[00:00:00] Speaker 00:
All is ready.

[00:00:01] Speaker 00:
Our last argued case this morning is Low versus Shield, Mark 2021-2164.

[00:00:07] Speaker 00:
Mr. Weber.

[00:00:14] Speaker 05:
Thank you, Your Honor.

[00:00:14] Speaker 05:
I'm Ray Weber, and I'm here on behalf of the appellant plaintiffs.

[00:00:21] Speaker 05:
And first issue that I do want to address is the grant of a summary judgment of non-infringement

[00:00:29] Speaker 05:
based on an erroneous claim construction, primarily of the term lateral edge portion.

[00:00:38] Speaker 05:
The claims, which is where you need to start in construing claims, clearly defines lateral edge portion.

[00:00:47] Speaker 05:
At column five, lines 15 to 34,

[00:00:51] Speaker 05:
of the 664 path and the lateral edge portion is defined in detail as a portion.

[00:00:59] Speaker 05:
It's a portion of the body of the floor marking tape.

[00:01:02] Speaker 05:
It's positioned at the lateral edges.

[00:01:05] Speaker 05:
It extends in the lateral direction.

[00:01:07] Speaker 05:
It has an upper surface.

[00:01:09] Speaker 05:
That upper surface comprises an extension of the upper surface of the body.

[00:01:14] Speaker 05:
It has a lower surface.

[00:01:16] Speaker 05:
of each lateral edge portion being a flat coplanar extension of the lower surface of the body.

[00:01:24] Speaker 05:
It says that the entire body of each lateral edge portion is tapered with the upper surface of each lateral edge portion extending to the lower surface of such lateral edge portion.

[00:01:38] Speaker 05:
And it says that each of the lateral edge portions has a maximum height

[00:01:43] Speaker 05:
that is less than its width, and that means that it's less than a 45-degree angle.

[00:01:50] Speaker 05:
It's hard to imagine a claim feature being defined with more particularity and specificity than lateral edge force.

[00:02:02] Speaker 05:
But if the claims aren't enough, then we go to the specification, we go to the prosecution history, and all of those are consistent with each other.

[00:02:12] Speaker 05:
The claims state that the body of the floor marking tape has- You're concerned with the use of the term shoulder, right?

[00:02:21] Speaker 05:
Absolutely not, Your Honor.

[00:02:23] Speaker 05:
In fact, as I'll mention shortly, or maybe now, but the shoulder and the recess were part of the parent patent of the patent hearing issue.

[00:02:38] Speaker 05:
You know, the patent hearing issue speaks of a number of configurations or embodiments, and each one of those configurations or embodiments addresses a different problem in the prior art, and it corrects that problem in the prior art.

[00:02:56] Speaker 05:
And they are independent of each other.

[00:03:00] Speaker 05:
And in the parent's patent of

[00:03:05] Speaker 00:
I thought you argued in your brief.

[00:03:08] Speaker 00:
You objected to the term shoulder.

[00:03:10] Speaker 00:
Are you changing your argument now?

[00:03:12] Speaker 00:
Can you say absolutely not?

[00:03:13] Speaker 00:
That's not a critical issue?

[00:03:18] Speaker 05:
Well, it's a critical issue in that it has no relevance to the 664 patent.

[00:03:25] Speaker 05:
The shoulder and the recess were claimed extensively in the parent patent.

[00:03:33] Speaker 05:
They were claimed in patent 883290, which is at Appendix 1753 through 58.

[00:03:47] Speaker 05:
That's the parent of this.

[00:03:49] Speaker 05:
That patent addressed the issue of adhesive ooze.

[00:03:54] Speaker 05:
What happens is a skid steer or something runs over this tape, we don't want the adhesive squirting out.

[00:04:03] Speaker 05:
And so the fix for that was to have shoulders in a recess and maintain the adhesive within the shoulders in recess so that it doesn't squirt out.

[00:04:17] Speaker 00:
That has absolutely.

[00:04:20] Speaker 00:
Aren't the shoulders a necessary or a reasonable part of defining lateral edge portion?

[00:04:27] Speaker 05:
No.

[00:04:28] Speaker 05:
No, Your Honor.

[00:04:29] Speaker 05:
I mean, I just went through how the patent exhausts, the claim exhaustively describes the lateral edge portion.

[00:04:39] Speaker 05:
You don't need the shoulder.

[00:04:41] Speaker 05:
If you look at the parent patent,

[00:04:45] Speaker 05:
and the 664 patent here an issue.

