaker 03:
Just before we get to your friend, make sure I understand your answer to Judge Ken's question.

[00:11:02] Speaker 03:
Are you contending that an empty one of these machines could infringe before it's filled with fluid?

[00:11:10] Speaker 02:
You would need to fill it with fluid to test and see if it's capable.

[00:11:14] Speaker 03:
of perform capable also let's say i've done that testing and then i drain it and empty it completely and it's it's just sitting there so i know from my practice it's capable but now it's empty it's not filled with fluid and the claim requires filled with fluid do i am i infringing at that moment just based on the capability yes your honor

[00:11:33] Speaker 03:
even despite how your claims are written.

[00:11:36] Speaker 03:
Did your expert address that question?

[00:11:38] Speaker 02:
Well, and I'm into my rebuttal time, so I'll keep going if that's OK with you all.

[00:11:43] Speaker 02:
Your Honor, they raised the argument that this couldn't be an apparatus claim because of the way it's written.

[00:11:50] Speaker 02:
Because of containing fluids and stuff like that, it has to be the hybrid method apparatus, which makes it invalid.

[00:11:56] Speaker 02:
And the district court flatly rejected that.

[00:11:58] Speaker 02:
And they never appealed it.

[00:12:00] Speaker 02:
So respectfully, I don't think that issue is up on appeal.

[00:12:04] Speaker 02:
If it is, I would love an opportunity to.

[00:12:06] Speaker 04:
And we know you're in your rebuttal, but I just want you, and we'll give you a little more time on rebuttal,

[00:12:12] Speaker 04:
to just comment about the means for driving the rotor to rotate and just Get on the record so that you know, you're allowed to say it in rebuttal something about why though located in the bottom section Why doesn't it modify the means for driving as opposed to the rotor?

[00:12:34] Speaker ?:
I

[00:12:35] Speaker 02:
Well, let me brawl that.

[00:12:37] Speaker 02:
Can I say two quick points, Your Honor?

[00:12:39] Speaker 02:
Very quick.

[00:12:40] Speaker 02:
Yes, Your Honor.

[00:12:41] Speaker 02:
The reason is the claim term requires it to be in the bottom section.

[00:12:48] Speaker 02:
The bottom section is the inside bottom of the pressure vessel.

[00:12:52] Speaker 04:
I understand the debate about pressure vessel versus a viscometer, but what about just grammar-wise?

[00:12:59] Speaker 04:
Why isn't it modifying the means for driving?

[00:13:03] Speaker 02:
And that's because of patent law, which I think we all know is not your standard everyday grammar.

[00:13:09] Speaker 02:
It has rules, all these special rules.

[00:13:11] Speaker 02:
And one of those rules is if you use the word said, it invokes a reference to something ahead of it, a term of antecedent.

[00:13:17] Speaker 02:
I'm sure I butchered that word.

[00:13:19] Speaker 02:
antecedent basis so when it invokes that word said it now saying said rotor to rotate located in the bottom section so that said is now referring to something above it and the component immediately above it is the rotor and I wanted to say one more thing if I may your honor about the driving means and and that is

[00:13:40] Speaker 02:
Claim 14, claim 14, claim 14.

[00:13:43] Speaker 02:
Claim 14 is so important.

[00:13:44] Speaker 02:
Claim 14 says just a magnetic coupling can be a driving means.

[00:13:49] Speaker 02:
And the district court held claim 1 can never have just the magnetic coupling.

[00:13:55] Speaker 02:
The magnetic coupling has to be the magnetic coupling plus holder, motor, gearbox.

[00:13:59] Speaker 02:
So now we have claim 1 that is narrower than claim 14, which is a patent law impossibility.

[00:14:04] Speaker 02:
So I think if we look at claim 14, we see the magnetic coupling.

[00:14:08] Speaker 02:
We know from the patent, the magnetic coupling is just the driving magnet, just the pairing magnet, the force between them.

[00:14:14] Speaker 02:
If that alone can be a driving means, then each individual component that relay or transmits driving force should be able to be one of the driving means.

[00:14:23] Speaker 02:
And that would include that magnet holder, Your Honor, that's in the back bottom section.

[00:14:27] Speaker 02:
And the one example I would give you, and I'm going to get out of here,

[00:14:30] Speaker 02:
If you ask somebody that drives a car, you know, what do you use to drive a car?

[00:14:35] Speaker 02:
No one's going to say I use the tires, the axles, the motor.

[00:14:39] Speaker 02:
Everyone's going to say the steering wheel.

[00:14:41] Speaker 02:
The steering wheel, the part that relays or transmits force.

[00:14:45] Speaker 02:
And so that's what I think the patent owner was trying to say when he said just the magnetic coupling can be a driving means.

