[00:00:02] Speaker 06:
The legal question on enablement, which we ask you to review de novo, is whether the Commission properly applied the correct meaning of inherent

[00:00:26] Speaker 06:
in finding the existence of an inherent upper limit in the challenged open and range claims, and finding those claims enabled by the patent.

[00:00:35] Speaker 01:
So you're saying it's not a, I mean, otherwise enablement is a question of law based on underlying facts.

[00:00:40] Speaker 01:
But you're saying here there's only a legal question, and the legal question is what the scope of beverage is, what the definition of inherent is.

[00:00:52] Speaker 06:
Yes, Your Honor, this is essentially a claim construction dispute.

[00:00:56] Speaker 06:
Before an enablement inquiry can proceed, the scope of what needs to be enabled must be determined.

[00:01:04] Speaker 06:
The more that is claimed, the more must be enabled.

[00:01:08] Speaker 04:
Look, I'm really very sympathetic to what you're arguing right now.

[00:01:13] Speaker 04:
The claim, for example, claim one says at least 98 fiber optic connections.

[00:01:19] Speaker 04:
The spec undoubtedly discloses 144, right?

[00:01:23] Speaker 04:
So if at least 98, if the board says there's an inherent limit, I'm a little baffled at the idea there's an inherent limit, but we can't tell you what it is.

[00:01:32] Speaker 04:
It's like a big secret.

[00:01:33] Speaker 04:
What's the inherent limit?

[00:01:35] Speaker 04:
So if they said it was 98 to 144, I think there's enablement, right?

[00:01:38] Speaker 04:
But if they go above 144 to try to get to like 576 or something, we've got no problem, because that technology didn't even exist at the time.

[00:01:48] Speaker 04:
Why isn't the solution here revocating remand until the board has got to tell us what this inherent upper limit is so that we can properly assess enablement?

[00:01:56] Speaker 06:
The outcome would not change, Your Honor.

[00:01:59] Speaker 04:
I just described to you a scenario where the claims are fully enabled.

[00:02:06] Speaker 01:
What would you say the appropriate claim construction is?

[00:02:11] Speaker 06:
We don't know what the inherent limit is.

[00:02:15] Speaker 06:
But what we do know is that the claims only teach up the specification only teaches up to 144.

[00:02:22] Speaker 06:
So the court and the ITC found an upper limit, which presumably is 144, by crediting the expert testimony of 144.

[00:02:32] Speaker 01:
So you would say that's the correct way to construe the claims.

[00:02:34] Speaker 01:
The claim should be construed only to 144.

[00:02:37] Speaker 01:
get to a limit of 144?

[00:02:38] Speaker 06:
Yes, Your Honor.

[00:02:40] Speaker 06:
Our position is that that is not an inherent limit.

[00:02:43] Speaker 06:
An inherent limit is something that doesn't change.

[00:02:46] Speaker 06:
An example of an inherent limit is a percentage, 100%.

[00:02:49] Speaker 01:
A claim to... Well, do you have a claim differentiation problem if you limit it, if you construe that to mean only 144?

[00:02:57] Speaker 01:
Isn't that what the dependent claims say?

[00:03:00] Speaker 01:
Isn't that the difference between the independent and the dependent?

[00:03:02] Speaker 06:
There is the at least.

[00:03:05] Speaker 06:
The claim says at least.

[00:03:06] Speaker 06:
And that is in open-ended range.

[00:03:09] Speaker 06:
And unless there is an inherent limit found by the court construing that claim, it's not enabled.

[00:03:15] Speaker 06:
Now, we would agree that up to 144, the dependent claim is enabled.

[00:03:20] Speaker 06:
Anything above is not.

[00:03:22] Speaker 04:
Well, but if a skilled artisan would know the highest you could go at this point in time was 144, why isn't that the inherent limit?

[00:03:31] Speaker 06:
Because an inherent limit under this court's precedent does not change.

[00:03:35] Speaker 06:
And the record evidence.

[00:03:37] Speaker 04:
If at this point in time, you can't go above 144, it's not going to change.

[00:03:44] Speaker 06:
The evidence shows it did.

[00:03:46] Speaker 04:
it but if the inherent limit is 144 and now you can do 576, 576 isn't included in this claim because this claim has an inherent limit of 144.

[00:03:56] Speaker 06:
So the claim has a limit of 144.

[00:03:58] Speaker 06:
That limit is not inherent.

