[00:00:00] Speaker 04:
21-883, Professor versus Weber.

[00:00:05] Speaker 04:
Once again, Mr. Martin, whenever you're ready.

[00:00:10] Speaker 02:
By May, allow us to go.

[00:00:12] Speaker 02:
I'm sure you'll want to get that.

[00:00:15] Speaker 02:
Do you want to take it?

[00:00:17] Speaker 02:
Yes.

[00:00:21] Speaker 02:
So good morning.

[00:00:23] Speaker 02:
Pleasure to be here.

[00:00:24] Speaker 02:
Craig Martin.

[00:00:25] Speaker 02:
I represent provisor, the appellant, on this particular appeal.

[00:00:31] Speaker 02:
We asked the court to reverse the claims construction that read select out of the claim and enter judgment for provisor on the 531 on all claims.

[00:00:41] Speaker 02:
And that is the main argument in this appeal, and I'd like to get right into it.

[00:00:45] Speaker 04:
Yeah, well, can you make sure you cover my main concern or question here, which is the claim uses the word select as an adjective, not a verb.

[00:00:56] Speaker 04:
I think that should be undisputed.

[00:00:59] Speaker 04:
And it seems to me that your argument keeps treating it like a verb.

[00:01:04] Speaker 04:
So can you keep that in mind when you're giving us your argument here?

[00:01:08] Speaker 02:
Yes, absolutely.

[00:01:09] Speaker 02:
And it looks like you have the same Latin education I did.

[00:01:13] Speaker 02:
when you focus on those types of issues.

[00:01:16] Speaker 02:
But let me go through it, and I'll get to that point.

[00:01:20] Speaker 02:
With regard to select differential speeds, that's what the claims construction is about.

[00:01:25] Speaker 02:
And the court is well aware of the claims construction law.

[00:01:29] Speaker 02:
In terms of the issue on this appeal, this is purely a de novo claims construction.

[00:01:35] Speaker 02:
The board, with regard to both of the proceedings that are here, only relied upon intrinsic evidence.

[00:01:42] Speaker 02:
the claims, the specification, the prosecution history.

[00:01:48] Speaker 02:
With regard to the claims, I will not read you the claim language.

[00:01:52] Speaker 02:
With regard to the specification, the specification has two provisions that go to this issue of select and control that are important.

[00:02:01] Speaker 02:
One is at appendix 123, which says the servo motor

[00:02:06] Speaker 02:
drives the web material in a closely controlled and precise manner.

[00:02:10] Speaker 02:
The other is at appendix 125, the machine control or computer 54, which is in signal communication with the servo motors.

[00:02:19] Speaker 02:
Then where's the action?

[00:02:20] Speaker 02:
The action is really in the prosecution history.

[00:02:23] Speaker 02:
And that's where the board really, we think, made a mistake by not analyzing the prosecution history.

[00:02:30] Speaker 02:
With regard to the prosecution history,

[00:02:33] Speaker 04:
But we start with the claim language.

[00:02:37] Speaker 02:
Sure.

[00:02:38] Speaker 04:
Is there anything you can point to in the claim language that requires that the controller select the differential speeds?

[00:02:46] Speaker 02:
The short answer, Your Honor, is the claim language is, no, it is select differential speeds.

[00:02:53] Speaker 02:
And that is the specific claim language.

[00:02:55] Speaker 02:
I appreciate the point that it's an adverb, and I'd like to explain, get to the prosecution history.

[00:03:00] Speaker 03:
So is the answer to Judge Proff's question no?

[00:03:02] Speaker 03:
The claims don't help you, right?

[00:03:05] Speaker 02:
No, the claims, look, in terms of- Why don't we just, the answer is no.

[00:03:11] Speaker 02:
The answer to your specific question is no.

[00:03:13] Speaker 02:
Thank you.

[00:03:13] Speaker 02:
The claims say select differential speeds.

[00:03:16] Speaker 02:
They don't say something more.

[00:03:17] Speaker 02:
They don't put in the word select the differential speeds.

[00:03:21] Speaker 02:
They don't say it like that.

[00:03:22] Speaker 03:
They don't say the controller has to do it.

[00:03:26] Speaker 02:
No, what I just gave you from the claim and the specification is where it's at.

[00:03:30] Speaker 04:
OK, so the claim doesn't help you.

[00:03:33] Speaker 04:
The specification, doesn't the prior art work exactly the same way as the embodiment in the 531 patent?

[00:03:43] Speaker 02:
I'd like to go through the prosecution history.

[00:03:47] Speaker 02:
I know.

[00:03:47] Speaker 04:
And I was just trying to make sure that usually we start with the claim language, go to the spec, and then the prosecution history.