[00:14:50] Speaker 02:
He was saying any one of those individual components in the chain could be a means for driving.

[00:14:55] Speaker 02:
That would include that magnet holder, which has the great benefit of being in the bottom section.

[00:15:00] Speaker 02:
So everybody's happy in patent land.

[00:15:02] Speaker 02:
No preferred embodiments excluded in all the claim arguments.

[00:15:05] Speaker 02:
Let's hear from the other side.

[00:15:07] Speaker 02:
I'm sorry, Ron.

[00:15:10] Speaker 02:
Please begin.

[00:15:11] Speaker 00:
Thank you, Your Honor, and may it please the court.

[00:15:13] Speaker 00:
First, I'd like to address a couple of the questions that involved IPXL.

[00:15:17] Speaker 00:
And we did raise that argument below, and the district court did not adopt those arguments.

[00:15:23] Speaker 00:
Instead, it found the claims indefinite.

[00:15:25] Speaker 04:
Are we talking about the filled with fluid question?

[00:15:27] Speaker 00:
Yes, exactly.

[00:15:28] Speaker 00:
Exactly.

[00:15:28] Speaker 00:
So that was an argument that was before the district court.

[00:15:31] Speaker 00:
It wasn't briefed here, but it is an alternative grounds of affirmance.

[00:15:34] Speaker 00:
So we disagree.

[00:15:35] Speaker 00:
We do think that the claims do require

[00:15:38] Speaker 00:
that the pressure vessel will be filled with a pressurization fluid.

[00:15:41] Speaker 00:
So it's a combination of a system and a method claim.

[00:15:44] Speaker 04:
But why wouldn't it just be a system claim nevertheless?

[00:15:47] Speaker 04:
Like if I claim a glass with orange juice,

[00:15:52] Speaker 04:
inside of it, that would be OK.

[00:15:55] Speaker 00:
Right?

[00:15:55] Speaker 00:
And that is what the district court found.

[00:15:57] Speaker 00:
But since Your Honor had questions about it, I just wanted to float it out there.

[00:16:01] Speaker 00:
It wasn't something that wasn't addressed below.

[00:16:03] Speaker 00:
There is a record on it.

[00:16:04] Speaker 00:
But I'm happy to focus on what was addressed below.

[00:16:06] Speaker 00:
And the main reason.

[00:16:07] Speaker 04:
Let's talk about a large chamber.

[00:16:09] Speaker 00:
Yes.

[00:16:10] Speaker 04:
And let's talk about whether the judge below, perhaps thanks to excellent advocacy,

[00:16:19] Speaker 04:
was overly narrow in looking at this claim and in assuming that enlarged chamber necessarily meant that this is a type of chamber that has to be larger than some measuring stick comparator chamber.

[00:16:35] Speaker 04:
And then because there is no such chamber defined in the specification in that way, that this is an indefinite term.

[00:16:44] Speaker 04:
And so perhaps the other way of understanding the large chamber is that this patent owner was his own lexicographer.

[00:16:53] Speaker 04:
He invented this term, maybe not the best choice of words, but nevertheless, when you read the entire patent, you can understand and discern what

[00:17:01] Speaker 04:
is meant and intended by enlarged chamber and that is you know the kind of chamber that has the capacity to hold lots of sample fluids such that when it's under compression by pressure by the pressure fluid the level of the fluid will go down but it won't go down so far into the testing area because that would result in pressure fluid mixing down in the testing area.

[00:17:25] Speaker 00:
So I have three points to respond to that, Your Honor.

[00:17:28] Speaker 00:
The first is a quick one.

[00:17:30] Speaker 00:
And it's that the definition of big enough to hold enough fluid to fill the compression void at maximum rated pressure is completely reading the word enlarged out of the claim.

[00:17:39] Speaker 00:
And I understand, Your Honor, saying, well, maybe he should have chosen a different word, and he's defined that.

[00:17:44] Speaker 00:
But just from a claim construction standpoint, that seems kind of bizarre to move the word enlarged, which has an ordinary meaning that we all know is bigger than something.

[00:17:52] Speaker 00:
And now to insert it with this new concept that is very different than the plain and ordinary meaning of enlarged without a definition in the spec.

[00:17:59] Speaker 00:
So the second point is, well, then let's go.

[00:18:01] Speaker 00:
Let's look at the spec.

[00:18:02] Speaker 00:
So the enlarged chamber, as you noted, only appears once.

[00:18:06] Speaker 00:
And all that the specification tells us in column 11 is that the enlarged chamber is 45 or 49.

[00:18:13] Speaker 00:
And you can see those on Figure 1.