[00:03:59] Speaker 03:
An inherent limit is something that... Why isn't it inherent if at this time technology only

[00:04:05] Speaker 03:
could go to 144.

[00:04:06] Speaker 03:
And so writing this claim in the context of what's going on in the field and the art, they meant the inherent upper limit to be 144.

[00:04:17] Speaker 03:
The fact that new discoveries are made later doesn't mean that they can now expand their patent beyond that.

[00:04:25] Speaker 03:
It's only enabled up to what was inherent upper limit at the time this patent was done.

[00:04:33] Speaker 06:
So we absolutely agree that the upper limit, known at the time, was 144.

[00:04:40] Speaker 06:
But that limit is not inherent.

[00:04:43] Speaker 06:
Inherent limit, again, something like the speed of light.

[00:04:48] Speaker 03:
And why isn't it inherent?

[00:04:49] Speaker 03:
At that time, nobody could have done anything beyond 144.

[00:04:55] Speaker 06:
Inherent means for all time.

[00:04:57] Speaker 06:
It does not change.

[00:04:59] Speaker 06:
Anything that can be exceeded.

[00:05:00] Speaker 03:
What if we disagree with you about that?

[00:05:02] Speaker 03:
But if we agree that inherent has to be looked at what was technologically capable at the time, and if the upper limit was absolutely 144, it was an inherent limit, and nobody could go beyond that, isn't this enabled?

[00:05:23] Speaker 06:
The specification is enabled up to 144, but that's not what the claim says.

[00:05:27] Speaker 01:
So the fuss here, I mean, I thought we were all on, you know,

[00:05:31] Speaker 01:
sort of taking your side, these seem to be friendly questions.

[00:05:34] Speaker 01:
But now I'm wondering if, because you think this is an enablement problem and the claims should be struck, versus our being able to construe the claims in a narrow way, much narrower than arguably the ITC did.

[00:05:48] Speaker 01:
but not striking a claim.

[00:05:50] Speaker 01:
Is that why we're having a fight here, or why we're having a disagreement?

[00:05:54] Speaker 06:
We agree that the construction should be narrow.

[00:05:56] Speaker 06:
And if that's what this Court finds, we do not dispute that.

[00:06:02] Speaker 06:
If it were remanded, the

[00:06:07] Speaker 06:
Corning has did the ITC apply this to products that were above 144 it did and the evidence their basis for that their basis was that the Specification did not what the a person ordinary skill in the art would understand from looking at the specification that they could reach densities of more than 144 up to 432 connections per you space without undue experimentation

[00:06:36] Speaker 04:
But now, based on evolution of technology, but not at the time this patent was written.

[00:06:44] Speaker 06:
The ITC found that even if the inherent upper limit were 432 connections, that the specification caught up to that limit.

[00:06:59] Speaker 06:
which is contradictory.

[00:07:00] Speaker 06:
It's trying to have it both ways.

[00:07:03] Speaker 04:
I think that's why I started by trying to suggest to you that I think that these are meant to be friendly questions.

[00:07:09] Speaker 04:
I mean, I read this, and I don't see how there's enablement for anything above 144.

[00:07:14] Speaker 04:
And that is the only way these claims can be deemed enabled if there's an inherent limit.

[00:07:21] Speaker 04:
And it's found to be 144.

[00:07:23] Speaker 04:
If that's the case, these claims are, in fact, enabled.

[00:07:28] Speaker 04:
it may create a scenario where other aspects of the decision have to be vacated and remanded.

[00:07:33] Speaker 04:
And you can tell us about what that would entail.

[00:07:37] Speaker 04:
But I guess one of the things that baffled me is that you said, you started by suggesting that the ITC had in fact found that the inherent limit was 144.

[00:07:48] Speaker 04:
Maybe I misunderstood you.

[00:07:50] Speaker 04:
But I read the ITC opinion as sort of declining to say precisely what the inherent upper limit was.

[00:07:57] Speaker 04:
which caused me a problem.

[00:07:58] Speaker 04:
And I was originally leaning towards making a remand and forcing them to name the upper limit, which I think is 144.

[00:08:05] Speaker 04:
So help me understand what's wrong with what I'm saying.

[00:08:09] Speaker 06:
Aside from remanding, there's nothing wrong.

[00:08:14] Speaker 06:
You're exactly right, Your Honor.

[00:08:17] Speaker 06:
It's unclear what the ITC found to be the upper limit.

[00:08:20] Speaker 06:
All that they said was there is some

[00:08:22] Speaker 06:
inherent upper limit.