[00:03:54] Speaker 04:
I wanted to make clear that there's nothing helpful to you in the claim language and the specification.

[00:04:00] Speaker 04:
So we're left to the prosecution history.

[00:04:02] Speaker 02:
Absolutely.

[00:04:03] Speaker 04:
That's where we all are.

[00:04:04] Speaker 04:
I just wanted to clarify.

[00:04:05] Speaker 04:
That's where we all are.

[00:04:06] Speaker 04:
So tell us about the prosecution history.

[00:04:08] Speaker 02:
Yeah.

[00:04:08] Speaker 02:
So the prosecution history goes like this.

[00:04:13] Speaker 02:
So the select differential speeds is in the earliest drafts of the claim.

[00:04:19] Speaker 02:
It never changes.

[00:04:20] Speaker 02:
That's JA 355.

[00:04:23] Speaker 02:
The prosecution history evidences a very robust debate between the examiner and the applicant.

[00:04:32] Speaker 02:
And the examiner goes back and forth with the applicant about this very issue with regard to asking the applicant to explain how you select differential speeds.

[00:04:48] Speaker 02:
So the debate that Judge pressed, the issue that you honed in on, verb versus adjective, there's no commentary with regard to that in the prosecution history.

[00:05:00] Speaker 02:
Nobody is raising that issue.

[00:05:02] Speaker 02:
The examiner and the applicant are going back and forth on.

[00:05:05] Speaker 02:
The examiner is asking repeatedly, well, how do you enable this?

[00:05:09] Speaker 02:
How does the description teach you to enable this?

[00:05:12] Speaker 02:
What does this mean?

[00:05:14] Speaker 02:
Fair enough.

[00:05:14] Speaker 02:
The same types of questions you might ask if you were going through this.

[00:05:18] Speaker 02:
In response to that, the applicant does not say,

[00:05:32] Speaker 02:
hey, actually, I'm not arguing that it selects.

[00:05:35] Speaker 02:
Instead, the applicant starts engaging with the examiner with regard to how it selects.

[00:05:45] Speaker 02:
And the applicant argues repeatedly that the select differential speeds are selected by the computer or the controller, and that that is how it is enabled, and that's how the description works.

[00:05:58] Speaker 02:
And if you want to look at the debate that goes back and forth, it's JA 765, 791, 838, 855, and 866, and 861.

[00:06:10] Speaker 02:
Then when you get to the end of the debate, and this is what goes to the adjective-adjective-adverb question.

[00:06:17] Speaker 01:
Isn't your argument that select means to choose a specific speed, like speed 25 versus speed 35?

[00:06:27] Speaker 02:
Yes.

[00:06:28] Speaker 02:
Select means to choose.

[00:06:30] Speaker 01:
And in the manner that I just pointed out?

[00:06:33] Speaker 01:
Yes.

[00:06:34] Speaker 01:
Where is that last part, even in the prosecution history?

[00:06:38] Speaker 01:
What does it say, or where do we know that we're talking about specific speed?

[00:06:44] Speaker 01:
Not selecting, but that you got that second part there.

[00:06:48] Speaker 02:
Well, I don't know that you have the second part, but you certainly have the first part in the prosecution history.

[00:06:53] Speaker 02:
I'm sorry?

[00:06:53] Speaker 02:
You certainly have the first part.

[00:06:55] Speaker 02:
And where it comes up, Your Honor, is JA,

[00:06:58] Speaker 02:
861 when the applicant is engaging in this debate with the examiner and the applicant is distinguishing a piece of prior art called Lorenzo.

[00:07:13] Speaker 02:
And the applicant says, further, the microcontroller 300 and Lorenzo.

[00:07:17] Speaker 02:
Where are you on 861?

[00:07:19] Speaker 02:
Yes, I'm on 861 in the last full paragraph.

[00:07:26] Speaker 04:
OK.

[00:07:27] Speaker 02:
And the first sentence is as set forth, and then the second sentence I was about to do a dramatic reading of.

[00:07:35] Speaker 02:
And that sentence says, further, the microcontroller 300 in Lorenzo does not select differential speeds of the first and second driver such that the tension of the web material between the drawing station and the feed station is controlled as required

[00:07:51] Speaker 02:
by element E of select one.

[00:07:54] Speaker 02:
So here you have the applicant engaging in this argument about adequate description and enablement with the prosecutor.

[00:08:02] Speaker 02:
And the applicant is distinguishing Lorenzo by using the verb, does not select.

[00:08:12] Speaker 03:
So maybe that's one embodiment to your claims.

