[00:00:05] Speaker 01:
Good morning.

[00:00:07] Speaker 01:
May it please the court.

[00:00:08] Speaker 01:
This appeal involves a patent that's related to a joist handle predictably designed for use with a firewall.

[00:00:16] Speaker 01:
In this case, there are a number of issues involved today.

[00:00:18] Speaker 01:
I'd like to, if time permits, address the construction of the Configure 2, extend through limitation, the written description support for the spacing limitation in Claims 1 and 13, and the lack of motivation to combine.

[00:00:32] Speaker 01:
If I may, I'd like to make very briefly an observation concerning the 510 patent that I believe bears significantly on the issues before this Court today.

[00:00:40] Speaker 01:
Both parties to this case were working on the problem of designing a joist hanger that could be used with a firewall at the same time.

[00:00:46] Speaker 01:
How do we know this?

[00:00:47] Speaker 01:
Simpson filed a patent application on this subject.

[00:00:51] Speaker 01:
And then three weeks later, the application that ultimately became the 510 patent was filed.

[00:00:56] Speaker 01:
Why does that matter?

[00:00:58] Speaker 01:
Well, the approach that Simpson took to this problem of how do you design a hanger for use with a firewall was they simply took, if my arm is the wall frame,

[00:01:09] Speaker 01:
They took the top flange and added sort of an extension to push out the channel-shaped portion of the hanger that receives the joist.

[00:01:19] Speaker 01:
And so what this shows is that Simpson held with the strong bias and the prior art at that time against designing a hanger to make any sort of disruption in the firewall.

[00:01:29] Speaker 00:
Can I move you to the written description?

[00:01:31] Speaker 00:
Pardon me?

[00:01:31] Speaker 00:
Can I move you to the written description, Kate?

[00:01:34] Speaker 00:
You sure can.

[00:01:34] Speaker 00:
It's a little unclear to me.

[00:01:37] Speaker 00:
I guess, well, I'm just asking, maybe this is a little silly to start with, but if I'm out there and I design, and I know I'm going to get the terminology wrong because I don't deal in construction, but if I've got two 5-eighth inch sheaths and adding in a half an inch sheath, is that going to be infringing under your claim or not?

[00:02:03] Speaker 01:
It would be, but what I'd like to convey to you is we need to look at that limitation from the perspective of the person with the ordinary skill.

[00:02:14] Speaker 00:
Well, before we do that, can we look at what we've got in front of us, which is the specification?

[00:02:19] Speaker 00:
and the drawings.

[00:02:21] Speaker 00:
Right.

[00:02:22] Speaker 00:
What in the drawings or in the specification would tell me and put me on notice that that configuration I've described to you, two five-eighths of an inch sheaths, sheathing, say sheaths or sheathing.

[00:02:36] Speaker 01:
Sheathing, sheaths, either one.

[00:02:37] Speaker 00:
And a quarter and a half an inch, four-eighths.

[00:02:41] Speaker 00:
inch.

[00:02:42] Speaker 00:
I mean, the only thing in the written description in the spec I see about this, and tell me if there's more, is column four, where it speaks to layers of 5 eighth inch gypsum board mounted.

[00:02:57] Speaker 00:
And then you've got the diagrams, which you rely, the figures, which you rely heavily on in your argument.

[00:03:03] Speaker 00:
So which figure is going to show me that I will be infringing?

[00:03:07] Speaker 00:
with the configuration I gave.

[00:03:09] Speaker 01:
Well, I think numerous figures, but Figure 10, for example, would show you that.

[00:03:14] Speaker 01:
And what I'd like to sort of draw your attention to is the Vasquez versus Merckar case, which we've cited.

[00:03:20] Speaker 00:
Well, let's look at Figure 10, then, and just make sure we're on the right track.

[00:03:24] Speaker 00:
So how does figure 10 show me that the configuration I've described to you is meaningless?

[00:03:32] Speaker 01:
10 or 10A, but either one.

[00:03:33] Speaker 01:
OK.

[00:03:34] Speaker 01:
So what it shows you is that it shows you that you have two sheets of sheathing in there.

[00:03:40] Speaker 01:
And it shows you very clearly on an instance notice that you can't put a third sheet in there.

[00:03:45] Speaker 01:
It's not going to fit.

[00:03:46] Speaker 01:
That's all you need to know.

[00:03:48] Speaker 00:
Well, no.

[00:03:48] Speaker 00:
But you can't put a third sheet in that.

[00:03:51] Speaker 00:
So that says you can't put another 5 eighths inch sheet in that.

[00:03:55] Speaker 00:
That's right.

[00:03:55] Speaker 00:
But my alleged infringing device has a 4 eighths inch sheet.

[00:04:02] Speaker 01:
Right.

[00:04:03] Speaker 01:
A half an inch, in other words.

