[00:00:00] Speaker 03:
The first case for argument this morning is 22-1167, Handwit v. Corning.

[00:00:06] Speaker 03:
Mr. Melinda.

[00:00:09] Speaker 04:
Good morning, Your Honors.

[00:00:09] Speaker 04:
May it please the Court?

[00:00:12] Speaker 04:
I'd like to focus my time today on the choosing for use limitation.

[00:00:16] Speaker 04:
And with respect to that limitation, the case for reversal is straightforward here.

[00:00:22] Speaker 03:
I'll direct you to... Can I just ask, as a preliminary matter, we've got essentially two issues here.

[00:00:27] Speaker 03:
We've got the order of the steps and the construction of choosing.

[00:00:33] Speaker 03:
Do we have to reach both of them?

[00:00:34] Speaker 03:
Like, if we were to find, conclude hypothetically that, yes, this order, one, two, three, is required, is it still necessary for purposes of infringement to determine the construction of choosing or not?

[00:00:48] Speaker 04:
If we went on one of those terms, the case goes back and we proceed with discovery.

[00:00:51] Speaker 01:
What about the reverse?

[00:00:54] Speaker 01:
If you lose on one of them, do we need to decide the other?

[00:00:58] Speaker 04:
You do, Your Honor.

[00:00:58] Speaker 04:
Yes.

[00:00:59] Speaker 04:
If we win on one of them, the case goes back.

[00:01:00] Speaker 04:
So if we lose on one, we win on the other, the case goes back.

[00:01:04] Speaker 03:
So we need to decide both.

[00:01:05] Speaker 03:
You do, Your Honor.

[00:01:07] Speaker 03:
All right.

[00:01:09] Speaker 03:
Proceed.

[00:01:10] Speaker 04:
OK.

[00:01:10] Speaker 04:
As I mentioned, I'll be focusing on the choosing-for-use limitation.

[00:01:14] Speaker 04:
The case for reversal is straightforward here.

[00:01:16] Speaker 04:
I know there are a lot of hyper-technical arguments.

[00:01:18] Speaker 04:
But the bottom line is that on page 821,

[00:01:22] Speaker 04:
The district court provided absolutely no evidence or reasoning in support of its conclusion in support of its construction.

[00:01:29] Speaker 04:
This alone mandates reversal.

[00:01:30] Speaker 04:
There's no evidence.

[00:01:31] Speaker 04:
There's no intrinsic evidence.

[00:01:33] Speaker 04:
There's no extrinsic evidence supporting it.

[00:01:35] Speaker 04:
And there's no reasoning at all.

[00:01:37] Speaker 03:
Well, as far as the intrinsic evidence, I mean, we're looking at the claim language.

[00:01:41] Speaker 03:
And we're looking at whatever you point to in the SPAC.

[00:01:44] Speaker 04:
Yes, Your Honor.

[00:01:47] Speaker 04:
The court cites the norm of it.

[00:01:50] Speaker 04:
So basically the court's decision on choosing free use is, I don't agree with Panduit.

[00:01:55] Speaker 04:
I don't agree with Panduit.

[00:01:55] Speaker 04:
I don't agree with Panduit.

[00:01:57] Speaker 04:
But then it doesn't say why it actually agrees with Corning.

[00:02:01] Speaker 01:
Why should that matter on what I think everybody agrees is a question of law?

[00:02:06] Speaker 04:
It is a question of law, but it has to be supported by evidence.

[00:02:08] Speaker 04:
And we have plain language in the specification that actually guides us to the result here.

[00:02:13] Speaker 01:
I'm sorry, is there an appellate practice or

[00:02:17] Speaker 01:
jurisdiction principle that says on a pure question of law, so this is not factual question governed by Rule 52 with a need for findings, that a district court that simply says, I conclude that this law means the following, that somehow we have to send it back, as opposed to decide whether that legal source means or doesn't mean that on our own.

[00:02:46] Speaker 04:
You, of course, Your Honors, are empowered to do that as a question of law.

[00:02:49] Speaker 04:
We know that.

[00:02:51] Speaker 04:
But with respect to what the district court did, we just don't know.

[00:02:53] Speaker 04:
We don't know why the district court held in favor of corning that choosing effectively means determining here.

[00:02:59] Speaker 04:
The court cited no evidence and provided no reasoning.

[00:03:02] Speaker 04:
And the claim construction cases say that a district court should explain its decision.

[00:03:07] Speaker 04:
And it cites to nothing.

[00:03:09] Speaker 04:
We have no idea why it chose determining.

[00:03:11] Speaker 01:
My very recollections, I guess I can think of literally a handful of cases where we sent a claim construction ruling back for reconsideration for insufficient explanation.

[00:03:24] Speaker 01:
But I think in each one of them we said, what we're doing here is really pretty unusual.

[00:03:29] Speaker 01:
So why should this be that unusual situation?