[00:18:16] Speaker 00:
It doesn't tell us how large those must be.

[00:18:19] Speaker 00:
So let's take a look at Figure 1 on Appendix Page 41.

[00:18:27] Speaker 00:
We know in large chamber, 45 is an enlarged chamber.

[00:18:31] Speaker 00:
It looks very small compared to the other chamber.

[00:18:35] Speaker 00:
So what makes that chamber enlarged as well as Chamber 49?

[00:18:39] Speaker 00:
We can look at other places in the specification.

[00:18:41] Speaker 00:
And let's look at Column 5.

[00:18:43] Speaker 00:
line 63 going into column 6.

[00:18:45] Speaker 00:
Now this is an important part of the specification because it's something that on page 9 of its opening brief, Grace said, this is definitional.

[00:18:52] Speaker 00:
This is where we know about the enlarged chamber.

[00:18:55] Speaker 00:
But that mentions two chambers, two enlarged chambers, 45 and 49 working together.

[00:19:00] Speaker 00:
We know from the figure.

[00:19:01] Speaker 00:
One is significantly smaller than the other.

[00:19:03] Speaker 00:
And we're told in column 6 that at maximum rated pressure, chamber 49 is still at least half filled with the sample liquid.

[00:19:11] Speaker 00:
So if this is the definition from the specification, why wouldn't you read that and say, OK, I get it.

[00:19:16] Speaker 00:
An enlarged chamber needs to be at least half filled with the sample liquid after compression.

[00:19:22] Speaker 00:
That's not the construction they're asking for.

[00:19:23] Speaker 00:
They've pointed to other places in the spec, but every single time that the spec mentions maximum rated pressure, it mentions chamber in a 49.

[00:19:31] Speaker 00:
The enlarged chamber is still at least half filled.

[00:19:35] Speaker 00:
So Grace is picking and choosing.

[00:19:37] Speaker 00:
It's cherry picking from embodiments to come up with a construction that seems to suit it, but it's not even looking at the specification.

[00:19:44] Speaker 04:
There's no baseline.

[00:19:46] Speaker 04:
At the same time, there's other passages in the specification, including the title itself.

[00:19:50] Speaker 04:
The whole point of this invention is to prevent sample contamination so that when you're measuring the viscosity of a sample, you don't have it mixed in with pressure fluid.

[00:20:03] Speaker 04:
And so that's the purpose of having this transition chamber so that any interaction between the two fluids is occurring in the transition chamber during the testing and not down into the testing chamber.

[00:20:16] Speaker 04:
And so if textually we can read all these different passages and come away with that message being communicated by the patent, then why wouldn't that be sufficient to say, yeah, this is construable?

[00:20:31] Speaker 00:
So the problem is, even with that construction, so even taking that argument as true, as I mentioned before, I think that at least half filled language should be given consideration.

[00:20:41] Speaker 00:
In this case, we can't define the term based on the problem that it's alleged to be solving.

[00:20:47] Speaker 00:
We know from Geneva Pharmaceuticals, which is the case that was decided by this court, that a given embodiment that would simultaneously infringe and not infringe the claims

[00:20:57] Speaker 00:
depending on the particular testing sample used for analysis, is the epitome of indefiniteness.

[00:21:02] Speaker 03:
So where's the evidence that that's what we have in front of us?

[00:21:05] Speaker 00:
Yes.

[00:21:05] Speaker 00:
So first of all, the only evidence that they point to is Mr. Bai's testimony, which actually supports us there.

[00:21:11] Speaker 00:
So if you go to appendix page 434 and 437, his testimony is that these samples will compress more or less 12%.

[00:21:21] Speaker 00:
More or less, that is not definite.

[00:21:25] Speaker 00:
That means that some could help.

[00:21:26] Speaker 03:
But you say it's not definite.

[00:21:27] Speaker 03:
How do I know that a person with ordinary skill in the art would say that's not definite?

[00:21:31] Speaker 00:
Well, there's issues with Mr. Bai's testimony.

[00:21:34] Speaker 00:
You can look at appendix page 782, because in that, during his deposition, he actually disclaimed that testimony of 12%.

[00:21:42] Speaker 00:
So there's no evidence that a person of ordinary skill in the art would look at this and say, well, I know all testing fluids would compress the same amount.

[00:21:49] Speaker 03:
Right, but it's your burden, right?

[00:21:50] Speaker 03:
You're trying to invalidate a patent claim.

[00:21:54] Speaker 00:
Yes, absolutely.

[00:21:55] Speaker 00:
But there's more evidence as well.

[00:21:57] Speaker 00:
So if you continue, the record is full of all the different types of testing fluids that are used.