[00:08:24] Speaker 06:
But when it applied the enablement test to that heretofore unknown scope, whatever the upper limit was, it's found that the specification enabled that.

[00:08:35] Speaker 03:
Now if the upper limit is... I'm a little confused too now because I thought that the ITC had limited, had found the inherent upper limit is what was technologically available at the time.

[00:08:50] Speaker 06:
Correct, and they improperly excluded evidence to elucidate the scope of the claims at the time of the filing of the patent.

[00:08:58] Speaker 03:
And that evidence was... But let me follow up on that, because this is, again, this I think is... If that was what made it enabled, that it was an upper limit that was known at the time, but then they turned around and applied it to things that evolved later, then

[00:09:17] Speaker 03:
that seems if we're constrained to claim in a way to make it enabled then they they're violating what at least has to be an implicit claim construction to limit this if you if what you say is correct that they applied this and excluded goods that went above that 144 category I mean I guess the ITC can answer that better but

[00:09:38] Speaker 06:
The ITC went above whatever they determined the inherent upper limit to be by finding that the specification enabled densities greater above that inherent limit.

[00:09:51] Speaker 04:
My clerk just told me, and maybe my clerk is wrong, but my clerk just told me the products at issue in this case, the ones that are subject to this entire proceeding, operated 144.

[00:09:59] Speaker 04:
That's correct.

[00:10:00] Speaker 04:
Well, then didn't you just tell Judge Hughes a few minutes ago that no, the ITC applied this in this case to products at like 476 or something?

[00:10:06] Speaker 04:
I don't remember the number.

[00:10:08] Speaker 03:
I don't either, but you told me that they excluded products that included above 144 is that incorrect?

[00:10:14] Speaker 06:
They did that when determining what the inherent upper limit was then in determining whether there was undue experimentation They found that and And I don't understand what you're saying my clerk said that the products that issue in this case were 144 is that correct?

[00:10:32] Speaker 04:
It's correct

[00:10:34] Speaker 03:
So if this is enabled up to 144, because that was the state of the art at the time, and all they excluded was products up to 144, what's the problem?

[00:10:47] Speaker 06:
The problem is that Corning and Corning's expert admitted that connections higher than 144 fell within the scope of the claims.

[00:10:57] Speaker 06:
And Corning is not disclaiming.

[00:10:58] Speaker 06:
Who cares what Corning thinks?

[00:10:59] Speaker 06:
The ITC implicitly adopted that.

[00:11:03] Speaker 03:
I don't think they did.

[00:11:05] Speaker 03:
I think the ITC said...

[00:11:07] Speaker 03:
And there's an inherent upper limit that's based upon what's technologically available at the time.

[00:11:12] Speaker 03:
And they should have probably said it's 144.

[00:11:16] Speaker 03:
But if we all agree that that's what it was at the time, why waste time on a remand?

[00:11:22] Speaker 03:
It's enabled up to 144.

[00:11:24] Speaker 03:
And if that covers the excluded products, then a remand for them to tell us what they meant is kind of beside the point.

[00:11:31] Speaker 06:
We believe that this

[00:11:33] Speaker 03:
You're just trying to get this knocked out as enabled at any range, right?

[00:11:37] Speaker 03:
So that the exclusion order goes away.

[00:11:40] Speaker 06:
We believe that the claims are enabled up to 144.

[00:11:43] Speaker 06:
We have not challenged.

[00:11:45] Speaker 03:
So the claims are enabled up to 144.

[00:11:47] Speaker 03:
The goods that are being excluded are at 144.

[00:11:50] Speaker 03:
And what's the problem?

[00:11:53] Speaker 06:
Because the claim scope is not limited to 144.

[00:11:58] Speaker 06:
It says at least.

[00:12:00] Speaker 06:
It covers, potentially.

[00:12:01] Speaker 03:
Not if we construe it as limited to 144.

[00:12:04] Speaker 06:
That's correct.

[00:12:05] Speaker 06:
But that was not what the ITC did.

[00:12:07] Speaker 03:
Let's just assume that that's the way we read their decision, that it's construed as limited to 144 because that was the inherent upper limit at the time.

[00:12:17] Speaker 03:
Then do we have a problem anymore?

[00:12:20] Speaker 03:
Hypothetically.

[00:12:21] Speaker 03:
You don't have to accept all of that.

[00:12:24] Speaker 06:
We do not with one caveat is that the case

[00:12:29] Speaker 06:
Post-priority date evidence is relevant to determine the scope of the claims at the time of the filing of the patent.