[00:04:04] Speaker 01:
Right.

[00:04:04] Speaker 00:
Less than a half an inch.

[00:04:06] Speaker 01:
Well, the answer is yes.

[00:04:08] Speaker 01:
But I'm saying that's not the way you look at it.

[00:04:12] Speaker 01:
What you do is you look at the literal words of the claim and say,

[00:04:15] Speaker 01:
It'll fit two 5-8s, but not three.

[00:04:17] Speaker 01:
You don't convert it to standard units of measure and then say, oh, gee, how do I add this up?

[00:04:23] Speaker 03:
That's not what the claim says.

[00:04:25] Speaker 03:
The claim says two, but less than three.

[00:04:28] Speaker 03:
It does.

[00:04:30] Speaker 03:
It's a range.

[00:04:31] Speaker 01:
It is.

[00:04:32] Speaker 03:
And it would cover?

[00:04:33] Speaker 03:
You just said it would cover.

[00:04:34] Speaker 03:
Sorry.

[00:04:35] Speaker 03:
It would cover two of the 5-8 sheets plus one half.

[00:04:41] Speaker 03:
I don't understand where this shows that you can also fit a half in here.

[00:04:46] Speaker 01:
It doesn't need to show that.

[00:04:48] Speaker 01:
All it needs to do is show you that it will receive two 5-8s, but not three of them.

[00:04:53] Speaker 01:
That's all it needs.

[00:04:54] Speaker 03:
It has to show that it will receive up to just short of three 5-8s, doesn't it?

[00:04:59] Speaker 01:
No, I don't think so.

[00:05:00] Speaker 03:
That's what the claim language does.

[00:05:03] Speaker 03:
The claim language does not say about two 5-8 sheets.

[00:05:09] Speaker 03:
or a little more than 258 sheets will fit or whatever language a patent drafter would use.

[00:05:15] Speaker 03:
It says 258 up to, but not 358.

[00:05:19] Speaker 03:
And you've just said that that goes all the way up to just short of 358.

[00:05:26] Speaker 01:
It would, but the point of the limitation is to say that it receives two.

[00:05:30] Speaker 01:
I think if you look at the file history in this case, you'll see that in prior... That's not what it says, though, right?

[00:05:35] Speaker 00:
Well, what is the claim?

[00:05:36] Speaker 01:
It says two but not three.

[00:05:37] Speaker 01:
I mean, we agree that's the way you should look at it.

[00:05:39] Speaker 00:
What if it said it's two?

[00:05:40] Speaker 00:
Are you saying that what the claim really means is two?

[00:05:45] Speaker 01:
It really does mean two.

[00:05:47] Speaker 01:
Because when you're talking about a firewall situation, it's 5-8.

[00:05:49] Speaker 00:
But it really does mean two.

[00:05:50] Speaker 00:
But you just told me my first question that I will be infringing if I do two 5-8s plus one 4-8s that I will be infringing.

[00:06:00] Speaker 00:
So it's not just two, right?

[00:06:03] Speaker 01:
Right.

[00:06:03] Speaker 01:
But I think the question is how do you determine the scope of the claim?

[00:06:06] Speaker 00:
Well, is it just two, or is it not just two?

[00:06:09] Speaker 00:
It's not.

[00:06:10] Speaker 00:
You said it's just two.

[00:06:11] Speaker 01:
Well, it has to be a little bit more.

[00:06:12] Speaker 01:
And getting back, if I may.

[00:06:14] Speaker 00:
And it is going to be plus 4 eighths of an inch, according to you.

[00:06:17] Speaker 01:
It could be.

[00:06:19] Speaker 00:
OK.

[00:06:19] Speaker 00:
All right.

[00:06:20] Speaker 01:
But what I'm saying is that it can't be just exact.

[00:06:22] Speaker 01:
We'd like to say just exactly two, but you can't, because we do say in the specification that there are some embodiments where the hanger is installed first, and then you come back and put the sheathing in.

[00:06:32] Speaker 01:
Now, remember, the sheathing has got to be just as tall

[00:06:35] Speaker 01:
as the wall.

[00:06:36] Speaker 00:
Well, you do say in the spec, the only place that I found in the spec that you talk about this five eighths stuff is in column four, line 15 through 20.

[00:06:45] Speaker 00:
And you do say, you talk about the five eighths inch and then you say, although other configurations of fire retardant search are within the scope of the president invented.

[00:06:56] Speaker 00:
Well, I don't know what that means.

[00:06:58] Speaker 00:
other configurations can mean almost anything.

[00:07:02] Speaker 00:
So are you relying on that language to say that this is written description disclosure?

[00:07:07] Speaker 00:
No, we're not relying on it.

[00:07:08] Speaker 04:
Where is the language that you were just referring to about how in some embodiments you implemented insert the gypsum boards after the fact?