[00:04:48] Speaker 05:
They're almost identical except the parent patent focuses on solving the problem of adhesive ooze and therefore extensively claims shoulders and a reset.

[00:05:06] Speaker 05:
The 664 patent is directed to resolving the problem of skids or pallets

[00:05:13] Speaker 05:
hitting this tape and having a tendency to tear it from the floor.

[00:05:19] Speaker 05:
And so lateral edge proportions are provided with these tapered edges at less than a 45 degree angle that are at the far lateral ends of the tape so that the skids or the pallets will go up over the tape and it thereby limits

[00:05:40] Speaker 05:
the tendency of those machines or those apparatus from stripping the tape from the floor.

[00:05:49] Speaker 01:
How do you respond to the lower court's conclusion that the claims would be overly vague without the use of shoulders to mark their boundaries?

[00:05:59] Speaker 05:
I would say that with all due respect,

[00:06:03] Speaker 05:
the lower court really didn't even look in detail at the claims.

[00:06:10] Speaker 05:
If you look at the hearing on the Markman hearing, the court focused on the summary of the invention in the 664 patent and said, oh, well, the heart of this is preventing adhesive ooze

[00:06:26] Speaker 05:
And you really need shoulders to do that.

[00:06:30] Speaker 05:
Where those lateral edge portions are is independent of where the shoulders might be.

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And you can have a tape without the recess or shoulders that will have these tapered lateral edges that will provide you with the benefit previously unavailable in the prior art of tapered lateral edges.

[00:06:54] Speaker 05:
By the same token, you could have a tape that doesn't have the lateral edges, but has the recess, excuse me, the recess and the shoulders to hold the adhesive.

[00:07:09] Speaker 05:
That solves the totally unrelated problem of adhesive ooze.

[00:07:15] Speaker 05:
You can combine both of those in one tape, but that's not what these claims do.

[00:07:22] Speaker 05:
The 664 patent focuses on the lateral edge portion, and only in dependent claim 7, I believe, does it mention, you know, containing the adhesive.

[00:07:37] Speaker 00:
But- Council, I'd like you to address the dismissal of the invalidity counterclaim, and particularly the covenant not to sue.

[00:07:49] Speaker 05:
Okay.

[00:07:50] Speaker 05:
Thank you, Your Honor.

[00:07:52] Speaker 05:
Yeah, this is not the first time we've been sued by Shieldmark.

[00:07:59] Speaker 05:
We were sued by Shieldmark previously, and we won on summary judgment, non-infringement, and Shieldmark went back.

[00:08:15] Speaker 05:
They've kept a continuing patent application since 2003.

[00:08:19] Speaker 05:
They went back and they got

[00:08:23] Speaker 05:
new claims that didn't have the limitations that allowed us to escape infringement in the first patent.

[00:08:34] Speaker 05:
That suit was dismissed because we didn't infringe, but we had a count in there for invalidity and unenforceability because Shieldmark

[00:08:46] Speaker 05:
well prior to the critical date of any of their three and soon to be four patents issuing from the same application.

[00:08:56] Speaker 00:
Well prior to that... Wasn't there a lack of case of controversy anymore when you got the covenant not to sue and you changed your product?

[00:09:06] Speaker 05:
No, there still is a case of controversy because we don't have any assurance they won't sue us on the next patent that issues from this.

[00:09:15] Speaker 05:
And that patent also, as learned hand, you know, said, remains, you know, as, you know, a threat against the entire industry.

[00:09:28] Speaker 00:
I'm sorry, Your Honor.

[00:09:29] Speaker 00:
The case doesn't continue just because someone may sue you in the future.

[00:09:33] Speaker 00:
You need a potent case of controversy.

[00:09:39] Speaker 05:
Well, according to metamune, you have to look at all the circumstances, which is something that the district court did not do.

[00:09:48] Speaker 03:
Do you have any case, do you have any case, Mr. Weber, in which

[00:09:54] Speaker 03:
The party that is trying to keep the case alive, the declaratory judgment plaintiff, is relying on the possibility that a patent may issue when that patent has not yet issued and on which that declaratory plaintiff might be sued?

[00:10:18] Speaker 05:
Well, we have the one that we're in right now because that doesn't really help you because it's not precedent yet.

[00:10:28] Speaker 03:
Any case that fits the pattern that you've described as creating the case or controversy.

[00:10:34] Speaker 05:
Judge Bryson, I don't recall.