[00:12:37] Speaker 06:
And the scope of the claims, whether a limit is inherent in that scope, the ITC limited it to what was known in New York, not what

[00:12:47] Speaker 06:
inherent.

[00:12:48] Speaker 06:
An inherent upper limit is rare and the Corning chose to claim at least and it undertook the risk of having to enable up to infinity.

[00:12:58] Speaker 06:
Now if the claim were construed to be up to 144 we don't have a problem except that it's not inherent.

[00:13:06] Speaker 06:
That is just known upper limit at the time.

[00:13:13] Speaker 07:
Ms.

[00:13:13] Speaker 07:
Chen?

[00:13:14] Speaker 07:
Good morning, Your Honor.

[00:13:15] Speaker 07:
May it please the Court?

[00:13:16] Speaker 07:
No remand is necessary in this case.

[00:13:19] Speaker 07:
The ALG found that there is an inherent upper limit and that one of ordinary skill in the art would recognize that limit based on the technology, the state of the art at the time of the priority date.

[00:13:29] Speaker 04:
So what is the inherent upper limit?

[00:13:31] Speaker 07:
The inherent limit is about 144.

[00:13:33] Speaker 07:
There was no dispute among the experts and the even respondents engineers that

[00:13:43] Speaker 04:
Based on the state of the art, at the time of the priority date... Did you say about because it's possible that other components could be made smaller such that it would give a tiny bit of wiggle room or something?

[00:13:52] Speaker 04:
Or why did you say about as opposed to the upper limit is 144?

[00:13:57] Speaker 07:
I said about because Corning's expert had testified that the upper limit is 144, but he didn't want to exclude the fact that maybe one additional adapter could be squeezed in.

[00:14:07] Speaker 07:
And that's also not the dispute of the enablement.

[00:14:12] Speaker 07:
FS.com does not question that perhaps one additional adapter could be squeezed in to the disclosed apparatuses.

[00:14:21] Speaker 01:
So is that what the ITC meant?

[00:14:24] Speaker 01:
I read it a little while ago, but I read it differently.

[00:14:26] Speaker 01:
I thought we were talking about numbers larger than the numbers in the claims, and that the ITC inherently seemed to have accepted that the number could be larger, and it just wasn't going to be pinned down to how much larger.

[00:14:45] Speaker 01:
Am I misconstruing what the ITC said?

[00:14:48] Speaker 01:
You seem to be saying the ITC said, essentially, the inherent limit is

[00:14:53] Speaker 01:
You know, 144, give a minuscule amount.

[00:14:57] Speaker 01:
But they said at the end of the day, they weren't going to give us an inherent limit, right?

[00:15:01] Speaker 01:
So why were they not willing to say the inherent limit is 144?

[00:15:06] Speaker 07:
No, I don't believe that that's the case, Your Honor.

[00:15:10] Speaker 07:
What FS.com's counsel is trying to say is the limit is up to infinity.

[00:15:15] Speaker 07:
But if you read the ALJ's initial determination, he found that there is the existence of an upper limit based on the state of the art.

[00:15:23] Speaker 01:
And what is that upper limit?

[00:15:24] Speaker 07:
And that limit is about 144.

[00:15:25] Speaker 07:
And that is not disputed by the experts, by the engineers.

[00:15:29] Speaker 07:
They attempted to

[00:15:31] Speaker 07:
Some of the respondents and engineers attempted to calculate an upper limit that exceeded.

[00:15:37] Speaker 07:
But nobody was able to make or use a fiber optic apparatus that exceeded what Corning was able to achieve in these patents.

[00:15:46] Speaker 03:
Also, can you just confirm for me, this exclusion order doesn't cover anything above 144?

[00:15:54] Speaker 07:
The exclusion order recites the claim limitations

[00:15:59] Speaker 07:
in the claims that at least 98 fiber optic connections.

[00:16:03] Speaker 03:
Now, there was no accused product that was... You're not instilling a huge amount of confidence in me by not answering yes.

[00:16:13] Speaker 07:
I'm sorry?

[00:16:15] Speaker 03:
Well, I mean, if we're going to agree with you that the ITC construed these claims to be limited to 144,

[00:16:23] Speaker 03:
in order for us to find that it's enabled, then presumably you can't exclude any products that have a number higher than 144, right?

[00:16:34] Speaker 07:
Right, that was not an issue before the commission.