[00:22:04] Speaker 00:
It mentions cement, hematite, ferrite, calcium.

[00:22:07] Speaker 03:
Sure.

[00:22:07] Speaker 03:
But again, what can you point to that says, first of all, I don't even think we know who the person wearing a skill in the arm is.

[00:22:13] Speaker 03:
The district court didn't make any finding on that.

[00:22:15] Speaker 03:
Isn't that right?

[00:22:17] Speaker 00:
I don't have a site for that.

[00:22:18] Speaker 00:
So I believe you're correct.

[00:22:19] Speaker 03:
OK.

[00:22:20] Speaker 03:
So we don't know whose perspective we're supposed to look at this for to determine if the claim scope is reasonably certain.

[00:22:26] Speaker 03:
But let's put that aside for the moment.

[00:22:29] Speaker 03:
Where is the evidence that whoever the person wearing a skill in the arm

[00:22:33] Speaker 03:
looking at this patent would not be reasonably certain as to what an enlarged chamber is.

[00:22:39] Speaker 00:
So once again, the evidence comes from the testing fluid.

[00:22:42] Speaker 00:
So I was mentioning all the different types.

[00:22:44] Speaker 00:
I can just throw out the appendix pages for you to look at later.

[00:22:46] Speaker 00:
But 44, 95, 224, 349, 1064, and 1078 reference tons of different types of testing materials.

[00:22:54] Speaker 00:
But let's go to Mr. Bai's testimony.

[00:22:56] Speaker 00:
And if you look on appendix page 80, he was directly asked about

[00:23:01] Speaker 00:
Is there an example where physical properties of a testing sample will not affect compressibility?

[00:23:07] Speaker 00:
And he couldn't answer that question.

[00:23:09] Speaker 00:
So there is evidence that if he's an alleged expert, he's actually the named inventor, so we question that.

[00:23:15] Speaker 03:
That's clear and convincing evidence that the undefined person of ordinary skill would know that different testing samples lead to different conclusions about infringement.

[00:23:27] Speaker 03:
Is that what you're saying?

[00:23:28] Speaker 00:
That is part of it.

[00:23:29] Speaker 00:
If you look at where the 12% number came from, it was pulled from Chandler's brochure.

[00:23:35] Speaker 00:
And Mr. Bai actually misread the brochure.

[00:23:37] Speaker 00:
The brochure does not say that a testing sample compresses 12%.

[00:23:41] Speaker 00:
It says that there's 12% of extra space in the chamber.

[00:23:44] Speaker 00:
And of course, mathematically, whether something compresses at the bottom

[00:23:47] Speaker 00:
versus how much extra space there is in the top.

[00:23:49] Speaker 00:
Those are two very different things.

[00:23:52] Speaker 04:
Before we get any deeper into these facts, it's quite clear that the district court didn't address this particular angle for why the claims are nevertheless indefinite.

[00:24:03] Speaker 04:
And this also sounds very facty.

[00:24:06] Speaker 04:
And so perhaps, and that's a technical term.

[00:24:11] Speaker 04:
It feels like this is an issue that would need to be resolved and addressed in the first instance by the district court, not by us on appeal.

[00:24:18] Speaker 04:
Would you agree with that?

[00:24:19] Speaker 00:
I would not.

[00:24:20] Speaker 00:
And the reason is because indefiniteness, of course, is a question of law.

[00:24:23] Speaker 04:
And you can look at- You can't have underlying fact findings.

[00:24:26] Speaker 04:
And we've had cases where we've had to figure out indefiniteness, and it turned on a fact question.

[00:24:32] Speaker 00:
Well, here you can look at the specification again.

[00:24:34] Speaker 00:
And I think you hit it right in the beginning with your questions about enlarged chamber.

[00:24:38] Speaker 00:
It has to mean something.

[00:24:39] Speaker 00:
It's in the claims.

[00:24:40] Speaker 00:
It has to mean something.

[00:24:42] Speaker 00:
And all that we're told is we're pointed to two boxes, two chambers.

[00:24:46] Speaker 00:
We're told each of them can be enlarged, and neither of them is enlarged.

[00:24:48] Speaker 00:
There's also a waiver issue here, which is that they told the district court that on that issue, if you go to appendix page 1446, they said,

[00:24:59] Speaker 00:
If one drilling fluid compresses 10%, then the enlarged chamber must be able to fill that 10%.

[00:25:04] Speaker 01:
Do you intend that enlarge has to be a matter of degree?

[00:25:09] Speaker 01:
Or do you think it could be maybe even defined by looking at these various portions of specification we've been talking about today?

[00:25:15] Speaker 00:
I don't think it can be defined by this specification.