[00:10:39] Speaker 05:
None comes to mind.

[00:10:41] Speaker 05:
If it did come to mind, it would be in our brief.

[00:10:45] Speaker 05:
But that is, indeed, when you look at all the circumstances, as MedImmune says, we've got a situation here where we've been sued by them before,

[00:10:57] Speaker 05:
We went back.

[00:10:58] Speaker 05:
They got a continuing application.

[00:11:00] Speaker 05:
They get another patent from the same application.

[00:11:04] Speaker 05:
They sue us again.

[00:11:05] Speaker 05:
This covenant not to sue only extends to the 220 patent, not the next patent that they're going to get, and they're going to sue us with.

[00:11:14] Speaker 05:
Plus, this is a scourge on this industry.

[00:11:18] Speaker 05:
They sold four miles of tape, four miles of it,

[00:11:24] Speaker 05:
of tape that's actually identified in their specification as an acceptable alternative before the critical date.

[00:11:33] Speaker 03:
Mr. Weber, does Insight plan to continue selling the Superior Mark tape, which was the subject, I guess, of the 220 patents counterclaim?

[00:11:49] Speaker 05:
They certainly did, Your Honor.

[00:11:51] Speaker 03:
Do they in the future plan to sell the Superior Mark tape?

[00:11:56] Speaker 03:
My understanding was there was some question as to whether that tape would be substituted for by a different product.

[00:12:06] Speaker 05:
It would only be substituted if we were found to infringe and if the patent was found to be valid and enforceable.

[00:12:17] Speaker 05:
That was our go-to, that we would get rid of the release liner, which was an element of their claim.

[00:12:24] Speaker 03:
But you're not going to do that until and unless there is an adjudication against you.

[00:12:30] Speaker 05:
That would be our desire, yes.

[00:12:33] Speaker 05:
I mean, we may likely offer both.

[00:12:37] Speaker 05:
But this was not our desire.

[00:12:41] Speaker 05:
They're all of a sudden confronted with a very meritorious, I mean, we're at the end of this case.

[00:12:48] Speaker 05:
Summary judgment motions have been filed.

[00:12:51] Speaker 05:
We're quoting their expert from the previous case who says they violated the no new matter rule.

[00:13:00] Speaker 05:
We're citing to the depositions that are all taken in that case that told they

[00:13:05] Speaker 05:
They said they sold over four miles of this tape before they filed, before the critical date.

[00:13:12] Speaker 05:
And all of a sudden, they couldn't wait to bring this patent into this suit.

[00:13:17] Speaker 05:
They brought it into the suit as soon as it issued.

[00:13:21] Speaker 05:
But boy.

[00:13:22] Speaker 00:
So you're well into your rebuttal time.

[00:13:24] Speaker 05:
Can I ask one more question?

[00:13:26] Speaker 05:
Oh, boy.

[00:13:27] Speaker 05:
You guys got to do me a favor.

[00:13:30] Speaker 05:
I have a question for you.

[00:13:32] Speaker 01:
I have one question before you.

[00:13:35] Speaker 01:
sit down or verbally sit down.

[00:13:38] Speaker 01:
Do you at least agree that the covenant not to sue means there's no case or controversy with respect to the two to zero patent?

[00:13:45] Speaker 01:
Like if we just talk about that context, do you agree with that statement?

[00:13:51] Speaker 05:
Yeah, having not given that careful consideration, I would say that it certainly sounds right, your honor, that there's no case or controversy there.

[00:14:03] Speaker 05:
There is the controversy again that these patents, you know, what they have been able to do is they've gone out and have used these patents as scarecrows, and they've signed up the entire industry who's licensed under them.

[00:14:20] Speaker 05:
And so Mr. Lowe has all of these competitors out there that he's fighting with, and all of a sudden they see their patents circling the drain because of the inequitable conduct clearly, clearly practiced, admitted to by their prior expert,

[00:14:44] Speaker 00:
We're not interested, we're not involved in inequitable conduct at this point.

[00:14:50] Speaker 00:
So why don't we hear from Mr. Megley and we'll restore about three minutes of your rattle time.

[00:14:56] Speaker 05:
Well, thank you very much, Your Honor.

[00:14:58] Speaker 00:
Mr. Megley.

[00:14:59] Speaker 02:
Thank you, Your Honor.

[00:15:00] Speaker 02:
May it please the Court, Richard Megley, on behalf of the appellees, Shieldmark, Advanced Plastic, and Crown Equipment.