[00:07:16] Speaker 04:
So if you had a space that was only 5 8s plus 5 8s, you literally would not be able to get two gypsum boards in there, right?

[00:07:24] Speaker 01:
Right.

[00:07:25] Speaker 01:
But the perspective of the person of ordinary skill in the arts says it has to have a space to receive at least two.

[00:07:31] Speaker 04:
Right.

[00:07:31] Speaker 04:
So where in the spec is that?

[00:07:33] Speaker 04:
Where in the spec do you disclose an embodiment that has the gypsy boards being inserted later?

[00:07:40] Speaker 01:
We do.

[00:07:41] Speaker 01:
And I'm struggling to find that citation, which I thought I had marked.

[00:07:48] Speaker 01:
We do talk about it coming in later.

[00:07:53] Speaker 01:
To do that, you have to insert the sheathing at an angle.

[00:07:56] Speaker 04:
I understand there has to be more than two times five eighths space in order to achieve that.

[00:08:02] Speaker 04:
Where in the patent does it say that, though?

[00:08:04] Speaker 01:
It doesn't.

[00:08:05] Speaker 01:
You say it in those terms.

[00:08:06] Speaker 01:
What it does is it describes a situation because, again... Stop fighting me.

[00:08:10] Speaker 04:
I'm friendly.

[00:08:11] Speaker 04:
I'm not hostile.

[00:08:12] Speaker 04:
So where in the patent

[00:08:13] Speaker 04:
is the section that, I mean this, oh, eight columns or whatever, ten columns, where does it say that you'll insert the two 5-8s later?

[00:08:20] Speaker 04:
I understand your argument is a skilled artisan with more, you have to leave a little more than two times 5-8s in order to be able to achieve that, or you wouldn't be able to get them in there.

[00:08:29] Speaker 04:
So I'm just asking- Okay, sorry.

[00:08:31] Speaker 01:
I'm sorry, fumbling around.

[00:08:32] Speaker 01:
I thought I had this marked.

[00:08:33] Speaker 01:
Look at column 10, line 65 through column 11, line 23, and I do apologize.

[00:08:40] Speaker 01:
I thought I had that marked and I didn't.

[00:08:44] Speaker 00:
OK, I'm sorry.

[00:08:46] Speaker 00:
Column 10 and Column 11, do you have lines?

[00:08:48] Speaker 00:
I do.

[00:08:49] Speaker 01:
Column 10, line 65, through Column 11, line 22.

[00:08:57] Speaker 00:
OK, so what is it you want me to take away from this?

[00:09:00] Speaker 01:
Well, what I'm saying is that that provides sufficient information with the person of ordinary skill in the art to understand, but look, it can't be exactly 2 times 5 8s.

[00:09:08] Speaker 01:
It won't fit.

[00:09:10] Speaker 00:
Well, yeah, I guess.

[00:09:12] Speaker 00:
I usually will see that coming in in the DOE case, where it's obviously maybe a teeny bit bigger, but anyone would understand that it's same function way result.

[00:09:24] Speaker 00:
But where do we get the

[00:09:27] Speaker 00:
The numbers are precise in the claim.

[00:09:30] Speaker 00:
So where do we get the additional, what is the difference, four-eighths of an inch?

[00:09:34] Speaker 01:
Right.

[00:09:35] Speaker 00:
Yeah, four-eighths.

[00:09:36] Speaker 00:
Well, that's what I'm trying to emphasize.

[00:09:37] Speaker 00:
To relate that as being necessary, wouldn't that be enough for another size sheet to get in there?

[00:09:43] Speaker 00:
even with enough wiggle room?

[00:09:44] Speaker 00:
Sure you can.

[00:09:45] Speaker 00:
You said, in my example, it wasn't, this is wiggle room.

[00:09:49] Speaker 00:
It is, I've got another sheath coming in, and it's 4 eighths of an inch.

[00:09:53] Speaker 01:
Right, but I guess.

[00:09:54] Speaker 00:
So that would be covered, right?

[00:09:57] Speaker 00:
And that's just not wiggle room for a person skilled in the art.

[00:10:01] Speaker 00:
It's putting another sheath.

[00:10:03] Speaker 01:
Well, I guess what I'm saying from the perspective of a person of ordinary skill, first of all, they know that two 5.8-cent sheets is what you use for a fire-rated wall.

[00:10:12] Speaker 01:
They know that.

[00:10:14] Speaker 01:
So that's what this claim limit is telling you, that it's going to be a space that's sufficient to receive these to create a fire-rated wall.

[00:10:22] Speaker 00:
So you don't think you could have just written a claim that said it includes two five-eighths, five-eighths all, and then on the spec set, and of course, there's Wiggler included.

[00:10:31] Speaker 00:
Would that be a more precise way of describing what your invention is?

[00:10:35] Speaker 04:
The problem with that seems to be it's a comprising claim.