[00:03:33] Speaker 04:
Even if you

[00:03:35] Speaker 04:
even if you're reading of the law, Your Honor, which it sounds like it is, is that the court did not need to provide any reasoning.

[00:03:39] Speaker 04:
It was nonetheless incorrect anyway.

[00:03:41] Speaker 04:
And so I'd like to focus on why it was incorrect.

[00:03:43] Speaker 03:
Well, can you?

[00:03:45] Speaker 03:
Are you referring to several opinions?

[00:03:48] Speaker 03:
Are you referring to the one?

[00:03:49] Speaker 04:
821, Your Honor.

[00:03:50] Speaker 04:
821.

[00:03:52] Speaker 03:
821.

[00:03:54] Speaker 04:
At the back of the blue brief.

[00:03:59] Speaker 04:
At 821, all the court says

[00:04:01] Speaker 04:
The court finds that the initial portion of defendant's proposed construction determining that the measured fiber will be used serves to properly elaborate the terse plain language in order to understand and explain.

[00:04:11] Speaker 03:
But I don't know.

[00:04:11] Speaker 03:
That's preceded by a discussion of sorting and choosing and all of this stuff.

[00:04:16] Speaker 03:
That's why I was confused with what you said.

[00:04:18] Speaker 03:
There's stuff that precedes that, like several pages during A14, right?

[00:04:22] Speaker 04:
Those are rejecting our arguments, and I'll get to why that was wrong.

[00:04:26] Speaker 04:
But then why it affirmatively chose determining, which is an undefined term.

[00:04:30] Speaker 04:
The specification uses the term determining, but it doesn't illuminate what choosing means.

[00:04:35] Speaker 04:
That's the problem.

[00:04:36] Speaker 04:
Well, that's the first problem.

[00:04:37] Speaker 03:
Well, I thought the issue before her was really, the essence of the issue was whether or not choosing was selecting or it included sorting and verify.

[00:04:47] Speaker 04:
That is an issue, but the problem is her actual construction didn't even include selecting.

[00:04:51] Speaker 04:
That's where this becomes really confusing.

[00:04:53] Speaker 04:
So first, she equated selecting, which is in the preamble, with choosing.

[00:04:57] Speaker 04:
And then she didn't use selecting in her actual construction.

[00:04:59] Speaker 04:
The court instead used determining.

[00:05:03] Speaker 04:
So it actually excluded selecting as well.

[00:05:04] Speaker 04:
And the problem with that is that, so we have one sentence in the specification, a column two, lines 59 through 61.

[00:05:11] Speaker 04:
And what that line in the specification says is that when implemented as a test algorithm, which is what this is, it can be used to select fiber, sort fiber, or verify fiber performance.

[00:05:23] Speaker 04:
These are three overlapping terms.

[00:05:25] Speaker 04:
And this is what people of skill in the art do.

[00:05:27] Speaker 04:
When they have a pile of fibers in front of them and they want to choose them,

[00:05:31] Speaker 04:
they select, they sort, and they verify to check.

[00:05:36] Speaker 03:
You just ran over, and that's what this is, a test algorithm.

[00:05:40] Speaker 03:
There's nothing of that, none of those words that appear in the claim itself, right?

[00:05:45] Speaker 04:
Well, it says choosing for use in a community.

[00:05:49] Speaker 04:
Actually, the exact words are

[00:05:51] Speaker 04:
Choosing for use in the communications network comprising.

[00:05:54] Speaker 04:
Exactly.

[00:05:55] Speaker 04:
So what you're doing is you're testing as part of the process of choosing fibers for use in a communication network.

[00:06:06] Speaker 04:
That's what you're doing.

[00:06:06] Speaker 00:
I was just going to ask, you said that these are three overlapping terms, a point which I can understand.

[00:06:13] Speaker 00:
But also you argue in your briefing that there's three different embodiments disclosed in this sentence.

[00:06:20] Speaker 00:
Correct, Your Honor.

[00:06:22] Speaker 00:
So it's kind of odd to have three different overlapping embodiments, isn't it?

[00:06:26] Speaker 00:
I mean, we're just trying to figure out what is the best clank destruction here according to one person of ordinary scale in the art.

[00:06:32] Speaker 00:
And here, there's three different embodiments, right?

[00:06:36] Speaker 04:
That's right, Your Honor.

[00:06:37] Speaker 04:
And whether they're called embodiments or they call them uses,

[00:06:40] Speaker 04:
The case law used those as really interchangeable.

[00:06:43] Speaker 00:
Why don't we look at those claims, which do have a preamble that says selecting, and then there's the last step of this method is determining, or not determining, sorry, is choosing.

[00:06:56] Speaker 04:
It's choosing, choosing.

[00:06:58] Speaker 04:
This is exactly the problem with the court's construction, though, is that now we have all of these terms and we have one that the court used that's not even defined, which is determining.