[00:15:06] Speaker 02:
I'd like to start with the 664, the patent that was assert against my clients.

[00:15:11] Speaker 02:
The dispositive issue is whether or not a flat bottom tape, a tape that admittedly has a single flat lower surface, can infringe any claims of the 664 patent.

[00:15:21] Speaker 02:
And the district court properly concluded that there were two reasons why it couldn't.

[00:15:25] Speaker 02:
And I want to address the first one, which is lateral edge portion.

[00:15:29] Speaker 02:
There are actually, and the district court construed it consistently with the other language in the claims and the specification and prosecution history.

[00:15:37] Speaker 02:
And there are actually two claim limitations that really are implicated.

[00:15:40] Speaker 02:
there's the lower surface of the lateral edge portion, and then there's the lower surface of the tape body.

[00:15:46] Speaker 02:
And those are two separate and distinct claim limitations.

[00:15:49] Speaker 02:
In fact, the appellants at page 20 of their principal brief acknowledge that the claim distinguishes between the lower surface of the body and the lower surface of each lateral edge portion.

[00:15:59] Speaker 02:
So that means there must be some demarcation point where the lower surface of the tape body ends and the lower surface of the lateral edge portion begins.

[00:16:07] Speaker 02:
And the only disclosure in the specification where the

[00:16:10] Speaker 02:
Speck says the invention is what's shown in the figures, shows a shoulder defining that demarcation point, where one ends and the other begins.

[00:16:18] Speaker 03:
Mr. Meglin, what about the description of a lateral edge as being that portion of the bottom of the tape that is tapered, which is set out pretty clearly as a definition of the lateral edge?

[00:16:37] Speaker 02:
The problem with that, Your Honor, is there's nothing in the claims or the specification that says only the lateral edge portion is the tapered portion.

[00:16:45] Speaker 02:
The claim says the entire tapered edge or lateral edge is tapered, but it doesn't exclude the possibility that the central body portion, the upper surface, has the part that's tapered.

[00:16:57] Speaker 02:
So you can't tie it.

[00:16:57] Speaker 03:
Well, if it does, if it has a portion that is tapered, then it becomes part of the lateral edge, according to the definition of lateral edge as being the tapered portion, right?

[00:17:07] Speaker 02:
Well, but you can't, and the taper part is only on the upper surface, not the lower surface.

[00:17:13] Speaker 03:
I understand, but that defines the lateral edge for purposes of trying to figure out what portion of the tape counts as one of the lateral edges.

[00:17:22] Speaker 02:
But if the tape, the problem is there's the claim, the specs,

[00:17:27] Speaker 02:
leaves the possibility that not only the lateral edge is tapered, but the central body portion is tapered.

[00:17:33] Speaker 02:
And so if both of those different components are tapered, there's no way to tell where the tape body ends and the lateral edge portion begins.

[00:17:42] Speaker 02:
if the only way you're telling is by the tapered portion, because the taper can extend into the central body portion and into the tape body and extend outside the lateral edge portion.

[00:17:52] Speaker 02:
So you can't tell when the lateral edge portion begins and the central body portion ends based on the taper.

[00:18:02] Speaker 02:
In the drawings, all the figures that define the invention show the demarcation point being that shoulder.

[00:18:08] Speaker 03:
And yes, but how about what do you do with the claim differentiation problem with claim seven that says that claim one is narrowed to a situation where you have the recess, the body defines a recess that seems to define the shoulder embodiment.

[00:18:30] Speaker 03:
Why doesn't that suggest that claim one is not limited to a shoulder related embodiment?

[00:18:36] Speaker 02:
Because the claim seven also adds the requirement that the adhesive is disposed in the recess.

[00:18:43] Speaker 02:
So our position would be you might have a shoulder, but it may not be deep enough to hold the adhesive.

[00:18:48] Speaker 03:
So you're saying that claim one reads on and only on tape that has a shoulder but no adhesive inside the shoulder?

[00:18:57] Speaker 02:
Well, it's a claim differentiation.

[00:18:59] Speaker 02:
So claim seven would be narrower so it could read on both.

[00:19:03] Speaker 03:
But your argument is that claim one only covers a product that has a shoulder.

[00:19:10] Speaker 02:
To be more precise, if I wasn't before, Your Honor, our argument is is claim one requires shoulders to act as for counting the adhesive and to act as a demarcation point.