[00:16:37] Speaker 03:
No, I understand, but I mean,

[00:16:41] Speaker 07:
There hasn't been, you know, customs hasn't come to the commission asking whether any apparatus above 144 was trying to attempt to get in.

[00:16:53] Speaker 07:
And all of the accused products accommodate up to 144 fiber optic connections.

[00:16:59] Speaker 03:
Great.

[00:17:00] Speaker 07:
The commission's remedy is not on appeal.

[00:17:02] Speaker 03:
But not more.

[00:17:04] Speaker 07:
Right, that was not an infringement.

[00:17:07] Speaker 03:
If there's a newer invention that accommodates 500 or something, whatever multiple you're getting to, that's not covered by this patent, right?

[00:17:16] Speaker 07:
Again, that issue wasn't presented before the commission.

[00:17:18] Speaker 03:
I know, but I'm asking you hypotheticals.

[00:17:20] Speaker 03:
You need to answer my hypotheticals.

[00:17:22] Speaker 07:
Hypothetically, the AOJ construed the upper limit to be about 144.

[00:17:27] Speaker 07:
So in any future infringement proceeding, if a respondent was to come before the commission for an advisory opinion,

[00:17:35] Speaker 07:
That is the claim construction that the Commission will be looking at, that customs will be looking at in determining whether these other products would be within the scope of the Commission's orders or the scope of the claim.

[00:17:46] Speaker 03:
And if they're in the 500 range, they're not within the scope, right?

[00:17:50] Speaker 03:
Hypothetically.

[00:17:53] Speaker 07:
Yeah, I mean, it's

[00:17:55] Speaker 07:
Based on the claim construction that the ALJ found, that there was an upper inherent limit of 140.

[00:17:59] Speaker 03:
Well, I mean, you're not going to just be relying on the ALJ's construction if you win here.

[00:18:04] Speaker 03:
It's because we're going to be affirming your view of that.

[00:18:07] Speaker 03:
And it's going to be binding on the ITC.

[00:18:10] Speaker 04:
Because the general exclusion order says, quote, infringing high-density fiber optic equipment.

[00:18:16] Speaker 04:
The general exclusion order would, for example, encompass MVC adapters.

[00:18:22] Speaker 04:
I won't say what limit they're at, but it would.

[00:18:25] Speaker 04:
based on the way the exclusion order is written.

[00:18:27] Speaker 04:
MDC adapters are above 144, substantially low.

[00:18:31] Speaker 04:
That would be a problem.

[00:18:32] Speaker 04:
That's what we're trying to convey to you.

[00:18:34] Speaker 04:
And so I want to make sure that you don't understand this exclusion order to allow the ITC to exclude other kinds of adapters that are dramatically higher.

[00:18:47] Speaker 07:
I understand.

[00:18:48] Speaker 07:
And I don't agree with you in that the claims would go that high.

[00:18:54] Speaker 07:
In order to figure out what products are within the scope of the GEO, you have to look at what was construed by this court, by the statements made by Corning in the underlying investigation, what the ALJ found.

[00:19:09] Speaker 07:
And based on that claim construction, we would determine in an advisory presentation.

[00:19:14] Speaker 03:
Can I just ask you one more time to see if I can get a clear answer?

[00:19:17] Speaker 03:
If we construe this, that it only covers up to 144, then in the future, you can't, based upon this patent, exclude things that go above 144.

[00:19:28] Speaker 03:
Is that right?

[00:19:28] Speaker 03:
That's correct, Your Honor.

[00:19:29] Speaker 01:
And what about the exclusion order?

[00:19:31] Speaker 01:
Just as a practical matter, I don't know how this thing operates.

[00:19:34] Speaker 01:
But I'm sure the customs officers don't sit there with a stack of our opinions to ascertain how we construe claims.

[00:19:41] Speaker 01:
I think they look at the exclusion order.

[00:19:43] Speaker 01:
So will you modify the exclusion order once you get an opinion?

[00:19:50] Speaker 01:
I mean, I'm not sure why it's as broad as the chief read it anyway.

[00:19:55] Speaker 01:
But is that what will happen?

[00:19:58] Speaker 07:
I don't believe the exclusion order will be read that broadly.

[00:20:01] Speaker 07:
As you say, the claim construction is that there was an inherent upper limit of about 144 fiber optic connections.

[00:20:08] Speaker 07:
And the exclusion order has to be read in conjunction with the commission opinion and this court's opinion later on in determining what products are within the scope of the exclusion order.