[00:08:15] Speaker 03:
But are you asking us to read this as the full extent of your claims?

[00:08:19] Speaker 03:
And why would we do that?

[00:08:21] Speaker 02:
Look, in terms of the language, the language of select, when you parse through the prosecution history, Your Honor, and you use language the way many people use it, as opposed to those of us who may have gone to Catholic elementary school, and you look at select

[00:08:47] Speaker 02:
The applicant is clearly saying to the prosecutor or the examiner that unlike Lorenzo, we select, saying Lorenzo does not select.

[00:09:00] Speaker 02:
He's making it clear.

[00:09:01] Speaker 03:
Are you saying they're telling the examiner we're using select as a verb and not as an adjective?

[00:09:08] Speaker 02:
I'm saying that that language uses as a verb to select and says, we do not do that.

[00:09:14] Speaker 03:
I think you've already conceded from the get-go your claim doesn't use select as a verb.

[00:09:19] Speaker 02:
No, the claim does not.

[00:09:21] Speaker 02:
I have to concede that.

[00:09:24] Speaker 02:
But as you go through the prosecution history, when they're explaining what is going on,

[00:09:29] Speaker 02:
They are saying that we select.

[00:09:31] Speaker 02:
They say Lorenzo does not select.

[00:09:33] Speaker 02:
The implication is clearly that we select.

[00:09:36] Speaker 02:
And they go on to talk about how they adjust the speeds on the very next page.

[00:09:41] Speaker 02:
So in terms of looking at the claim, the specification, and the prosecution history as a whole, Your Honor, it suggests that select has meaning.

[00:09:55] Speaker 02:
And select means select to choose.

[00:09:58] Speaker 02:
which is consistent with this court's jurisprudence in the few cases where you have examined the word select.

[00:10:06] Speaker 02:
And those cases are National Recovery and Neurographics, which are cited in our brief.

[00:10:13] Speaker 04:
I think you would agree that our cases clearly want you to construe terms and understand terms in the context in which they're presented.

[00:10:22] Speaker 04:
So select clearly can be a verb or it can be an adjective.

[00:10:26] Speaker 04:
And it's only the context that will determine which of those it is.

[00:10:30] Speaker 04:
So I'm not sure the fact that we've construed it as a verb in other cases helps you here.

[00:10:38] Speaker 02:
Well, in terms of select, when there's an argument with regard to the examiner and the applicant about how this works,

[00:10:49] Speaker 02:
And no one's talking about the difference between an adverb or a verb.

[00:10:55] Speaker 02:
There's no linguistic conversation going on.

[00:10:58] Speaker 01:
They're trying to- That's not the case here.

[00:11:00] Speaker 01:
We've already settled here with the beginning of your argument that selecting this case is not a verb.

[00:11:09] Speaker 02:
I agree, because that's the way the language of the claim is written.

[00:11:14] Speaker 02:
That's the plain English.

[00:11:15] Speaker 02:
But when you look at the prosecution history,

[00:11:18] Speaker 02:
and you look at the way they are using it, regardless of whether it's an adjective or a verb.

[00:11:23] Speaker 01:
But what does that matter if we've already established that select is not a verb?

[00:11:28] Speaker 01:
Why do you want to take us to the prosecution history and show us that there was discourse there about whether select is a verb or not?

[00:11:36] Speaker 01:
We've already said that in this case, it's not.

[00:11:39] Speaker 02:
Well, because, Your Honor, the way the examiner

[00:11:43] Speaker 02:
and the way the applicant understand and approve the patent was to use select in a more loose way.

[00:11:56] Speaker 02:
So while I have to acknowledge English, and I have to go back to Catholic elementary school, I might suggest to your honors that the prosecutor and the examiner were not being as precise

[00:12:13] Speaker 02:
as Judge Proustus with regard to that question.

[00:12:18] Speaker 02:
And that never appears in any of the dialogues

[00:12:22] Speaker 02:
But when you get to the prosecution history and they are explaining what select means, they clearly are talking about select to choose, because they're distinguishing Lorenzo based on choose or not choose.

[00:12:37] Speaker 02:
And he's saying, Lorenzo does not choose and select.

[00:12:42] Speaker 02:
We do.

[00:12:42] Speaker 02:
That's clear.

[00:12:43] Speaker 02:
That's what the debate is that's going on there.

[00:12:46] Speaker 02:
So in terms of interpreting that term,

[00:12:49] Speaker 02:
When you look at the language, and I'm sorry that the prosecutor and the examiner do not use the language as precisely as we may like.

[00:12:59] Speaker 02:
When you look at all of the intrinsic evidence, they're talking about to choose and to select.