[00:07:07] Speaker 00:
I hear what you're saying.

[00:07:09] Speaker 00:
So if the argument is, well, you can't ignore some of these other uses or embodiments, but isn't it true that a patent owner could choose to specifically claim one of those embodiments?

[00:07:21] Speaker 00:
And why isn't it incorrect that choosing most clearly is associated with the selecting use or embodiment?

[00:07:28] Speaker 04:
They can, Your Honor, but this one sentence in the specification really helps get us there because it includes all three.

[00:07:33] Speaker 04:
And the reason is because that's what one of Skill in the Art does.

[00:07:37] Speaker 04:
When they're choosing fibers for use in a communications network, they select, they sort, and they verify using this DMD shift metric analysis.

[00:07:47] Speaker 03:
They do all three of those things.

[00:07:48] Speaker 03:
The key difference between what you said is you use the word and, and the specification uses the word or.

[00:07:54] Speaker 04:
Yes, Your Honor.

[00:07:55] Speaker 04:
or as a conjunction, and I don't think it's limiting here.

[00:07:58] Speaker 04:
In this case, all that's being said here is you can select, you can sort, or you can verify.

[00:08:06] Speaker 04:
So really, it's just any one of those three or all of those three.

[00:08:09] Speaker 04:
It's not limiting.

[00:08:10] Speaker 04:
It's not to the exclusion of the others.

[00:08:11] Speaker 03:
But to Judge Dole's point, which is that's fine that that's what the abstract says, but how do we know it's necessarily what is being claimed and the claims that are at issue here?

[00:08:23] Speaker 04:
Because that's one of skill in the art does.

[00:08:24] Speaker 04:
One of skill in the art does is look at fibers.

[00:08:28] Speaker 04:
applied the DMG shift metric and as part of that choosing process does all three of these things as a practical matter.

[00:08:34] Speaker 01:
Why do you keep using the word choosing all by itself when it comes with choosing to use?

[00:08:41] Speaker 01:
Choosing for use.

[00:08:41] Speaker 01:
Which seems to me to go quite a long way towards saying oh we really are talking about something other than testing or classifying for our internal purposes that this is the

[00:08:57] Speaker 01:
end stage choice until it goes out to the customer.

[00:09:01] Speaker 04:
But that's exactly why you're doing this.

[00:09:03] Speaker 04:
You're doing that testing in order to choose which ones

[00:09:06] Speaker 04:
go in one pile and which ones go in another pile.

[00:09:08] Speaker 04:
And as part of that, you're going to sort them, you're going to select them, and then you're going to verify that there's a negative DMG shift, which is the whole point of this invention.

[00:09:15] Speaker 01:
And you think the phrase choosing to use something includes testing something and then deciding not to use it?

[00:09:25] Speaker 04:
100%.

[00:09:25] Speaker 04:
If it doesn't satisfy the metric, then you have to put those in a different pile.

[00:09:29] Speaker 01:
This doesn't say choosing whether to use.

[00:09:31] Speaker 01:
It says choosing to use.

[00:09:33] Speaker 04:
Well, I'm going to choose the ones that are negative.

[00:09:35] Speaker 04:
which I think by implication says I'm not going to choose the ones that are positive.

[00:09:40] Speaker 04:
And I think what's really crucial about this is that the district court actually almost got to our construction.

[00:09:45] Speaker 04:
So with respect to choosing, for example, with respect to selecting, the district court said, oh yeah, those two terms are synonymous.

[00:09:53] Speaker 04:
It said that in its decision.

[00:09:54] Speaker 04:
It also said the same thing for sorting.

[00:09:56] Speaker 00:
I'm having a little bit of a hard time because choosing for use versus sorting for use.

[00:10:04] Speaker 00:
doesn't have a clear distinction.

[00:10:06] Speaker 00:
I'm having a hard time wondering why this construction matters for purposes of infringement.

[00:10:11] Speaker 00:
Can you elaborate on that a little bit for me?

[00:10:13] Speaker 04:
Why it matters for infringement?

[00:10:15] Speaker 00:
Yes.

[00:10:15] Speaker 00:
Well, I mean, you know, we're not supposed to provide advisory claim construction, so it's hard to understand.

[00:10:20] Speaker 00:
It seems as if something that's being chosen for use is also being sorted for use.

[00:10:25] Speaker 00:
So my question is, why does it matter?

[00:10:28] Speaker 04:
Because we had conceded below that if we were under the court's construction that we could not demonstrate infringement under the facts that we knew.

[00:10:35] Speaker 04:
Because we had been given some preliminary discovery from Corning.

[00:10:38] Speaker 04:
And based upon the court's construction, we concluded that we would not be able to demonstrate infringement based upon that.

[00:10:44] Speaker 04:
Based upon the discovery at that time, we make a discovery in the future that may change our view.

[00:10:48] Speaker 04:
But as far as we knew at that time.