[00:20:19] Speaker 07:
And again, there is no, or at least to the commission's knowledge, no hypothetical product currently that has these upright

[00:20:27] Speaker 07:
um, densities above 144 and that.

[00:20:29] Speaker 07:
But if that was the case, they would come before the commission.

[00:20:32] Speaker 07:
They could come before customs for a determination.

[00:20:36] Speaker 03:
Now, if... What would be the harm in us if given that there's a apparent lack of clarity

[00:20:42] Speaker 03:
Even if we agree with you that this is the client construction limits to 144 Because the ITC's decision on this is fuzzy at best I think to send it back and just say you need to modify Your exclusion order to specifically call out 144.

[00:21:00] Speaker 03:
It would still be a valid exclusion order, but it would just be plain on its face.

[00:21:07] Speaker 07:
The problem with that is by specifying 144

[00:21:11] Speaker 03:
Up to?

[00:21:12] Speaker 07:
Up to 144.

[00:21:13] Speaker 07:
FS.com has not shown undue experimentation with adding an additional adapter.

[00:21:23] Speaker 07:
It is not exactly 144.

[00:21:24] Speaker 07:
It is upon respondents' burden to show undue experimentation.

[00:21:28] Speaker 07:
Here, there are only evidence regarding enablement.

[00:21:32] Speaker 04:
OK, but if we say about 144, because one more adapter is going to add like 15 to 20.

[00:21:37] Speaker 04:
It's not going to add 300.

[00:21:39] Speaker 07:
there would be perhaps litigation regarding what is the construction of about 144.

[00:21:43] Speaker 07:
So I don't know what benefit there would be to ask the commission to recite what exactly is the upper limit.

[00:21:54] Speaker 07:
Here, it would have to be construed based on what the commission found and based on what this court will say in its opinion.

[00:22:01] Speaker 07:
But the ALJ found that there was substantial evidence supporting

[00:22:05] Speaker 07:
an upper limit of about 141.

[00:22:07] Speaker 04:
We need to hear from the other lawyer.

[00:22:10] Speaker 01:
Can I just indulge for one or two minutes?

[00:22:13] Speaker 01:
Yes.

[00:22:13] Speaker 01:
There's another issue in this case, and I want to confirm that nothing we do is going to affirm what was done in connection with the arguments of inducement and nexus and so forth.

[00:22:26] Speaker 01:
Page appendix 32 of the ITC opinion says something that I find

[00:22:32] Speaker 01:
at least questionable.

[00:22:34] Speaker 01:
And it's about something that I understand wasn't decided in Suprema.

[00:22:39] Speaker 01:
I want you to know whether you agree with me.

[00:22:42] Speaker 01:
And that is the time at which the inducement has to occur.

[00:22:48] Speaker 01:
Because the commission says here, before, during, or after, none of that matters as a matter of law.

[00:22:55] Speaker 01:
And they also cite Corning, I guess, for the fact that their reasoning about that was quoted by the Federal Circuit with approval that the location of Comcast's inducing conduct is not legally relevant.

[00:23:16] Speaker 01:
I don't want to take your time to look at what they cited in Corning.

[00:23:20] Speaker 01:
But it's not my understanding that we cited what they're saying we cited with approval.

[00:23:26] Speaker 01:
Do you have any comment on that?

[00:23:27] Speaker 01:
Do you understand what I mean?

[00:23:29] Speaker 07:
I don't believe that's what the commission's opinion states.

[00:23:32] Speaker 07:
And I believe you're referring to the Comcast opinion.

[00:23:36] Speaker 01:
No, I'm looking at appendix 32 of this case.

[00:23:40] Speaker 01:
And I'm saying that the commission is citing Comcast as saying that

[00:23:46] Speaker 01:
We, in our opinion in Comcast, we quoted with approval what the commission thinks is the law, which is it doesn't matter whether infringement happens before, during, or after.

[00:23:59] Speaker 01:
And I don't think that's accurate.

[00:24:01] Speaker 01:
Am I misunderstanding something?

[00:24:05] Speaker 07:
The commission was not saying that it doesn't matter when the infringement happened.

[00:24:10] Speaker 07:
There in Comcast, the inducing activity had occurred before, during,

[00:24:15] Speaker 01:
Well, it says, in other words, inducing activities can occur before, during, or after importation.

[00:24:22] Speaker 01:
Have we decided that issue?

[00:24:23] Speaker 01:
We, the Federal Circuit?