[00:25:19] Speaker 00:
So in here, it needs to be a term of degree because there's no indication in the specification.

[00:25:24] Speaker 00:
Could enlarged not be a term of degree in another patent with another specification?

[00:25:29] Speaker 00:
I couldn't comment on that.

[00:25:30] Speaker 00:
But in this specification, enlarged needs to be a term of degree because we need to know what that word means.

[00:25:36] Speaker 00:
And the construction that they're proposing just leads to a whole bunch of problems.

[00:25:41] Speaker 00:
It's inconsistent than what they've previously said.

[00:25:43] Speaker 00:
And a skilled artisan is left without knowing

[00:25:46] Speaker 00:
whether the enlarged chamber actually infringes, even if they fill it with testing fluid, as he proposed.

[00:25:52] Speaker 01:
Was there no dispute about the focita?

[00:25:55] Speaker 01:
Is that the reason we don't have a further definition?

[00:25:57] Speaker 01:
Like, I guess there was one proposed in the expert report or declaration.

[00:26:02] Speaker 01:
Was it just kind of agreed among the parties?

[00:26:05] Speaker 00:
That's my understanding is that it at least didn't come up.

[00:26:07] Speaker 00:
I think that there weren't expert reports yet.

[00:26:11] Speaker 00:
But there was a request for claim construction, and the district court then made its findings.

[00:26:16] Speaker 00:
A skilled artisan would, I think, obviously have some experience in this area, but there's still not record evidence to show that he would understand what this term means.

[00:26:27] Speaker 03:
We've already been through this, but there's not record evidence to show that the person of skill in the art wouldn't know either, right?

[00:26:33] Speaker 03:
We just have a record that's, if it has anything, it has their expert, but it doesn't have anything from you.

[00:26:39] Speaker 00:
But their expert alone, expert testimony is not required, as I'm sure you know from your case law.

[00:26:44] Speaker 00:
But their expert did provide the testimony that we need.

[00:26:47] Speaker 00:
And like I said, you can look at it in appendix page 782 and 800, where he does provide that support for why he wouldn't know.

[00:26:56] Speaker 00:
He says he wouldn't know.

[00:26:58] Speaker 00:
He couldn't tell you if a testing sample would compress at that rate.

[00:27:02] Speaker 00:
I'll also just quickly say that he's, of course, not an expert.

[00:27:05] Speaker 00:
He is the named inventor, and the court has made a distinction there.

[00:27:08] Speaker 00:
I recognize his experience in this area, but nonetheless, he definitely has bias.

[00:27:14] Speaker 00:
And the district court did, in fact, make some fact findings about his testimony and saying it was not specific or explicit enough to support their arguments.

[00:27:24] Speaker 00:
Unless you have any other questions, which you might.

[00:27:27] Speaker 03:
Well, I'm just curious, and you may want to say something about means plus function.

[00:27:30] Speaker 03:
But if we were to disagree with you on indefiniteness, but agree with you on the means plus function term, where would that leave this case?

[00:27:38] Speaker 03:
What would you have us do in that circumstance?

[00:27:41] Speaker 00:
Sure.

[00:27:42] Speaker 00:
So if you did that, and of course, the answers that claims one and two only would survive.

[00:27:46] Speaker 00:
But of course, we think that this term is indefinite.

[00:27:50] Speaker 00:
You don't need to get to fact findings to support that.

[00:27:52] Speaker 00:
You can look at the district court's claim construction and then review his fact findings for clear error under TEBA.

[00:27:59] Speaker 04:
I suppose if we did disagree with the district court's analysis on indefiniteness, but they did agree on the means plus function limitation, we could expressly order

[00:28:13] Speaker 04:
or identify for the district court they're still alive, indefinite, this question that he would need to resolve in the first instance.

[00:28:21] Speaker 04:
The theory that, well, we can't possibly know what in the large chamber, what the right capacity of that chamber is going to be, because it's now become dependent on all these different types of fluids and different levels of pressure.

[00:28:34] Speaker 00:
You can certainly issue an order that would direct the district court specifically as to what fact finding might need to be required to be reviewed again at this stage.

[00:28:44] Speaker 00:
But once again, I don't think you need to get there.

[00:28:47] Speaker 00:
If you look at that testimony that I've referenced to you from Mr. Bai, I think you'll see that he did disclaim this position such that there's really no way that you can reverse and that the district court could come to any other conclusion on that issue.

[00:29:01] Speaker 00:
Briefly, I'm just going to hit on the means plus function term.

[00:29:04] Speaker 00:
There's really two issues here, what the means for driving structure is and what needs to be located in the bottom section.