[00:10:49] Speaker 01:
Can you tell us anything more concrete about why?

[00:10:51] Speaker 01:
I know it's not part of the stipulation.

[00:10:54] Speaker 04:
I wish I could, Your Honor.

[00:10:56] Speaker 04:
It's highly confidential.

[00:10:57] Speaker 04:
It's a top secret process, which made this more challenging.

[00:11:00] Speaker 04:
But I just want to go back to the issue that the district court actually determined that selecting and sorting are both synonyms.

[00:11:07] Speaker 04:
They're both synonymous with choosing.

[00:11:09] Speaker 04:
That gets us 2 thirds of the way there, where the court

[00:11:12] Speaker 04:
ended up being hung up was on the issue of verifying.

[00:11:15] Speaker 04:
And then on the issue of verifying, really, all this is is a simple, does it have the negative DMD shift, or does it not?

[00:11:24] Speaker 04:
And if it has a negative one, we have verified that we may move forward with these fibers.

[00:11:28] Speaker 03:
So you think choosing and verifying are synonyms?

[00:11:31] Speaker 04:
I believe that based on the patent specification, they're encompassed within that choosing process, absolutely.

[00:11:37] Speaker 03:
Your interior is on the left and the other side.

[00:11:40] Speaker 04:
Thank you, Your Honors.

[00:11:43] Speaker 02:
May I proceed, Your Honor?

[00:11:44] Speaker 02:
Good morning.

[00:11:46] Speaker 02:
Yes.

[00:11:46] Speaker 02:
Thank you, Judge Frost, and may it please the Court.

[00:11:48] Speaker 02:
Gregory Rackaway from Kellogg-Hanson for Corning, Incorporated.

[00:11:52] Speaker 02:
The patented issue claim a method for selecting purportedly high-performing optical fibers using a metric.

[00:11:57] Speaker 02:
And to perform that method, a person of skill needs to calcate the metric and then use it to select fibers.

[00:12:03] Speaker 02:
That is, that result followed from the claim language.

[00:12:06] Speaker 02:
It is supported by the specifications, and it is all this Court needs to affirm.

[00:12:10] Speaker 02:
I will follow counsel's lead in skipping to the second question, if that's acceptable to the court.

[00:12:16] Speaker 02:
But if you have questions about the first issue, I'm, of course, prepared to address them.

[00:12:22] Speaker 02:
And the district court correctly construed the claims to require at the choosing step of the method a determination whether or not the measured fiber will be used in a communications network.

[00:12:31] Speaker 02:
That is the ordinary meaning of choosing for use in such a network.

[00:12:34] Speaker 02:
The claim method is to take the measurements, subtract to find the metric, and then use the result of the metric to choose which fibers will be used in the network.

[00:12:43] Speaker 00:
Do you agree, though, that here, in this circumstance, choosing for use could also include sorting, because you're sorting which ones are being used and which ones are not being used?

[00:12:54] Speaker 02:
So I think I would answer that with a yes or a but.

[00:12:58] Speaker 02:
So there's certainly a sense of sorting that overlaps as this has been observed with choosing.

[00:13:04] Speaker 02:
You could sort piles into two fibers and say we're using this pile, we're not using that pile.

[00:13:08] Speaker 02:
That in that case, you are choosing them for use, you're sorting them, and you're also, within the district court's claim construction, you are determining whether the fibers will be used.

[00:13:15] Speaker 02:
If they're in the pile with the negative DMD shift, those are the fibers you're going to use.

[00:13:19] Speaker 02:
That's not inconsistent with what the district court said.

[00:13:21] Speaker 01:
So for example, sorry about this, but the sorting hat at Hogwarts is actually doing both.

[00:13:29] Speaker 01:
It's both putting people into groups and determining where they will actually go.

[00:13:34] Speaker 01:
Sorting covers, in that situation, both, but not always.

[00:13:39] Speaker 02:
You would be determining which students would go to House Gryffindor or to House Slytherin, and in that meaning of sorting, it's the same as determining and the same as choosing and the same as picking, and you could have five other common English language words.

[00:13:52] Speaker 02:
I don't think it's a particularly complicated concept.

[00:13:53] Speaker 01:
I think there's a lot of unnecessary... But why isn't applying the metric to verify

[00:13:59] Speaker 01:
whether a particular fiber has the negative property on the road to deciding whether to use it a form of choosing for use, which I mistakenly said earlier that it says choosing to use.

[00:14:15] Speaker 01:
It doesn't.

[00:14:16] Speaker 01:
It says choosing for use, which is rather close to choosing whether to use.

[00:14:20] Speaker 01:
Why isn't applying the metric to verify the property of a fiber that is in front of you already

[00:14:28] Speaker 01:
part of that.

[00:14:30] Speaker 02:
So I think, Your Honor, that if you are verifying and then you are not using the fibers that fail verification, you are within the district court's construction.