[00:19:21] Speaker 03:
Well, if that's true, then you've just explained why it is that claim seven covers exactly those the shoulder and and

[00:19:31] Speaker 02:
But the adhesive doesn't necessarily have to be disposed completely in the recess.

[00:19:39] Speaker 02:
In other words, the recess could be you could have a shoulder that's not big enough to hold the adhesive or all of it.

[00:19:45] Speaker 02:
And so claim one is broader in the sense that it could hold all the adhesive or could hold just part of it, still act as a cabin a little bit, stop the using out, but it's not big enough to have it completely disposed in it.

[00:19:57] Speaker 02:
So that's the difference.

[00:19:59] Speaker 01:
What about the related 2-9-0 patent that your opposing counsel talked about?

[00:20:05] Speaker 01:
Now that patent, it mentioned shoulders and the claims and the like.

[00:20:08] Speaker 01:
Can you just speak to that?

[00:20:10] Speaker 02:
Absolutely, Your Honor.

[00:20:11] Speaker 02:
There's two different, first of all, one thing I'd like to point out, counsel had tried to argue that the 2-9-0 patent is really related only to the oozing out.

[00:20:21] Speaker 02:
But the 2-9-0 patent, all claims expressly have a beveled requirement.

[00:20:26] Speaker 02:
So that, the claims,

[00:20:28] Speaker 02:
show that it's related.

[00:20:30] Speaker 02:
The invention is really both.

[00:20:31] Speaker 02:
It's the combination of a beveled requirement and this shoulder configuration that I call it.

[00:20:36] Speaker 02:
Number two, in the 290 patent, lateral edge portion does not appear.

[00:20:41] Speaker 02:
The claim term is lateral edge.

[00:20:43] Speaker 02:
It's not lateral edge portion.

[00:20:46] Speaker 02:
So the claim lateral edge portion doesn't appear in the 290 patent.

[00:20:51] Speaker 02:
And finally, I think the important thing is during prosecution of the 664 patent,

[00:20:58] Speaker 02:
there was a non-statutory double patenting rejection.

[00:21:02] Speaker 02:
And we've always recognized it's an obvious enough double patenting rejection.

[00:21:06] Speaker 02:
And it was rejected based over the parent, the 290 patent, and a reference called blank.

[00:21:10] Speaker 02:
And there were two important things.

[00:21:12] Speaker 02:
What they did is they filed a terminal disclaimer.

[00:21:15] Speaker 02:
And in the Simple Air versus Google case, this court said that's a strong clue that there's no patentable distinction between the parent claims and the child claims.

[00:21:24] Speaker 02:
So our position is that's a strong clue that the 664 patent not only has this tapered requirement, but it has this cabin of the adhesive requirement as well.

[00:21:34] Speaker 02:
And one final point on that is if you look at the blank reference, BLANK, that was the secondary reference.

[00:21:40] Speaker 02:
And I'm referring to appendix page 1727.

[00:21:46] Speaker 02:
And what the patent office said about blank is it had flat, they had longitudinal dams on the bottom surface.

[00:21:55] Speaker 02:
And that was to reduce the flow of adhesive.

[00:21:58] Speaker 02:
So even the patent office, in examining the claims of the 664 patents, said there's got to be some structure on the lower surface that acts to cabin the adhesive.

[00:22:09] Speaker 02:
Now, it may be broader than a recess defined by shoulders that can basically have the adhesive completely disposed in it.

[00:22:16] Speaker 02:
But there has to be some structure, because the invention is a combination of the structure on the bottom cabinating the adhesive,

[00:22:24] Speaker 02:
and these beveled edges.

[00:22:26] Speaker 02:
And so that, we think, is further support that the district court's construction, where you need some demarcation points, that the invention includes cabining the adhesive.

[00:22:38] Speaker 02:
And you also need some demarcation points, where the lower surface of the tape body ends and the lower surface of the lateral edge portion begins.

[00:22:45] Speaker 02:
Because otherwise, there's no other way to tell that.

[00:22:48] Speaker 03:
Now, Mr. Miller, could you turn, if you're done with this, could you turn to the

[00:22:54] Speaker 03:
issue of the 220 patent.

[00:22:58] Speaker 03:
Let me ask you a question before you start.

[00:23:02] Speaker 03:
Your covenant not to sue, as I understand it, is a covenant not to sue for either past or present infringement.

[00:23:11] Speaker 03:
As I understand it, you are not covenanting, well, you tell me, are you covenanting not to sue for any of the Superior Mark Tape that may be made, used, or sold in the future?