[00:10:37] Speaker 04:
So if you set a space for two, that could be a space for 20, right?

[00:10:40] Speaker 01:
It could be.

[00:10:41] Speaker 04:
So you have to say you had to give two and not more than three.

[00:10:46] Speaker 04:
Because otherwise, with a comprising claim, you couldn't have written this to say two

[00:10:51] Speaker 04:
unless you wrote two and only two.

[00:10:53] Speaker 04:
But that would get kind of confusing.

[00:10:55] Speaker 01:
Yeah.

[00:10:56] Speaker 01:
I mean, it also involves, and I'm using up a lot of my time here, it also involves the way the prosecution went in that case.

[00:11:03] Speaker 03:
But do you think this is intended, the claim is intended to cover just two 5-H sheets, but you need the extra space for what we're calling wiggle room?

[00:11:11] Speaker 03:
Or do you think that this claim could cover three sheets if they're not 5-H, if they're smaller, or four sheets?

[00:11:20] Speaker 01:
The claim could cover that.

[00:11:21] Speaker 01:
But the meaning of the claim, what it's intending to convey, is that it'll fit two, but it needs a little bit more room.

[00:11:29] Speaker 01:
That's what it's conveying.

[00:11:30] Speaker 00:
Could I just ask you one more question, if the chief warned us?

[00:11:32] Speaker 00:
Just on the point of what's infringing, you said two things which seem maybe arguably inconsistent to me.

[00:11:39] Speaker 00:
That in the field, you use 5-8 inch stuff.

[00:11:44] Speaker 00:
So is your answer to my hypothetical, would there be infringement?

[00:11:49] Speaker 00:
if there was a third sheet inserted and it was four eighths of an inch, is the answer to you is that just is never going to happen because in this field we only use five eighths sheets?

[00:12:02] Speaker 01:
Well, I hesitate saying never going to happen.

[00:12:04] Speaker 01:
But I think what I was saying is that in a situation where you're talking about how do you create a fire barrier, it's going to be two five eighths.

[00:12:11] Speaker 03:
Why didn't you ask for a claim construction then that limited this space that's in here to two sheets that are five eighths?

[00:12:19] Speaker 01:
Well, that wasn't our intent.

[00:12:20] Speaker 01:
I mean, we just said that's how, if you take the units of measure... Well, no, I'm asking you.

[00:12:25] Speaker 03:
It seems like that's what you're trying to... You're weakening back and forth between, well, this is intended to just cover two 5-H sheets and everybody knows that depending on how the insulation goes, you may need a little bit more space or, you know, but...

[00:12:39] Speaker 03:
all this is covering is two, five, eights, and that a skilled artist would know that.

[00:12:43] Speaker 03:
But then you're turning around and saying, well, this space could hold three, four, five, six sheets if they were smaller.

[00:12:49] Speaker 03:
I mean, and that doesn't, something holding six sheets doesn't seem anywhere supported with written description.

[00:12:58] Speaker 03:
So it seems like if you want a written description for two, five, eights with wiggle room, that you would have asked for a claim construction that limited this to two, five, eight sheets.

[00:13:07] Speaker 01:
Well, maybe we could have done it better, but I guess what we're trying to say is that it's precise enough for the person of ordinary skill in the art to understand what we're talking about.

[00:13:17] Speaker 01:
And there are very good reasons why you wouldn't make this thing infinitely long, because you've got a huge bending moment that you're going to introduce if you do that.

[00:13:24] Speaker 01:
So there are other reasons not to make it too wide.

[00:13:28] Speaker 00:
Can I just ask you to go?

[00:13:30] Speaker 00:
Never mind.

[00:13:30] Speaker 01:
Can I reserve?

[00:13:31] Speaker 01:
I'd like to read.

[00:13:32] Speaker 04:
Yeah.

[00:13:34] Speaker 04:
OK.

[00:13:34] Speaker 04:
We'll reserve it up full time.

[00:13:35] Speaker 04:
Mr. Crudeau?

[00:13:36] Speaker 02:
Good morning, Your Honors.

[00:13:37] Speaker 02:
May it please the court?

[00:13:39] Speaker 02:
Columbia is trying to sidestep the board's written description ruling by asking this court to construe the claim as exactly two layers, five-eights and cheating.

[00:13:47] Speaker 02:
As an initial matter, we believe that Columbia waived this construction.

[00:13:51] Speaker 02:
Judge Hughes, you asked whether they proposed a construction.

[00:13:54] Speaker 02:
They didn't.

[00:13:55] Speaker 02:
We proposed a construction that would

[00:13:58] Speaker 02:
interpret the term as a continuous range that's at appendix 398 and 399.

[00:14:04] Speaker 02:
They never counterproposed a construction and this is the first time that they've presented a construction review.