[00:29:12] Speaker 00:
And both of Grace's arguments rely on its misinterpretation of bottom section as referring to the pressure vessel instead of as referring to the viscometer, which is what it refers to, as you can see in claim four.

[00:29:24] Speaker 00:
Regarding the means for driving structure, you're familiar with your case law here.

[00:29:28] Speaker 00:
The idea that a magnet holder could be driving the rotor to rotate alone without any

[00:29:34] Speaker 00:
other components is nonsensical.

[00:29:37] Speaker 00:
And I think it just demonstrates a misunderstanding of the quid pro quo of claiming in a means plus function way.

[00:29:43] Speaker 04:
Maybe that just means claim 14 is indefinite by only citing to a couple little components of the overall means for driving the rotor as opposed to the whole magnet-based embodiment as the structure.

[00:30:00] Speaker 00:
So that wouldn't be the case, and it doesn't need to be the case, because claim 14 is just claiming the means for coupling way of driving the rotor, the magnetic coupling, which in turn includes the magnet mount, a driving magnet, a coupling magnet, and a gearbox or motor.

[00:30:15] Speaker 00:
So claim 14 fits well into, it is narrower than claim 4, so it fits into that.

[00:30:22] Speaker 04:
Just so I understand, for claim 14, when it says magnetic coupling,

[00:30:25] Speaker 04:
Are you interpreting that term to be all the components that relate to a magnetic-based means for driving the rotor?

[00:30:34] Speaker 00:
Yes, exactly.

[00:30:35] Speaker 00:
And that is what the district court did.

[00:30:37] Speaker 04:
Even though the spec, when it identifies a magnet coupling, it only identifies those two opposing magnets through the pressure wall.

[00:30:45] Speaker 00:
Yes, because as the court found, you need the magnet mount, a driving magnet, a coupling magnet, and a gearbox for a motor.

[00:30:53] Speaker 00:
You can't drive this.

[00:30:56] Speaker 00:
And the second issue, I realize I'm over my time.

[00:31:00] Speaker 00:
That's OK.

[00:31:01] Speaker 00:
OK.

[00:31:02] Speaker 00:
Yeah, the second issue relates to where the located clause refers to the means for driving.

[00:31:08] Speaker 00:
And that does refer to the means for driving.

[00:31:10] Speaker 00:
And if you look at claim four, particularly elements B and C, in element B, we introduced the rotor.

[00:31:16] Speaker 00:
And we described the rotor.

[00:31:18] Speaker 00:
It would have been natural if the rotor was what had to be located at the bottom section to say it in element B. In element C, we described the means for driving.

[00:31:26] Speaker 00:
And it's very grammatically awkward if the patentee intended Rotor to be located at least one bottom section for it to put it there.

[00:31:35] Speaker 04:
awkward to put it in there?

[00:31:37] Speaker 04:
I mean, obviously it could have been rewritten to say it means for driving the rotor to rotate wherein the rotor is located in the bottom section.

[00:31:46] Speaker 04:
I mean, that would have been fine and not awkward, right?

[00:31:51] Speaker 00:
Yeah, the patent, he could have clarified that in numerous ways if that's what he intended.

[00:31:55] Speaker 00:
But let me give you an example.

[00:31:56] Speaker 00:
If I said he threw a rose from his balcony to me,

[00:32:00] Speaker 00:
There's a little bit of ambiguity there.

[00:32:01] Speaker 00:
Did the rose come?

[00:32:03] Speaker 00:
Was he standing on his balcony when he threw the rose?

[00:32:05] Speaker 04:
Can you repeat this?

[00:32:07] Speaker 00:
Sure, sure.

[00:32:08] Speaker 00:
Sorry.

[00:32:09] Speaker 00:
He threw a rose from his balcony to me.

[00:32:12] Speaker 00:
Is he standing on his balcony throwing the rose?

[00:32:16] Speaker 00:
Or was the rose from the garden on his balcony?

[00:32:18] Speaker 00:
There's a little bit of ambiguity there.

[00:32:20] Speaker 00:
But that's not the situation we have here.

[00:32:23] Speaker 00:
We have he threw a rose to me.

[00:32:26] Speaker 00:
from his balcony.

[00:32:28] Speaker 00:
We've now moved the balcony away from the rows, making it clear that it's the throwing action.

[00:32:33] Speaker 03:
So I'll have to re-listen to this portion of the argument.

[00:32:37] Speaker 00:
Happy to repeat it.

[00:32:38] Speaker 03:
Can we just go back to the concession that you say we will find, I think, at pages 782 and 800 of the appendix?

[00:32:48] Speaker 03:
The plaintiff's expert, who I know is the plaintiff, basically, as well, his testimony.