[00:23:30] Speaker 03:
Yes, Your Honor, and that was- You are saying you are not going to sue in the future on Superior Mark Tape?

[00:23:37] Speaker 02:
I think that's taken care of by the dismissal with prejudice.

[00:23:40] Speaker 03:
No, no, no.

[00:23:43] Speaker 03:
I want to know about your covenant.

[00:23:47] Speaker 03:
If you say it's covered by the dismissal without prejudice, are you promising that you will not sue for future sales, manufacturers, or uses of the Superior Mark Tape?

[00:24:01] Speaker 02:
The answer to that question, Your Honor, is for the Superior Mark Tape that was accused in the case?

[00:24:06] Speaker 04:
Yes.

[00:24:06] Speaker 02:
And here's the reasons why.

[00:24:08] Speaker 02:
And it relates to dismissal, but it also relates to the covenant.

[00:24:11] Speaker 02:
The covenant is that Appendix 1409.

[00:24:15] Speaker 02:
And the covenant not to sue, there's a lot of focus on the first paragraph.

[00:24:18] Speaker 02:
But the second paragraph says, we're also coming that we're going to dismiss with prejudice our infringement claim.

[00:24:25] Speaker 02:
And we did that.

[00:24:26] Speaker 02:
We dismissed it with prejudice.

[00:24:28] Speaker 02:
So once there's that dismissal, there's claim preclusion that applies on the accused product.

[00:24:33] Speaker 03:
Well, that's a question.

[00:24:37] Speaker 03:
Claim preclusion typically at least only applies to products that are in existence are now are in the past doesn't cover future torts.

[00:24:50] Speaker 03:
Now, if you are conceding, and I think I hear you saying that you are conceding, that whether through the covenant or through your understanding of the effect of the dismissal without prejudice, that you will not sue on insight and law on the superior marked tape.

[00:25:11] Speaker 03:
in the iteration that it has at present, then I'm satisfied that you've given up any future right to sue on that.

[00:25:22] Speaker 03:
But I want to be crystal clear on that because I think it's important.

[00:25:25] Speaker 03:
There's a case called Revolution Eyewear in which this, you may be familiar with it, in which this court said that if you're not promising not to sue for future sales,

[00:25:36] Speaker 03:
of sales of products that are made in the future, then that is not good enough to defeat subject matter jurisdiction for a declaratory judgment.

[00:25:48] Speaker 02:
Let me, and I'll be extremely precise with this.

[00:25:50] Speaker 02:
That's an excellent question.

[00:25:51] Speaker 02:
What our understanding is, is for the superior market, which is the tape that was at issue in the lawsuit, they can sell that through the end of the life of the patent.

[00:26:04] Speaker 02:
So any sales

[00:26:06] Speaker 02:
from the past and it sells tomorrow, all the way till the patent expires.

[00:26:10] Speaker 03:
Including Superior Mark Tape that they have not yet manufactured, but is manufactured to the specifications of the current Superior Mark Tape, correct?

[00:26:19] Speaker 03:
Correct.

[00:26:20] Speaker 03:
Okay.

[00:26:20] Speaker 02:
Now, if they, if in six months from now, and I think the patent, by the way, expires in about 18 months, if in six months from now, they come out with a completely new product, but decide to call it Superior Mark Version 2, and it's a completely different product,

[00:26:36] Speaker 02:
Our position wouldn't be under the covenant.

[00:26:39] Speaker 02:
Of course.

[00:26:40] Speaker 02:
But we're talking about the product that they've had that they've been calling superior mark that was the subject of the lawsuit.

[00:26:45] Speaker 02:
Yes.

[00:26:46] Speaker 02:
Okay.

[00:26:47] Speaker 02:
They're until the end of the life of the patent.

[00:26:51] Speaker 04:
All right.

[00:26:54] Speaker 01:
Thank you.

[00:26:55] Speaker 01:
I have one more question on the 664 before you.

[00:26:58] Speaker 01:
I got the impression you're getting a wrap.

[00:27:00] Speaker 01:
You look like you have that look on your face, which is okay look to have.

[00:27:05] Speaker 01:
What about the fact that there are those configurations?

[00:27:09] Speaker 01:
And I think the configurations are embodiments in that pattern.

[00:27:13] Speaker 01:
Only talk about shoulders or recesses for maybe two of them.

[00:27:18] Speaker 01:
Can you address that point in particular?

[00:27:21] Speaker 01:
Do you know what I'm referring to?