[00:14:10] Speaker 03:
I understand that and that's the construction the board gave, right?

[00:14:14] Speaker 03:
And so it is the range.

[00:14:15] Speaker 03:
It's not just limited to sheets.

[00:14:17] Speaker 02:
That's correct, Your Honor.

[00:14:18] Speaker 03:
Conceivably under the board's construction, if you put a bunch of tinier sheets in there, despite what the industry practice is, it would, in their view, in branch.

[00:14:27] Speaker 02:
That's correct.

[00:14:28] Speaker 02:
I heard a concession that indeed the claims would cover two layers of 5-eighths in sheathing plus another layer of half-inch.

[00:14:35] Speaker 02:
And it's not just the parties saying this.

[00:14:37] Speaker 02:
Both experts agreed on this point, Your Honor.

[00:14:40] Speaker 02:
Our expert testified at appendix 1518 to 1519 that the limitation encompasses a measurable range.

[00:14:46] Speaker 02:
And the board expressly relied on our expert's testimony at the bottom of appendix 25.

[00:14:52] Speaker 02:
The board's finding in that regard is entitled to deference.

[00:14:55] Speaker 02:
But Columbia's expert also agreed.

[00:14:57] Speaker 02:
He testified at his deposition that the hanger covered, or rather the claims cover a hanger whose extension portion is one and six-eighths inch.

[00:15:05] Speaker 02:
or one and three-quarters inch long, that's at appendix 28-29 to 28-33, and that value falls so squarely.

[00:15:12] Speaker 03:
So hypothetically, and I know we're not here and we can't get there, but if the claim construction had been to limit it to the space for two 5-8 pieces of drywall plus whatever extra space is needed to install them, do you think there's written description support for that in the patent?

[00:15:29] Speaker 02:
No, Your Honor, I think we would still have a written description problem because presumably there's range of tolerances.

[00:15:36] Speaker 02:
And the specification doesn't disclose any value within that range, nor is there any extrinsic evidence on that point.

[00:15:43] Speaker 02:
Actually, the only extrinsic evidence is Columbia's own product sheet for its own hanger at appendix 3687 that it touts as practicing the patent.

[00:15:54] Speaker 02:
And that extension portion is 1 and 1 half inches long, which, again, falls squarely within the range.

[00:15:59] Speaker 02:
And it's much more than wiggled room.

[00:16:00] Speaker 04:
You're saying that they waived it.

[00:16:07] Speaker 04:
It says, rather than claiming the size of the space between the connection portion and the channel-shaped portion of the claimed hanger in 1-inch increments, the claims merely require that the spacing be sized to receive a discrete number of layers of a specific type of sheathing.

[00:16:26] Speaker 04:
That's exactly the claim construction argument that you're now saying, oh wait, and yet there it is.

[00:16:31] Speaker 02:
Well, Your Honor, they didn't propose it in their patent owner response as a claim construction.

[00:16:37] Speaker 02:
It was made in that single sentence in the sur reply.

[00:16:40] Speaker 02:
And even then, that language that Your Honor just read says nothing about a nominal tolerance that they invoke now today.

[00:16:48] Speaker 02:
So it's our position that the construction is different even then the sentence that Your Honor just read that was made in passing in the sur reply.

[00:16:55] Speaker 02:
But in any event, our position is that the construction is simply wrong, given that both experts agreed that this limitation resides in numerical range.

[00:17:05] Speaker 02:
And as I said, the board relied on our experts' testimony on that front.

[00:17:09] Speaker 00:
What about the language that your friend cited in the specification in Columns 10 and 11?

[00:17:20] Speaker 00:
that deal with, as I understand it, limited their dealing with fire-rated wall applications?

[00:17:28] Speaker 02:
That passage, Your Honor, refers to installing the hanger before sheathing, but it doesn't say anything about the length of the extension portion, which is what is at issue here.

[00:17:42] Speaker 02:
And importantly, in column four,

[00:17:45] Speaker 02:
line 22, this is appendix 200, the patent states that the hanger can be used for other wall configurations or fire resistant wall configurations.

[00:17:59] Speaker 02:
And so this makes, or I'm sorry, with any wall assembly or fire rated wall assembly.

[00:18:05] Speaker 02:
And so this passage of the specification makes clear that the hanger applies not only to fire resistant applications, but to any applications.

[00:18:12] Speaker 02:
including those that don't use, presumably, fire-resistant sheathing.

[00:18:20] Speaker 02:
And in fact, claim one doesn't recite fire-resistant sheathing at all.

[00:18:24] Speaker 02:
If there are no questions, Your Honors, I'd like to turn to the cross appeal, but I'm happy to answer any questions.

[00:18:30] Speaker 04:
Well, I guess I'm really surprised, because when we have these range cases, it's always in the unpredictable arts.

[00:18:37] Speaker 04:
It's in the chemical arts and things like this.