[00:32:55] Speaker 03:
What is the concession that you see is being made there, and exactly where is it?

[00:32:59] Speaker 00:
Yeah, so if we go to 782, he's telling us here in lines,

[00:33:03] Speaker 00:
5 through 9, he chose the 12 percent and used that number in his declaration because it came from Chandler.

[00:33:10] Speaker 00:
And then he goes on to explain that he grabbed this from Chandler's brochure, which is a misreading of Chandler's brochure.

[00:33:17] Speaker 00:
So then if we go on to appendix page 800, you'll see line one, he was asked, in what situations will the physical properties of a test sample not affect its compressibility?

[00:33:31] Speaker 00:
Now to prevail here, the answer has to be

[00:33:33] Speaker 00:
It will never affect it.

[00:33:34] Speaker 00:
It's always going to compress the same way.

[00:33:36] Speaker 00:
A person of skill in the art would know that.

[00:33:38] Speaker 00:
But he said, I cannot answer your question.

[00:33:41] Speaker 00:
He couldn't provide an example.

[00:33:42] Speaker 03:
Paul says it's not a yes or no.

[00:33:45] Speaker 00:
Yeah, he could not answer that question.

[00:33:46] Speaker 00:
Now, you'll notice in the record here from 784 to 800, there's a skip.

[00:33:50] Speaker 00:
There's relevant testimony in there that I'd be happy to provide the court in a 20HA.

[00:33:55] Speaker 00:
It wasn't included in the appendix of the court's rules, and it wasn't cited directly in the brief.

[00:33:59] Speaker 00:
Frankly, we didn't expect them to challenge

[00:34:01] Speaker 00:
what seemed like a very normal physical characteristic that slurries with different materials would compress at different amounts at the same pressure.

[00:34:09] Speaker 00:
So I'm happy to submit that via 28J for your honor's consideration.

[00:34:14] Speaker 04:
OK.

[00:34:15] Speaker 04:
Thanks so much.

[00:34:15] Speaker 04:
Thank you.

[00:34:16] Speaker 04:
Let's see.

[00:34:17] Speaker 04:
OK.

[00:34:18] Speaker 04:
We'll give Mr. Laney four minutes if he needs it.

[00:34:23] Speaker 02:
I will move as quickly as possible.

[00:34:26] Speaker 02:
Your Honor, filled with the pressurization fluid that we talked about, the different apparatuses, that was brief like crazy in the district court.

[00:34:35] Speaker 02:
They moved to invalidate our claim.

[00:34:37] Speaker 02:
We responded.

[00:34:38] Speaker 02:
The judge ruled our way.

[00:34:39] Speaker 02:
They never appealed it.

[00:34:42] Speaker 02:
They had to appeal it.

[00:34:43] Speaker 02:
They had to get that issue up here during this appeal for it to be in front of us.

[00:34:49] Speaker 02:
And now that they have it, that has been played.

[00:34:51] Speaker 04:
I'm sorry.

[00:34:52] Speaker 04:
What is it that they needed to appeal?

[00:34:53] Speaker 04:
They won.

[00:34:55] Speaker 02:
No, the issue that your honor sort of brought up, Susponte, about this device holding different fluids and how that related to the patent, that was briefed, they lost, they never appealed.

[00:35:09] Speaker 02:
That should be waived.

[00:35:11] Speaker 02:
You know, my client is not... That's not before us today.

[00:35:15] Speaker 04:
We're not going to be able to resolve that and disappear.

[00:35:17] Speaker 02:
But Your Honor, you mentioned that you could remand back and start us over on that point, and we would just say that'd be tremendously prejudicial to us.

[00:35:25] Speaker 02:
My client's not a $60 billion company, and we think they've waived that strongly.

[00:35:30] Speaker 01:
You don't want a remand?

[00:35:32] Speaker 02:
No, of course I want to remand.

[00:35:34] Speaker 02:
I don't want to remand.

[00:35:35] Speaker 02:
I'm sorry, on this point about whether it's a combined... Are you saying the only relief you really want is that we find your claims are not indefinite?

[00:35:46] Speaker 03:
If we say there's more to litigate on indefiniteness, you say don't bother?

[00:35:50] Speaker 02:
No, Your Honor, I retract my comment.

[00:35:53] Speaker 02:
I guess we think if there's more to litigate on deafness, we're happy to do it.

[00:35:57] Speaker 02:
We just think that that particular ground was not raised on appeal or challenged and that it's too late to revisit.

[00:36:07] Speaker 04:
briefly comment on Ms.

[00:36:09] Speaker 04:
Goldenberg's observation that when you go through the written description, and it talks about chambers 45, 49, and multiple embodiments talk about wanting chamber 49 to end up being at least half filled with test sample.