[00:24:25] Speaker 07:
No, and we don't cite Comcast after that sentence, Your Honor.

[00:24:31] Speaker 07:
In Comcast, the inducing activity occurred before importation because of the design of the set-top boxes that was relevant in Comcast.

[00:24:41] Speaker 07:
And we had argued that

[00:24:42] Speaker 07:
The inducing activity also incurred during importation with the act of importation.

[00:24:47] Speaker 01:
Well, I'm reading what the ITC said, and I'm glad for your clarification.

[00:24:51] Speaker 01:
But I mean, it says the location, the Federal Circuit quoted with approval that the location of Comcast-inducing conduct is not legally relevant.

[00:25:01] Speaker 01:
In other words, it can occur before, during, or after.

[00:25:05] Speaker 01:
Seemed like the ITC thinks that that's the law of our circuit.

[00:25:10] Speaker 01:
And I just want to clarify whether you think that.

[00:25:14] Speaker 07:
No, that was not.

[00:25:16] Speaker 01:
Thank you.

[00:25:16] Speaker 01:
Sorry to take your time.

[00:25:18] Speaker 04:
Thank you.

[00:25:22] Speaker 00:
Good morning, Your Honors.

[00:25:22] Speaker 00:
Thank you, Chief Judge Moore, and may it please the Court.

[00:25:25] Speaker 00:
I'd like to begin by addressing Judge Hsu's question about modification of the order.

[00:25:29] Speaker 00:
One thing that I would like to make clear is that while this appeal has focused on the range claims of the 320 and 456 patents, there are other patents involved that do not have density elements to them.

[00:25:46] Speaker 00:
So if you, for example, hypothetically had a device that satisfied the claims of the 133 patent, but used a more recently-invented adapter, I don't think there's any contention that that wouldn't be enabled, even by the other side.

[00:26:00] Speaker 00:
So I don't think the exclusion order should be modified to completely exclude things that might meet the claims of the 153, which is no longer challenged on this appeal, but that Your Honor might construe to the outside of the inherent limit of the 320 and the 456.

[00:26:16] Speaker 00:
With respect to the question, I would also just like to clarify that all the devices that issue in this case are at 144.

[00:26:25] Speaker 00:
They do exactly what Corning invented.

[00:26:27] Speaker 00:
They do it exactly the way that Corning invented it.

[00:26:30] Speaker 00:
There is some

[00:26:33] Speaker 00:
You know, we had suggested, I think, and I would suggest now that the court doesn't need to reach the question of what would infringe going forward.

[00:26:41] Speaker 00:
There's language in this court's position, sorry, this court's predecessor's decision in Hogan, and then the court's decision in Kyron that when you have later developed art that would allow a result that wasn't enabled at the time but is within the scope of the claims that the inventor might be able to claim that.

[00:26:57] Speaker 04:
I think your problem is that we don't think it's within the scope of the claims.

[00:27:04] Speaker 04:
So it makes a lot of good sense for us to say that because if you think 432 is within the scope of the claims, then these claims are not enabled.

[00:27:14] Speaker 00:
If that is your view, Honor, then you should construe the claims to save them.

[00:27:21] Speaker 00:
We had certainly

[00:27:23] Speaker 00:
reserved below the possibility that we might make a different argument based on Hogan and Kyron.

[00:27:29] Speaker 00:
But if that's not, I understand your honest position on that.

[00:27:33] Speaker 00:
I do want to make clear, because it did come up in the briefs, that we did not at any time before the commission assert that any device that these patents, that the range claims in particular read on any devices that were above 144.

[00:27:46] Speaker 00:
There was an assertion on reply that we had made that type of argument in connection with the domestic industry showing.

[00:27:54] Speaker 00:
And I would like to refer the court specifically to pages, I just want to get the page states right, appendix 21411 to 21412.

[00:28:04] Speaker 00:
That's our post hearing brief.

[00:28:06] Speaker 00:
21594, that's our post hearing reply.

[00:28:11] Speaker 00:
And to the expert testimony at 151-241-242.

[00:28:14] Speaker 04:
And one- What would you have us do with this about 144 argument?

[00:28:21] Speaker 04:
What would

[00:28:24] Speaker 04:
How would you have us write this opinion if that's something that we need to consider?

[00:28:30] Speaker 00:
If you determine that you need to consider it, Your Honor, I would have you cite the language in Anderson versus Fiber Composite that says that the inherent upper limit must be apparent to one in the skill of the art but need not be precisely known.