[00:14:38] Speaker 02:
You are determining whether the measured fibers will be used.

[00:14:42] Speaker 02:
And I agree that, again, that meaning of verification would be consistent with the plain language of the patent and would be consistent with the district court's construction.

[00:14:51] Speaker 02:
What is not consistent with the district court's construction, and what Penduit argued below, is that you could measure

[00:14:58] Speaker 02:
You could measure, subtract, verify, leaving out the step order issue, but measure, subtract, verify, and then use the fiber anyway, and use that verification to feed back into your manufacturing process.

[00:15:08] Speaker 02:
And I respectfully disagree with counsel's question that why this matter is- You say use that fiber anyway or not use that fiber?

[00:15:15] Speaker 02:
If you do use the fiber regardless of the result, then you're not practicing the patent because you're not determining whether it's going to be used.

[00:15:21] Speaker 02:
If whether you use the fiber depends on the result, then you are determining whether the fiber will be used, and you are within the patent.

[00:15:28] Speaker 02:
And I would refer the court to appendix 101 and 101 and to appendix 133 for a discussion of why this matters, because it's not all confidential.

[00:15:39] Speaker 02:
And some of it was discussed on the record by the magistrate judge and then by counsel for pen literal arguments.

[00:15:44] Speaker 02:
You said page 101?

[00:15:45] Speaker 02:
100 to 101 and then 133.

[00:15:49] Speaker 02:
And I think if you go and look there, you'll see first the magistrate's description of the argument at 100 to 101.

[00:15:55] Speaker 02:
says that Panduit is trying to assert that Corning is engaged in measurement and selection, which dictate how future fibers will be manufactured.

[00:16:06] Speaker 01:
I'm sorry, where on those two pages is that?

[00:16:09] Speaker 02:
I'm sorry, there are too many words.

[00:16:19] Speaker 01:
I see the middle of page 101, I think.

[00:16:21] Speaker 02:
Yes, Your Honor.

[00:16:25] Speaker 02:
If I may also refer, Your Honor, to Appendix 133, which is a direct statement by Appendix Council as to what they are talking about.

[00:16:36] Speaker 02:
He made this argument, this is Line 5 of Appendix 133, it's iterative, it's a looping process.

[00:16:43] Speaker 02:
We look at how good it is, and he's describing what they allege that Corning does.

[00:16:48] Speaker 02:
look at how good it is and how we might improve that, then we take information from the manufactured fiber and we feed it back into the manufacturing process.

[00:16:54] Speaker 02:
So that's what they claim they can prove.

[00:16:57] Speaker 02:
You're going to use the fiber anyway, but you're going to use the information to improve your future manufacturing.

[00:17:04] Speaker 02:
And that is what is outside the assertive patent.

[00:17:07] Speaker 02:
It is within other patents that were issued but not asserted in this case.

[00:17:12] Speaker 02:
And we set those in our brief.

[00:17:14] Speaker 02:
But that use of improving the process in the future,

[00:17:18] Speaker 02:
is not within the claim because it does not involve choosing whether the measured fiber will be used.

[00:17:24] Speaker 02:
And under the district court's construction, it doesn't involve determining whether the measured fiber will be used.

[00:17:29] Speaker 02:
The fiber, to use your honor's analogy, all winds up in House Gryffindor regardless.

[00:17:33] Speaker 02:
And maybe the hat uses that information to decide whether future students, who Hogwarts will recruit in the future.

[00:17:41] Speaker 02:
Analogies are dangerous, but that's the distinction that I think is at work here.

[00:17:48] Speaker 02:
And so the way that I would frame the distinction that the district court drew, and this is why the word determining is helpful, like sorting fibers by DMV shift, if you're not determining whether to use the fibers, is not choosing them for use.

[00:18:06] Speaker 00:
You keep on talking about the claim covering when you don't choose something for use.

[00:18:10] Speaker 00:
I think all this claim covers is that at least one time the method has to choose for use something that satisfies this criteria.

[00:18:17] Speaker 00:
Why am I wrong?

[00:18:18] Speaker 00:
It doesn't have something about not choosing something.

[00:18:22] Speaker 02:
I think what's necessary, Your Honor, is that the claim has to be choosing for use those fibers in which the result is negative.

[00:18:30] Speaker 02:
And I would read that to mean that you are choosing the fibers for use

[00:18:35] Speaker 02:
if the result is negative, not only because I think that's the best reading of the language, but also because I think it is the way to get the benefit of the asserted metric.

[00:18:45] Speaker 02:
And I'd like to make clear for the record that my client would ultimately disagree that this metric is of any use at all.

[00:18:51] Speaker 02:
I don't want to be heard as conceding that.

[00:18:52] Speaker 02:
But for purposes of this appeal, we assume the metric is useful.

[00:18:55] Speaker 02:
We assume that Panduit has this discovery that negative DMD shift in fibers actually perform better.