[00:13:05] Speaker 02:
And that's the way it is used.

[00:13:08] Speaker 02:
I have a couple other points I want to make.

[00:13:13] Speaker 02:
So, you know, and when you dig into that further, and this is where the board really exceeded its authority, the debate with regard to enablement, the debate with regard to adequate written description that's going on is beyond the board's authority.

[00:13:32] Speaker 02:
So in terms of the

[00:13:35] Speaker 02:
Claims that are at issue here, the claim select has meaning that derives from the prosecution history.

[00:13:43] Speaker 02:
And I suggest to the court that the larger body who prosecutes patents and examines patents are not necessarily choosing perfect linguistic words, so that select has meaning.

[00:14:02] Speaker 04:
Just to be clear for the record, I never had the privilege of going to a Catholic elementary school, nor did I, unfortunately, take laughing.

[00:14:09] Speaker 04:
But I still learned the difference between adjectives and verbs.

[00:14:12] Speaker 04:
Thank you.

[00:14:13] Speaker 00:
Thank you, Your Honor.

[00:14:15] Speaker 00:
You didn't miss much.

[00:14:18] Speaker 00:
Good morning.

[00:14:19] Speaker 00:
Good morning, Your Honors, and may it please the court.

[00:14:21] Speaker 00:
My name is Ralph Powers.

[00:14:22] Speaker 00:
I'm here on behalf of Weber.

[00:14:25] Speaker 00:
Regarding the select differential speed limitation in the IPRs, Provisor argued for a construction that indicated that the controller must select specific, calculated, or predetermined different speeds.

[00:14:37] Speaker 04:
I understand that.

[00:14:38] Speaker 04:
And you've heard the discussion we've had with your friend here.

[00:14:40] Speaker 04:
But indeed, the phrase select differential speeds does imply that speeds are selected at some point, right?

[00:14:54] Speaker 00:
Something must be doing the control.

[00:14:57] Speaker 04:
Uh-huh.

[00:14:57] Speaker 04:
OK.

[00:14:59] Speaker 00:
Yes, Your Honor.

[00:15:00] Speaker 04:
And therefore, speeds are selected at some point.

[00:15:05] Speaker 04:
So how, in your view, is that done here in this claim?

[00:15:08] Speaker 00:
Well, the patent specification tells us.

[00:15:11] Speaker 00:
The patent specification tells us that there's a sensor loop that's in signal communication with a controller.

[00:15:17] Speaker 00:
And the controller is in signal communication with one or more drivers.

[00:15:22] Speaker 00:
That loop is what controls the accumulation of the slack material within the slack web, or the slack loop.

[00:15:29] Speaker 00:
And that, your honors, is just like what was disclosed in the prior art reference Jordan.

[00:15:35] Speaker 01:
So why is it that when the loop in one of these diagrams goes down below, and then you see the sensor that senses that there's too much loop there, the controller will send, will select to bring up the loop.

[00:15:53] Speaker 01:
But why isn't that selecting a specific speed?

[00:15:56] Speaker 01:
I mean, it has to have some specificity to it in order for the loop to rise above the sensor to the appropriate level.

[00:16:08] Speaker 00:
There's nothing in the patent specification that requires any precision in the speed.

[00:16:12] Speaker 00:
It is just gross motor speed that is adjusted in response to the signal from the sensor.

[00:16:17] Speaker 01:
But it's got to be enough to get above the sensor.

[00:16:20] Speaker 00:
It does have to exhibit control, Your Honor.

[00:16:22] Speaker 00:
That's true.

[00:16:23] Speaker 01:
Wouldn't you say that that is an objective speed point that has to be reached?

[00:16:33] Speaker 01:
So you're selecting that.

[00:16:36] Speaker 00:
No, Your Honor, I don't think so.

[00:16:37] Speaker 00:
I'd say that all that's required is that the motor is adjusted so that the loop is taken up or that the loop is increased in slack.

[00:16:46] Speaker 00:
So that's exactly what's described in the one and only embodiment that's in the patent.

[00:16:52] Speaker 00:
And that's at the end of column eight onto the top of column nine.

[00:16:57] Speaker 00:
And that is almost coterminous with what's described in the prior art reference that the board applied here.

[00:17:03] Speaker 00:
So, if I can take you to our red brief, I believe it's page 33.

[00:17:12] Speaker 00:
Page 12, apologies.

[00:17:15] Speaker 00:
Here we have the prior art Jordan.

[00:17:18] Speaker 00:
lined up with the disclosure of the one and only embodiment on point in the 531 patent.

[00:17:24] Speaker 00:
You can see that what we have is a feedback loop where there's a non-contact sensor that senses the amount of slack or accumulation that's in the slack loop.