[00:27:22] Speaker 01:
I assume you do.

[00:27:23] Speaker 02:
I think if you're referring to, are you referring to the drawings or are you referring to the specification where it talks about the configuration of the invention?

[00:27:32] Speaker 01:
The specification where it talks about like five configurations and then there's... At column one.

[00:27:37] Speaker 01:
At the bottom of column one.

[00:27:38] Speaker 02:
Right.

[00:27:38] Speaker 02:
And again, and I think that if you look at Donald and Speck and the prosecution history, but specifically it's the brief summary of the invention.

[00:27:48] Speaker 02:
And everyone is saying in one configuration of the invention,

[00:27:51] Speaker 02:
And so, our reading of that, which I think is consistent with the other portion of the spec and the claims and the prior patented terminal disclaimer is those aren't separate environments and each one being an invention.

[00:28:04] Speaker 02:
That is configure is like an aspect.

[00:28:09] Speaker 02:
I would use it as the word an aspect of the invention because

[00:28:13] Speaker 02:
If you look at the claims, you look at the 290 parent patent, and you look at what's shown in all the figures that they describe as the invention, the invention is a combination of structure on the bottom that acts as that demarcation point.

[00:28:26] Speaker 01:
Just to clarify, so you're saying you don't equate configuration with embodiment here?

[00:28:31] Speaker 02:
No, and another important reason why is if you look down

[00:28:37] Speaker 02:
So the user work configuration, and then if you look at column one roughly at line 55, they say in one embodiment, the structure is a shoulder that defines a recess that holds the bulk of the adhesive.

[00:28:50] Speaker 02:
And again, I think that's what you're getting into with claim seven, is the bulk of the adhesive.

[00:28:54] Speaker 02:
So, but that shows you they didn't use, there they used embodiment when they wanted to use embodiment.

[00:29:00] Speaker 02:
They didn't use, say, in one embodiment, they used configuration.

[00:29:04] Speaker 02:
So, I think that indicates that the only reasonable reading of that is indicates that there's a difference between embodiment and configuration.

[00:29:10] Speaker 02:
They weren't using configuration to indicate an embodiment.

[00:29:16] Speaker 02:
And so, Judge Cunningham, I hope I answered your question.

[00:29:19] Speaker 03:
Well, one, three lines down from the reference to configuration is the language in one embodiment.

[00:29:27] Speaker 00:
Correct.

[00:29:28] Speaker 03:
Presumably an embodiment of that configuration.

[00:29:30] Speaker 03:
It's in the same paragraph.

[00:29:31] Speaker 03:
Isn't that the reference to embodiment that you were saying was missing?

[00:29:36] Speaker 02:
Right.

[00:29:36] Speaker 02:
And so what I'm saying is so that again, there's a configuration of the invention and so then one embodiment and I guess that duff sells right into what I was saying about claim one and claim seven.

[00:29:45] Speaker 02:
So claim one is talking about the configuration that has this, you know, the recess that is retaining the entire adhesive.

[00:29:54] Speaker 02:
And then if it's in one embodiment, it can hold the bulk of the adhesive.

[00:29:58] Speaker 02:
That's what we're talking about, saying seven.

[00:30:00] Speaker 03:
Are you saying then that the language, in one embodiment, the structure is a shoulder, dot, dot, dot, is, it looks to the casual reader, at least, as if that's the implication of that is that another embodiment does not contain a shoulder.

[00:30:18] Speaker 03:
But you're saying that the two embodiments are the ones with a shoulder that either

[00:30:23] Speaker 03:
retain the bulk of the adhesive or do not?

[00:30:28] Speaker 03:
Is that your position?

[00:30:29] Speaker 02:
Or may not retain the bulk of the adhesive.

[00:30:31] Speaker 02:
They may retain the adhesive, but not the bulk of the adhesive.

[00:30:34] Speaker 03:
That's what I was saying.

[00:30:35] Speaker 03:
All right.

[00:30:35] Speaker 03:
That's your distinction?

[00:30:36] Speaker 02:
Yes.

[00:30:37] Speaker 03:
Okay.

[00:30:38] Speaker 02:
Particularly where you have, on column two, it says figure one of the cross section of the tape of the invention, excuse me, cross section.

[00:30:46] Speaker 02:
And then you look at figure one and it shows the shoulder that acts as that demarcation point.

[00:30:51] Speaker 02:
So, the only way to consistently read through all that is to say, configuration isn't referring to embodiments, it's referring to what I would say is an aspect.