[00:19:04] Speaker 02:
And they are teaching a person of skill how to select fibers.

[00:19:08] Speaker 02:
They're saying, select the fibers in which the DMD shift is negative.

[00:19:13] Speaker 02:
The implication, Your Honor, I think, is don't select the fibers in which the DMD shift is positive.

[00:19:18] Speaker 02:
Otherwise, if you're choosing fibers of both kinds indiscriminately... But the claim doesn't say that.

[00:19:22] Speaker 00:
And it's a comprising claim, right?

[00:19:24] Speaker 00:
I just want to make sure that's clear.

[00:19:26] Speaker 00:
That's just not normally how you would need a claim.

[00:19:29] Speaker 00:
It's just talking about there has to be choosing for use these particular fibers, but it doesn't say not choosing other fibers.

[00:19:35] Speaker 00:
That's not expressly in the claim.

[00:19:38] Speaker 02:
I will say that I think it's an implication from the structure and purpose, Your Honor, and I will concede that it does not have the phrase choosing whether to use, it does not have the phrase not choosing fibers in which result is negative.

[00:19:51] Speaker 02:
But I do think that when you read the patent as a whole, in light of the language in the preamble, which talks about selecting, which is contrasted in specification to sorting and verifying, and you use that as context.

[00:20:04] Speaker 00:
I understand what you're saying, but in the context of how patent law usually operates,

[00:20:08] Speaker 00:
This method could be incorporated into a method that has a lot of other criteria that's being considered for whether to choose an optical fiber.

[00:20:15] Speaker 00:
And it could be that it's more elaborative than just these three steps.

[00:20:20] Speaker 00:
And this is a comprising claim.

[00:20:22] Speaker 00:
So I'm not really comfortable with the way you're interpreting the claim in this respect.

[00:20:27] Speaker 00:
But I think the issue before us today is simply, what does choosing for use in a communications network mean?

[00:20:32] Speaker 00:
And whether that would encompass more than selecting.

[00:20:35] Speaker 00:
and would encompass things like sorting and verifying, right?

[00:20:39] Speaker 02:
And I agree, but I think that if the result is irrelevant to whether it is chosen, you are not choosing those fibers for use in which the result is negative.

[00:20:50] Speaker 02:
I think that the phrase in which the result is negative implies that the metric plays a role in the choice.

[00:20:58] Speaker 02:
And if Your Honor disagrees with me on that, I would

[00:21:02] Speaker 02:
fall back, I guess, on preamble, the use of the word selection, which is, I think, not really disputed that selection in this context means purposeful selection.

[00:21:14] Speaker 02:
And that is what was certainly alleged in the complaint, as we pointed out in our brief, that they went to a great deal of trouble in their complaint to show that Corning had to be purposefully selecting these fibers, or the results that they claimed to have obtained couldn't have happened.

[00:21:29] Speaker 02:
And then they found out that Corning was not purposefully selecting those fibers,

[00:21:32] Speaker 02:
or at any rate they can see that they can't prove it at this present stage of discovery to be precise about that.

[00:21:37] Speaker 02:
And so now we are talking about a reading of the method that has nothing to do with purposeful selection but could be satisfied by a happy accident or a guess or a hope or a prayer as the district court put it.

[00:21:48] Speaker 02:
I don't think that's consistent with the best reading of this patent applying the ordinary principles of claim construction which do include looking at the preamble, do include looking at the specification, and I think do include looking at the purpose in the context of a method claim.

[00:22:02] Speaker 02:
point of this court's recent opinion on Eli Lilly that talks about how the preamble often does... We don't really think the preamble here is limiting, but if you wanted to look at it that way, you could certainly also say, this is a preamble that tells you what the method does.

[00:22:15] Speaker 02:
This is a method for selecting.

[00:22:17] Speaker 02:
And in that context, you have to be using the metric for that purpose of selection.

[00:22:26] Speaker 02:
I'd also like to touch.

[00:22:27] Speaker 03:
Well, the difficulty is, and we've got cases that generally say, forget whether this is an embodiment or not an embodiment, but cases that say, in the context of discussing and describing the present invention or the abstract, we take that language more seriously because they're really talking about this invention.

[00:22:45] Speaker 03:
And this invention in the abstract and under the title present invention, I think,

[00:22:51] Speaker 03:
does include the other terms of verifying and sorting.

[00:22:55] Speaker 03:
So why isn't that impactful in terms of construing the plain language itself?

[00:23:00] Speaker 02:
So for several reasons, Your Honor.

[00:23:03] Speaker 02:
First, I would point out that this is clearly not a patent in which

[00:23:08] Speaker 02:
the description in the specification covers, or rather, that is to say, in which the claimed method covers all descriptions of the use of the D-up-D-shift metric in the specification.

[00:23:18] Speaker 02:
Because we know that manufacturing and designing, which are in the specification, and I believe in the abstract.