[00:17:34] Speaker 01:
Where are you reading from?

[00:17:35] Speaker 00:
Page 12 of the red brief, Your Honor.

[00:17:38] Speaker 00:
OK.

[00:17:39] Speaker 00:
It's the chart there.

[00:17:40] Speaker 00:
Right there, we're comparing the prior art reference Jordan to the specification at issue here.

[00:17:48] Speaker 00:
And if the sensor senses too little, then the take-up rollers 24 in Jordan or motor 506 in the patent can be increased in speed.

[00:18:00] Speaker 00:
And if the loop becomes too large, then the take-up rollers or the motor can be slowed.

[00:18:06] Speaker 00:
That's the level of disclosure that we have in the patent.

[00:18:09] Speaker 00:
And that's exactly what we have in the prior art.

[00:18:12] Speaker 00:
So there's really no principled way to read these claims in a way that excludes the prior art, but somehow includes the one and only embodiment that's disclosed in the patent.

[00:18:25] Speaker 03:
Your position is that the embodiments in which a controller is selecting the speeds is not a limitation of the claims.

[00:18:34] Speaker 03:
It's not required, correct?

[00:18:36] Speaker 00:
That is true, Your Honor.

[00:18:37] Speaker 03:
Would such an embodiment be within the scope of the claims, however?

[00:18:42] Speaker 00:
Yes, your honor.

[00:18:43] Speaker 03:
So it is captured by the claims, but it is not the full extent of it.

[00:18:46] Speaker 00:
That's exactly correct.

[00:18:48] Speaker 00:
And the board made specific fact findings on that point, your honor.

[00:18:52] Speaker 00:
Even under provisor's construction, the prior art meets the claims.

[00:18:56] Speaker 00:
So at appendix 21, the board held that Jordan indisputably controls the amount of accumulated paper in its shaft by varying the differential speed between its rollers.

[00:19:07] Speaker 00:
The board continued.

[00:19:08] Speaker 00:
Jordan's take-up rollers are driven at two different speeds when compared to the speed of its feed rollers, and these two different comparative speeds constitute two different relative or differential speeds.

[00:19:24] Speaker 00:
that Jordan's disclosed electronic computer is in signal communication with its first and second drivers.

[00:19:31] Speaker 00:
That analysis is at appendix 26 through 27.

[00:19:34] Speaker 00:
So that's how Jordan achieves control of its slack loop.

[00:19:38] Speaker 00:
It has an electronic computer, a controller, in signal communication with both of the drivers on either side of the slack loop.

[00:19:45] Speaker 00:
And it has a sensor that senses the amount of accumulation in the slack loop, just like the patented issue here.

[00:19:51] Speaker 04:
Anything further?

[00:19:53] Speaker 00:
Your Honours, I would like to touch briefly on the tension control issue.

[00:19:58] Speaker 04:
Your friend didn't raise that.

[00:20:00] Speaker 04:
Fair enough.

[00:20:01] Speaker 04:
I think it's probably better that you rest on that.

[00:20:04] Speaker 00:
Then I will rest.

[00:20:05] Speaker 02:
Thank you very much, Your Honour.

[00:20:08] Speaker 02:
So briefly, back to claims construction.

[00:20:11] Speaker 02:
The phrase select differential speeds, as I think the questions pointed out, certainly implies that there are differential speeds, and that something is selecting differential speeds.

[00:20:24] Speaker 02:
In terms of these patents, the 531, the differential speed, the select differential speed is designed to control the tension.

[00:20:33] Speaker 02:
With regard to the prior art,

[00:20:35] Speaker 02:
which shouldn't come into claimed construction, but the prior art just so that you have it.

[00:20:40] Speaker 02:
The loop in the prior art, if you look at the prior art,

[00:20:44] Speaker 02:
The purpose of that is to keep a loop intact using sections and vacuums and springs so that the loop goes like this and that is the issue with regard to the prior art.

[00:20:58] Speaker 02:
The solution with regard to the 531 is to select differential speeds that control the tension going across and speeding up the machine and that is the invention that is at issue here.

[00:21:10] Speaker 02:
With regard to

[00:21:12] Speaker 02:
select, I think you have to read this as a whole as opposed to anything else.

[00:21:18] Speaker 02:
And in terms of if you read select out of differential speeds, you've basically eviscerated the invention that is discussed in the patent and the improvement.

[00:21:30] Speaker 02:
And that's the critical issue.

[00:21:32] Speaker 04:
So thank you.

[00:21:33] Speaker 04:
We thank both sides.

[00:21:34] Speaker 04:
My case is submitted.