[00:31:00] Speaker 00:
Any final thoughts, Mr. Megley?

[00:31:03] Speaker 02:
No, Your Honor, unless the Court has any further questions, we'll rest on our briefs and the points we've made here today.

[00:31:10] Speaker 00:
Thank you.

[00:31:10] Speaker 00:
Mr. Webber, you have three minutes for rebuttal.

[00:31:16] Speaker 00:
And you need to unmute.

[00:31:26] Speaker 05:
You need to unmute.

[00:31:28] Speaker 05:
All right.

[00:31:28] Speaker 05:
Thank you, Your Honor.

[00:31:31] Speaker 05:
I'm in my 50th year of doing this and I've always learned and I've always adhered to the fact that claims claim and specifications teach.

[00:31:44] Speaker 05:
You don't read extraneous limitations from the specification into the claim.

[00:31:50] Speaker 05:
whether it's a configuration, whether it's called an embodiment, whether those two are intermixed.

[00:31:57] Speaker 05:
At least to me, I didn't write the patent, but at least I know who did.

[00:32:01] Speaker 05:
And at least to me, and I believe to him, those are different.

[00:32:08] Speaker 05:
And if you are, I mean, those are the same.

[00:32:10] Speaker 05:
And if you want to know what's claimed, go to the claim.

[00:32:15] Speaker 05:
That's the reason you should go to the claims of the 290 patent, the parent, and go to the claims of the 664 patent and see that both independent claims, which are 1 and 11 in both patents, start out tracking each other and then go totally separate ways.

[00:32:37] Speaker 05:
One focusing on adhesive ooze and what are we going to do about it?

[00:32:42] Speaker 05:
And that's the 290 patent.

[00:32:44] Speaker 05:
And the other one focusing on the tendency to lift or tear and trying to limit that.

[00:32:51] Speaker 05:
And that's the 664 patent with the tapered edges.

[00:32:56] Speaker 05:
And Mr. Magley, I think Ms.

[00:32:59] Speaker 05:
Spoke a little bit when he said, you know, the tapered edges were in the claims that I referenced in the 290 patent.

[00:33:07] Speaker 05:
If you look at 290 patent claims 111, they say that starting off, they talk about a body, the body having a pair of lateral edges disposed in the longitudinal direction.

[00:33:20] Speaker 05:
Lateral edges, it doesn't say anything more about the lateral edges for the entire rest of the claim.

[00:33:31] Speaker 05:
It's just there to get you the feel for the structure.

[00:33:35] Speaker 05:
But there's more to this covenant not to, you know, to the issue of the 220 patent than this covenant not to sue.

[00:33:44] Speaker 05:
And I'd like to be heard on that.

[00:33:46] Speaker 05:
The, you know, MedImmune again says, look at all the circumstances.

[00:33:51] Speaker 05:
Look at the prejudice to Low.

[00:33:53] Speaker 05:
Yeah, Mr. Low may be able to continue to make a product that he has every right to make because he designed around their earlier patents and all and gave them a roadmap how to sue him again.

[00:34:07] Speaker 05:
But it's impeding the entire market.

[00:34:13] Speaker 05:
This whole market, consumers are not given the opportunity to have these things at fair or decent price.

[00:34:20] Speaker 05:
You know, there's prejudice to low, there's prejudice to the market.

[00:34:25] Speaker 05:
And this isn't the, and there's no stated reason for the dismissal that was ever given by Mr. Magley either today or in any of his briefing.

[00:34:37] Speaker 05:
The only reason was, well, we looked at the volumes of sales and it wasn't worth it.

[00:34:44] Speaker 05:
Well, you should have known that when you filed suit against us immediately upon that patent issuing.

[00:34:51] Speaker 05:
And that's not really a justifiable reason.

[00:34:54] Speaker 05:
And the litigation was near its end.

[00:34:59] Speaker 05:
We'd done briefing, we'd done all of our positions, we'd done our discovery, and we would done summary judgment motion.

[00:35:10] Speaker 00:
Thank you, Mr. Weber.

[00:35:13] Speaker 00:
This argument is also at an end.

[00:35:16] Speaker 00:
We wish you many more than 50 years of practice, but this case is submitted.

[00:35:22] Speaker 05:
All right.

[00:35:23] Speaker 05:
Thank you.

[00:35:23] Speaker 05:
The Honorable Court is adjourned until tomorrow morning at 10 a.m.