[00:18:39] Speaker 04:
This is just gypsum board and a hanger.

[00:18:41] Speaker 04:
This isn't complex.

[00:18:43] Speaker 04:
And you've got at least six figures of this patent that completely support exactly the claim limitation.

[00:18:51] Speaker 04:
So what?

[00:18:51] Speaker 04:
I don't understand.

[00:18:54] Speaker 02:
Well, Your Honor, the figures show only two layers of five-eighths inch sheathing.

[00:18:59] Speaker 04:
And the claim says two and not three.

[00:19:02] Speaker 04:
And that's what the figures show.

[00:19:03] Speaker 04:
Do the figures show two and not three?

[00:19:07] Speaker 02:
The figures do show that, Your Honor, but the claim limitation, it refers to discrete layers of sheathing to express an equivalent range for the physical length of the extension portion.

[00:19:20] Speaker 02:
And that is a numerical range.

[00:19:22] Speaker 04:
I just heard a concession today that it is both- Isn't it true that this record reflects that 5-8 inch sheeting is the standard sheeting used for fire retardant walls?

[00:19:30] Speaker 02:
It is commonly used for that purpose, Your Honor.

[00:19:34] Speaker 02:
I don't believe there's anything in the record saying that it's the only sheeting that is used.

[00:19:39] Speaker 04:
So the claim says two 5-8s in sheets, but not three.

[00:19:43] Speaker 04:
And there are six pictures that show a space for two 5-8s in sheets, but not three.

[00:19:48] Speaker 04:
How is that not supported?

[00:19:50] Speaker 02:
Well, because, Your Honor, the limitation is expressing an equivalent range for the length of a physical component.

[00:19:57] Speaker 02:
It refers to two, but not three.

[00:19:59] Speaker 02:
But it's using.

[00:20:01] Speaker 03:
I mean, this is why I'm a little surprised when I asked you the hypothetical that if this was construed as being limited to only two sheets of 5 eighths, whether there would be written description support.

[00:20:14] Speaker 03:
Because it does seem to me that the specification and the drawings talk about two sheets

[00:20:20] Speaker 03:
but not three, and the drawings show two sheets of 5-8s.

[00:20:24] Speaker 03:
But your friend already said that this would cover more than two sheets if they were of different sizes.

[00:20:30] Speaker 03:
So if the claim construction were limited to only two 5-8 sheets, I think you have a problem on written description.

[00:20:37] Speaker 02:
That's true if it's exactly two sheets, Your Honor.

[00:20:40] Speaker 02:
I was answering the question if it were two sheets plus some

[00:20:43] Speaker 02:
amount of tolerance.

[00:20:45] Speaker 04:
If there was a range of tolerance.

[00:20:54] Speaker 04:
retrofit the sheets in between two pre-existing spaces.

[00:20:58] Speaker 04:
I mean, I'm not an expert in the construction arts, but I've done enough home improvement projects to know you gotta leave yourself a little bit of space to get those sheets in there.

[00:21:06] Speaker 04:
You can't make it exactly to the tolerance.

[00:21:09] Speaker 04:
So why doesn't, since it discloses exactly that on columns 10 and 11, why doesn't that necessarily include what we all keep talking about as the wiggle room?

[00:21:20] Speaker 04:
Why wouldn't it connect?

[00:21:21] Speaker 04:
Because all we're talking about here is, did the inventor possess this?

[00:21:25] Speaker 04:
This isn't about enablement.

[00:21:27] Speaker 04:
I mean, there's no enablement question here, right?

[00:21:29] Speaker 02:
That's correct, Your Honor.

[00:21:30] Speaker 04:
I mean, how could there be?

[00:21:30] Speaker 04:
This is pretty simple art.

[00:21:32] Speaker 04:
So there's no enablement question.

[00:21:33] Speaker 04:
So the only question here with written description is, do we believe the inventor possessed the invention of two 5-8-cent sheets, not three?

[00:21:44] Speaker 02:
But the predicate to the question is that the limitation does indeed require two discrete layers and not three layers.

[00:21:53] Speaker 02:
But that's not... I mean, this limitation was... Not three layers of 5-8-8?

[00:21:56] Speaker 02:
Correct.

[00:21:57] Speaker 02:
But the limitation expresses a continuous numerical range.

[00:22:01] Speaker 02:
And that's the point.

[00:22:02] Speaker 02:
If that construction is correct... It doesn't, though.

[00:22:05] Speaker 04:
It does not actually discuss a numerical range.

[00:22:08] Speaker 04:
It says two layers of 5-8-6 sheetings

[00:22:12] Speaker 04:
and not three layers of 5.8-cent sheeting.

[00:22:15] Speaker 04:
So you keep talking about a range, but when we see range claims, it's 1.1-1.7.

[00:22:21] Speaker 04:
This is talking very clearly about two sheets, not three sheets.