[00:36:25] Speaker 04:
Yes, sir.

[00:36:25] Speaker 04:
So is that something that, I mean, if we're going to run into your specification and start trying to draw out a definition, why wouldn't that be part of the definition?

[00:36:35] Speaker 02:
Yes, Your Honor, I'm going to direct the court to column 10 down at the bottom line 64 through 67.

[00:36:41] Speaker 02:
This is right after we finished talking about our preferred embodiment and the other two examples.

[00:36:47] Speaker 02:
It's the very bottom right corner.

[00:36:50] Speaker 02:
Our patiny, and I'll take off my mask, I'm sorry.

[00:36:54] Speaker 02:
Our patentee says, it is not necessary to have both chamber 45 and chamber 49.

[00:37:01] Speaker 02:
With just chamber 45 or chamber 49 and sufficient volume, pressurization fluid and testable can still be separated.

[00:37:10] Speaker 02:
So what he's saying here is in all the three embodiments I've talked to this point, it was 45 plus 49.

[00:37:16] Speaker 02:
But you don't have to have both of them.

[00:37:17] Speaker 02:
You could just have one big one.

[00:37:19] Speaker 02:
So that addresses that first portion of your question, Your Honor.

[00:37:22] Speaker 02:
Second portion about leaving fluid in there.

[00:37:24] Speaker 02:
It's not about how much, and I'll go to the preferred embodiment, that's on column six, Your Honor, at the top.

[00:37:31] Speaker 02:
It's not about how much you leave in there.

[00:37:33] Speaker 02:
It says Chamber 45, 49 are large enough that at maximum rated pressure, Chamber 49 is still at least half filled with sample fluid.

[00:37:43] Speaker 02:
What the test, what the baseline is, is

[00:37:45] Speaker 02:
This ensures the accuracy of the measurement because measurement zone below anti-mixer bottom fin 82 is always totally filled with sample fluid.

[00:37:54] Speaker 02:
So that's all that matters.

[00:37:55] Speaker 02:
And if you go to the next paragraph, it provides even more detail.

[00:37:59] Speaker 02:
It says, because anti-mixer bottom fin 82 separates lower measurement zone and chamber 49, fluid inside of chamber 49 is relatively static.

[00:38:09] Speaker 01:
Before your time wraps up, can you just confirm one thing for me?

[00:38:13] Speaker 01:
Can you turn to Appendix Page 29?

[00:38:15] Speaker 04:
Yes, ma'am, your honor.

[00:38:18] Speaker 01:
Please put it.

[00:38:20] Speaker 04:
You said 29?

[00:38:21] Speaker 01:
Yes.

[00:38:22] Speaker 01:
And as the housing council indicated, you've had various constructions that you've been talking about.

[00:38:28] Speaker 01:
I just want to make sure that the construction that you're looking at or proposing with respect to large changes is either captured here or you can at least point me to the page

[00:38:39] Speaker 01:
Where is the perception that you're really standing behind at this point?

[00:38:43] Speaker 02:
Yes, Your Honor.

[00:38:44] Speaker 02:
We want an enlarged chamber that is big enough to fill the compression void and make sure no pressurization fluid can seep into that bottom chamber.

[00:39:00] Speaker 04:
Right.

[00:39:01] Speaker 04:
But Judge Cunningham is referring to a sentence right in the middle of A29, where it begins with the words, grace argues.

[00:39:08] Speaker 01:
Is that what you're?

[00:39:09] Speaker 02:
I'm sorry, what page of the appendix?

[00:39:11] Speaker 01:
29.

[00:39:11] Speaker 01:
Is that the construction you're arguing for?

[00:39:15] Speaker 01:
That's my question.

[00:39:16] Speaker 02:
Yes, Your Honor, we would go for that construction.

[00:39:20] Speaker 02:
To finish your question real quick briefly, Your Honor, and right after we talk about this column 6, we say the whole point of it

[00:39:28] Speaker 02:
The whole point of this chamber is it must make sure below that bottom fin in the test area, always totally filled with sample fluid.

[00:39:35] Speaker 02:
Says it again in the next paragraph.

[00:39:36] Speaker 02:
Says, additionally, separates lower measurement zone, chamber 49.

[00:39:41] Speaker 02:
Fluid inside of chamber 49 is relatively static.

[00:39:44] Speaker 02:
So it's saying when you have that interface of the oil and the test sample, it's going to be above that bottom fin.

[00:39:51] Speaker 02:
So there's no stirring up there.

[00:39:53] Speaker 02:
OK.

[00:39:53] Speaker 03:
OK.

[00:39:55] Speaker 03:
I'm so sorry.