[00:23:25] Speaker 03:
Just as an aside, do you agree with your friend that as a test algorithm describes what's going on in this plane?

[00:23:31] Speaker 02:
I mean, it's kind of a vague phrase, Your Honor.

[00:23:35] Speaker 02:
I'm not sure that the phrase test algorithm, which isn't in the claim.

[00:23:38] Speaker 02:
I mean, if you say test in the sense of testing whether you're going to use the fiber or not, then I would agree, yes.

[00:23:45] Speaker 02:
You're testing whether this fiber passes the criterion that you're going to use to decide whether you're going to put it in a network or not.

[00:23:51] Speaker 02:
But if you're saying a test algorithm in the broader sense that I believe you want to use it of, we're going to test

[00:23:58] Speaker 02:
And then we're going to take the results of that test, and maybe we'll tweak our manufacturing process down the line.

[00:24:02] Speaker 02:
That would be covered by the unasserted patents, which cover manufacturing and design.

[00:24:06] Speaker 02:
It is something that's possibly contemplated by the specification, but it's not within the plain language of this claim.

[00:24:13] Speaker 02:
And also I want to point out that in the district court, Panduit had previously advanced a construction that included using for purposes of design, and specifically dropped that in their

[00:24:26] Speaker 02:
claim construction briefing abandoned, the idea that use for design was within the language of this patent.

[00:24:31] Speaker 01:
What is the status of the unassertive patents, which I guess Pandewitt tried to add to this case and was rebuffed?

[00:24:40] Speaker 02:
Yes.

[00:24:40] Speaker 02:
Those patents are out of the case, Your Honor, because there was a motion to amend them.

[00:24:43] Speaker 01:
In some case, somewhere?

[00:24:45] Speaker 02:
I am not aware of any litigation that's been brought involving those patents.

[00:24:50] Speaker 02:
But they're out of this case because there was a motion to amend to add them, and that was denied, and that has not been appealed.

[00:24:57] Speaker 02:
So I think that the role they do play in this case is showing that Penduit could very easily have included manufacturing design or indeed sorting and verifying claims.

[00:25:08] Speaker 02:
It could have written those if it wanted to write them.

[00:25:10] Speaker 02:
But what it actually patented in these patents that are asserted are methods for selecting with trivial variations between the two.

[00:25:19] Speaker 02:
And that's what it shows to assert in this claim.

[00:25:21] Speaker 02:
And so that I think is ultimately what it's got to prove, the kind of choosing that is consistent with selecting.

[00:25:25] Speaker 03:
In general principles of construction, when we're considering statutes and so forth, if you use different words there's an assumption, a presumption, that you mean different things, otherwise you would have used the same word.

[00:25:37] Speaker 03:
So are we not to give any credence to the fact that they use selecting and then choosing, that the two words mean different things?

[00:25:46] Speaker 02:
I have two answers to that, Your Honor.

[00:25:47] Speaker 02:
The first is that I don't think that presumption applies to a non-limiting preamble because non-limiting preambles are often duplicative.

[00:25:52] Speaker 02:
So if you think they're right that the preamble isn't limiting, you shouldn't draw any inference from the use of the different language.

[00:25:59] Speaker 02:
But, okay, suppose the preamble is limiting.

[00:26:01] Speaker 02:
Then the result is that they have to prove both the purpose of selection and whatever choosing means, and we still win.

[00:26:08] Speaker 02:
Because if the two words do have different meanings and the preamble is limiting,

[00:26:12] Speaker 02:
then you would affirm on the basis that they have to show selection.

[00:26:14] Speaker 02:
Selection, I don't think it's really disputed, would definitely involve determining whether to use.

[00:26:20] Speaker 02:
If the court has further questions, I'm prepared to address them.

[00:26:26] Speaker 02:
But otherwise, we would respect their request that the judgment be affirmed.

[00:26:30] Speaker 01:
Thank you.

[00:26:31] Speaker 02:
Thank you, Your Honors.

[00:26:34] Speaker 04:
OK, Your Honors, I just have a few things to address from my opposing counsel.

[00:26:38] Speaker 00:
Mr. Rolanda, I do have one question.

[00:26:40] Speaker 00:
Absolutely.

[00:26:47] Speaker 00:
Which is that the preamble argument.

[00:26:51] Speaker 00:
I'm not sure I've really heard you address that.

[00:26:53] Speaker 00:
I don't know that I think that the preamble has to be limiting or not limiting, and I'm not sure that matters.

[00:26:58] Speaker 00:
But here you've got a preamble that says a method for selecting, which does suggest that that last step where it says choosing should be something like selecting.

[00:27:08] Speaker 00:
And you've got a specification that uses those three words, selecting, sorting, and verifying, suggesting they're different things.

[00:27:15] Speaker 00:
So I just want to make sure you address the preamble.