[00:28:47] Speaker 00:
I do want to come back to the point, Your Honor, that it really is their burden to show lack of enablement, and it was not our burden to establish.

[00:28:54] Speaker 04:
Could we write the opinion to explain that about 144, the only reason it's not limited to 144 is because there was an assertion of the possibility of squeezing one more adapter in, and so one more adapter

[00:29:13] Speaker 04:
that was present in the Friar Art would have potentially allowed slightly above 144.

[00:29:19] Speaker 04:
Is that the argument?

[00:29:21] Speaker 00:
That is the state of the record, Your Honor, and I think that would be an accurate characterization.

[00:29:24] Speaker 00:
No one has actually tried to market such a product.

[00:29:27] Speaker 03:
You generally want the devices to be in the... Sure, but if they've got an exclusion order on their products and they can squeeze in something that gets them above 144, they might try if we limit it to strictly 144.

[00:29:39] Speaker 00:
Right.

[00:29:40] Speaker 00:
So I think that for that reason it would be appropriate to say that the presence or absence of one additional adapter would not be relevant to the

[00:29:46] Speaker 00:
in the implement question, which is assessed as of the time of priority.

[00:29:57] Speaker 00:
You know, on the question whether the post-priority art was appropriately excluded, I think what was attempted here is very much what was said to be improper, not only in Hogan and in Curran, but also in this court's position in Amgen.

[00:30:10] Speaker 00:
It was an attempt to use post-priority art, essentially to invalidate the patent for failing to do the impossible, which was to predict future developments in the art.

[00:30:19] Speaker 04:
I mean, I don't know what I'm missing.

[00:30:21] Speaker 04:
I don't see any problem with the post-priority date

[00:30:26] Speaker 04:
are coming in in this case simply to inform the court as to what the state of the art was at the time because there's an it's been determined that a skilled artisan would understand there's an inherent limit of approximately a hundred and forty four so showing that maybe you know ten or twenty years down the road somebody came up with a way to make it five hundred or a thousand or whatever I mean I don't see why that would

[00:30:52] Speaker 04:
need to be excluded and why it couldn't be sort of further evidence of what the state of the art was at the time?

[00:30:59] Speaker 00:
I think it's always your honor suggesting then that it would come in to support us, essentially, by showing, by illustrating.

[00:31:04] Speaker 04:
I don't see any harm for you in it coming in.

[00:31:07] Speaker 04:
I don't know why you need to fight this battle, given the way this panel seems to be moving.

[00:31:12] Speaker 00:
Then I will cease fighting that battle, your honor.

[00:31:16] Speaker 00:
And if the court has any questions on the 206 and the multiple openings question, no.

[00:31:23] Speaker 00:
then I will respectfully request that the Commission's decision order be affirmed.

[00:31:30] Speaker 04:
We have some available time.

[00:31:32] Speaker 06:
I just want to make one point.

[00:31:34] Speaker 06:
And I think that this court's discussion of the exclusion order and my colleague's refusal to admit that the exclusion order excludes much more than 144 just proves the point that it needs clarification.

[00:31:52] Speaker 05:
The commission's decision was unclear.

[00:31:54] Speaker 04:
Well, what needs clarification is what the scope of these claims are.

[00:31:58] Speaker 04:
But if the exclusion order is based in part on other patents, no longer in this section and therefore not in front of us, how do I know that those other patents don't cover a range higher than 144?

[00:32:12] Speaker 04:
It's not up to me to determine.

[00:32:14] Speaker 04:
Nobody asked me in this case to determine the scope of the exclusion order or presented me with evidence of all of the things the ITC utilized when it came up with the exclusion order.

[00:32:24] Speaker 05:
So the other patents that are no longer here do not recite open-ended range claims.

[00:32:28] Speaker 03:
But that's not in front of us.

[00:32:32] Speaker 03:
Does it really make any difference if our decision construes it at the 144, about 144 level?

[00:32:40] Speaker 03:
then if they try to exclude stuff that is not about 144 it's a lot greater than then your clients or whoever can come back and say that's improper based upon this court precedent.

[00:32:52] Speaker 03:
Why does it need to be written into the exclusion order when our gloss on the exclusion order upholding it says that it wouldn't that would be perfectly acceptable to us.

[00:33:04] Speaker 06:
Okay.

[00:33:04] Speaker 06:
Okay.

[00:33:04] Speaker 06:
I think the council this case is taking their submission.