[00:22:27] Speaker 02:
It's an equivalent way of expressing a range.

[00:22:29] Speaker 02:
Remember, the component that we're talking about is a physical component with length, and it wouldn't make sense to refer to it in terms of discrete layers.

[00:22:37] Speaker 04:
But there are six figures in a six-cent art

[00:22:41] Speaker 04:
that show exactly this, and then columns 10 and 11 talk about how you need the wiggle room to push the sheets in, and one of skill in the art would know that.

[00:22:49] Speaker 04:
How does that not show the inventor possessed a space for two sheets plus a little wiggle room?

[00:22:55] Speaker 04:
This is just possession.

[00:22:57] Speaker 04:
Everybody knows these claims are enabled.

[00:22:58] Speaker 04:
This is just a, I don't see how I could conclude this inventor did not possess this.

[00:23:03] Speaker 04:
Six figures show exactly it.

[00:23:05] Speaker 02:
That's correct, Your Honor, under that interpretation of the claims.

[00:23:09] Speaker 02:
And we submit that that interpretation is just not correct.

[00:23:12] Speaker 02:
Because, I mean, it's common to use discrete number of units to refer to a continuous range.

[00:23:19] Speaker 02:
And that's what the applicant did here.

[00:23:22] Speaker 02:
In fact, the examiner suggested that the applicant use the language found in paragraph 53, which is what we were reading earlier, column four, line 15, which refers to exactly two layers of five-eighths-inch sheeting.

[00:23:34] Speaker 02:
And yet they chose to use different terminology in the claim itself.

[00:23:39] Speaker 02:
And so they didn't even heed this notion that there was a meeting of minds between the examiner and the applicant as to what the claim means is just wrong, Your Honor.

[00:23:49] Speaker 02:
And I would also submit that a tolerance or wiggle room is already accounted for by the lower limit of the claim that is the phrase large enough to permit two layers of 5-8 inch sheathing suggests that the distance could be slightly larger.

[00:24:03] Speaker 02:
And so the upper limit must mean something different.

[00:24:06] Speaker 02:
And I think the most natural reading that both experts agreed on this reading is that it's a continuous numerical range.

[00:24:13] Speaker 02:
If I can, I would like to turn to the.

[00:24:16] Speaker 04:
What is the lower limit of the range as construed?

[00:24:20] Speaker 02:
It would be equivalent to one and a quarter inches.

[00:24:23] Speaker 04:
But you just said that I should interpret permit two layers as bigger than that because you've got to have space to get it in.

[00:24:30] Speaker 04:
So if the lower thing in the range is exactly one and a quarter inches, how does that comport with what you just said?

[00:24:39] Speaker 02:
If there were, my point was only that if the claim limitation recited only the lower limit, that there would be tolerance and we wouldn't need the upper limit to convey that tolerance.

[00:24:51] Speaker 02:
Colombia is arguing that that is the only purpose of the upper limit.

[00:24:54] Speaker 02:
That's a very awkward way to say two layers and a little bit of wiggle room.

[00:25:00] Speaker 02:
They could have used other language like approximately or about and they didn't do that.

[00:25:05] Speaker 02:
Again, the examiner encouraged them to use language found in the specification referring to two layers and they didn't.

[00:25:14] Speaker 02:
I would like to address the indefiniteness argument on our cross-appeal

[00:25:19] Speaker 02:
The board erred in holding the claim 20 and substitute claim 40 are not indefinite.

[00:25:24] Speaker 02:
Unlike every other claim in the patent, these claims don't recite a particular size for the hanger's extension portion.

[00:25:32] Speaker 02:
Rather, they merely require the hanger to be large enough to receive the drywall without saying which or how much.

[00:25:38] Speaker 02:
And I think the ambiguity here is highlighted by the conflict between the specification and the claims.

[00:25:44] Speaker 02:
Again, as we've been discussing, the specification refers to two layers of 5-8s and sheathing.

[00:25:50] Speaker 02:
But claims 20 and 40 disregard that teaching altogether and neither refer to that configuration or any other standard drywall configuration.

[00:25:59] Speaker 02:
And even Columbia itself hasn't been consistent as to what these claims mean.

[00:26:04] Speaker 02:
The best it can do is invoke standard drywall thicknesses that are not referenced in the claim or the specification.

[00:26:10] Speaker 02:
But the fact that standard drywall exists doesn't answer the legal question of what the claims mean.

[00:26:17] Speaker 02:
The problem here is that a person with skill in the art wouldn't even know whether the claim is limited to one or more or all of those standard drywall thicknesses.

[00:26:25] Speaker 02:
And this creates the zone of uncertainty that the Nautilus standard is designed to prevent.

[00:26:32] Speaker 02:
Now, one interpretation of the claims is that the hanger must be long enough

[00:26:36] Speaker 02:
for the particular application at issue.