[00:27:17] Speaker 00:
Because lots of times your preamble, there is a decent argument there.

[00:27:23] Speaker 00:
I think it's the strongest argument against you is that choosing is more like selecting and doesn't include verifying and sorting because of the preamble.

[00:27:33] Speaker 04:
So I guess there are a couple of problems.

[00:27:34] Speaker 04:
First, the court equated selecting with choosing, limiting choosing very narrowly.

[00:27:41] Speaker 04:
Selecting is subsumed within choosing.

[00:27:43] Speaker 04:
It's one of several options that we have in the magic part of the specification column two lines 59 through 61.

[00:27:50] Speaker 04:
The court equated the two rather than putting selecting under choosing.

[00:27:54] Speaker 04:
And as a consequence, read out sorting and verifying.

[00:27:57] Speaker 04:
They basically took away two of those uses or embodiments that are in that language.

[00:28:02] Speaker 04:
And that's just not the way people with skill in the art do it.

[00:28:04] Speaker 04:
So not only did the court disregard what the spec does, but disregarded what people actually do in the field, which is they select, they sort, and they verify.

[00:28:15] Speaker 04:
But here's the funny irony of all of this.

[00:28:16] Speaker 04:
The court equated selecting and choosing, but then used determining, did not actually use selecting.

[00:28:23] Speaker 04:
So even if you were to agree with this argument, at the end of the day, the court didn't even go with what it had limited.

[00:28:30] Speaker 04:
And this is what's even more puzzling is the fact that the court actually said selecting and sorting are synonymous with choosing.

[00:28:38] Speaker 04:
So really, two of the three things that we're advocating for, the district court already said, yes, that's true, but nonetheless excluded both of those from its construction and went with determining.

[00:28:47] Speaker 04:
So like I said, the only real issue is verifying, which is, of course, what one of skill and the art does to say, yes, there was a negative DMD shift, and therefore we verified.

[00:28:54] Speaker 04:
I would like to go back to the question you'd asked earlier, Judge Stoll, about the fact that this is limiting and the fact that we're using comprising language, so this is a claim that's broader and can account for more things, which is certainly true.

[00:29:06] Speaker 04:
The problem here is that in the case of a process, for example, what you would do is you would test the fibers that you're getting out of the process, and you're going through this and analyzing them.

[00:29:17] Speaker 04:
You're doing the measuring, you're doing the subtracting, and then you choose.

[00:29:20] Speaker 04:
If they have a negative DMD shift, then you're going to choose those.

[00:29:25] Speaker 04:
If they're positive, that doesn't mean it necessarily has to be all over.

[00:29:28] Speaker 04:
Then you could go back and optimize your process, go through this again, and determine if you've now obtained a negative DMD shift.

[00:29:34] Speaker 04:
But that's really what they want to read out.

[00:29:37] Speaker 01:
And what you described as going back and optimizing your process, is that tinkering with the very same fiber you have tested?

[00:29:47] Speaker 01:
Or do you throw that glass away or put it back in the melting pot and produce new ones with a tweak to the process?

[00:29:54] Speaker 04:
That's really up to the person's skill and the art doing the process.

[00:29:57] Speaker 04:
So if they can try to optimize that, let's just say, for example, they get a positive result, which is a bad thing.

[00:30:02] Speaker 04:
They can go back and try to optimize their process and get a negative result and then choose those fibers.

[00:30:06] Speaker 04:
Um, or they can say, look, we're just going to start over.

[00:30:09] Speaker 04:
Uh, we can't really adjust this process the way we want to, and they'll start over.

[00:30:13] Speaker 04:
Um, I believe we addressed Steve.

[00:30:17] Speaker 01:
So it's possible when you have a fully created fiber to go back with that fiber and tweak that fiber.

[00:30:25] Speaker 04:
You may adjust your process to optimize that fiber.

[00:30:27] Speaker 04:
That's my understanding, your honor.

[00:30:29] Speaker 01:
That very, that very, um,

[00:30:34] Speaker 04:
Well, at a minimum, what I can represent is that you're going to optimize your process to create fibers that have that negative DMD shift.

[00:30:40] Speaker 04:
Whether you actually optimize that particular fiber that you have seen, I'll defer to the experts on that.

[00:30:51] Speaker 04:
Anything further?

[00:30:52] Speaker 04:
I just want to go back to one more general point that I don't want to lose sight of in all the hyper-technical arguments, is that DMD shift metric is an important invention.

[00:31:00] Speaker 04:
And it enabled engineers to evaluate performance of optical fibers in a way they had never done before.

[00:31:05] Speaker 04:
And it would be fundamentally unfair for Pandoa to be penalized by the district court's overly narrow reading of the patent claims, both here and with respect to the step order, a reading that violates basic claim construction principles.

[00:31:16] Speaker 03:
Thank you.

[00:31:17] Speaker 03:
We thank both sides, and the case is submitted.