[00:26:39] Speaker 02:
But that's problematic because a skilled artisan can't know whether a given hanger is covered by the claims unless he also knows the intended use.

[00:26:48] Speaker 02:
And even if that intended use falls within the scope of the claim, others might not be.

[00:26:53] Speaker 02:
So we run into this problem that any given hanger simultaneously falls within the scope and doesn't in this court.

[00:26:59] Speaker 02:
has noted in the Halliburton case that that is the epitome of indefiniteness.

[00:27:05] Speaker 02:
The court there said that a claim construction requiring separate infringement determinations and that yields different outcomes based on every set of circumstances is likely to be indefinite and reaffirm the same principle in the Liberty ammunition case cited in our briefing, even after Nautilus.

[00:27:23] Speaker 02:
Now, Columbia argues that the claim actually means that the hanger must accommodate any amount of drywall.

[00:27:30] Speaker 02:
But that can't be correct either.

[00:27:32] Speaker 02:
As an initial matter, that would run into a written description problem for the reasons that we've been discussing.

[00:27:38] Speaker 02:
But that is also problematic because it reads the limitation out of the claims altogether.

[00:27:44] Speaker 04:
Do you want to save any time at all for a medal?

[00:27:47] Speaker 02:
I do.

[00:27:47] Speaker 02:
I'm sorry, Your Honor.

[00:27:48] Speaker 02:
Thank you very much.

[00:27:50] Speaker ?:
Mr. James?

[00:27:51] Speaker 03:
Can I just ask you, I don't understand why, when you're arguing that this claim has written description score because it's two, not three pieces of drywall, that you then turn around and say, but three pieces of drywall, if one of them is less than five-eighths, because it would fit in this space, would infringe.

[00:28:12] Speaker 01:
Well, I think on the one hand, we're talking about what does the claim limitation actually see.

[00:28:17] Speaker 01:
On the other hand, we're saying, well,

[00:28:20] Speaker 01:
How would someone actually use the claimed hanger in the field?

[00:28:23] Speaker 01:
I mean, to me, those are two completely different questions.

[00:28:25] Speaker 01:
The claim doesn't prescribe the use of a particular size dryer.

[00:28:30] Speaker 03:
But you're asking us to construe the claim to not have a range, which is what the board did.

[00:28:37] Speaker 03:
but to be big enough to hold two but not three sheets.

[00:28:41] Speaker 03:
And so if the claim is limited to two sheets of 5-8 inch drywall, then why would two 5-8s plus one quarter or one half or whatever you might add in French?

[00:28:54] Speaker 01:
Because that's the size that the hanger was constructed.

[00:28:57] Speaker 01:
It's constructed at a size that fits within the literal words of the claim.

[00:29:02] Speaker 03:
Well, I don't see where you have written description support if we're construing it to limit it to two five eights for three sheets of drywall.

[00:29:11] Speaker 03:
Well, I'm just saying that it's either a range or it's two sheets.

[00:29:15] Speaker 03:
One of them.

[00:29:16] Speaker 03:
I don't think you have written descriptions for the other one.

[00:29:18] Speaker 03:
I think you do.

[00:29:19] Speaker 03:
I think you're trying to have this both ways.

[00:29:21] Speaker 03:
Well, I mean, again, we're just talking about providing that you won't agree that this claim construction should be limited to two and only two sheets of drywall with whatever amount of I think that's how the person of ordinary skill in the art would understand it in measured in units of five.

[00:29:37] Speaker 03:
So is that the correct claim instruction?

[00:29:40] Speaker 01:
That is a correct way to consider a claim.

[00:29:41] Speaker 03:
So if that's the correct claim instruction, that it's two and only two sheets of five-inch drywall, why would two sheets of five-eighths plus one smaller sheet in French?

[00:29:51] Speaker 01:
Well, you could conceivably have some smaller sheet, but I'm just saying that's the way the person of ordinary schooling would understand it.

[00:29:59] Speaker 01:
So I just want to say very briefly in the time that I have left, but just in general, I think the issues on this appeal can be solved by analyzing the claims as written.

[00:30:10] Speaker 01:
The board's construction of configure to extend through seeding completely reads out the requirement to extend through.

[00:30:17] Speaker 01:
under the proper construction.

[00:30:19] Speaker 01:
So I just want to go back to I think we need to talk a little bit about the VASCAP case.

[00:30:37] Speaker 01:
I think that case, getting back to this question of written description support,

[00:30:42] Speaker 04:
Okay, well, you know what?

[00:30:43] Speaker 04:
Your time is up and we definitely have a strong appreciation for the Basquiat cave.

[00:30:47] Speaker 04:
So why don't we go ahead?

[00:30:49] Speaker 04:
Well, you actually didn't address indefiniteness, so you don't have.