[00:00:00] Speaker 04:
Next case for argument is 22-143A, in-rate Floating Grill LLC.

[00:00:09] Speaker 04:
Mr. Amburn, whenever you're ready.

[00:00:10] Speaker 04:
Ann Munn.

[00:00:11] Speaker 01:
Good morning, Your Honors.

[00:00:13] Speaker 01:
Dean Amburn, appearing on behalf of Appellant Floating Grill.

[00:00:19] Speaker 01:
I'm a patent attorney from Detroit, Michigan.

[00:00:22] Speaker 01:
And the reason I'm here is my client's request to have a reissue of their 132 patent

[00:00:30] Speaker 01:
to correct an error of not claiming the invention broadly enough.

[00:00:36] Speaker 01:
And the invention of the 132 patent is a floating apparatus for supporting the grill.

[00:00:42] Speaker 01:
And Float and Grill does actually have an online opportunity to purchase one of their floating apparatus.

[00:00:50] Speaker 03:
Does the patent specification disclose any other means for securing the grill to the float besides negative?

[00:00:56] Speaker 01:
Your Honor, it discloses one embodiment.

[00:00:59] Speaker 01:
And the one embodiment has many elements in it, including rectangular flow, including the reference to the magnets, including the support elements.

[00:01:10] Speaker 01:
There are many elements that are included in that one embodiment.

[00:01:14] Speaker 01:
And what we have done is we've removed actually multiple different elements.

[00:01:19] Speaker 03:
I don't think you've answered my question though.

[00:01:21] Speaker 03:
Is there any other means for securing besides magnets disclosed in the specification?

[00:01:26] Speaker 01:
Not disclosed, Your Honor, nor is there disclosed any way of making the flow other than rectangular or including

[00:01:36] Speaker 01:
the material other than a buoyant material for the flow?

[00:01:40] Speaker 04:
Do we agree that the legal standard, that the standard we apply is that it has to be clear and unequivocally described in the spec?

[00:01:51] Speaker 01:
The embodiment does, Your Honor.

[00:01:53] Speaker 01:
I agree.

[00:01:54] Speaker 04:
Clear and unequivocally, anything beyond that.

[00:01:57] Speaker 04:
Show me.

[00:01:59] Speaker 01:
Yes.

[00:01:59] Speaker 01:
I mean, the issue here, Your Honor, and... Show me.

[00:02:03] Speaker 01:
Oh, I'm sorry?

[00:02:04] Speaker 04:
I thought you were going to show me where clearly and unequivocally there's something other than that, magnets here, in the back.

[00:02:11] Speaker 01:
It's known to people that are skilled in the art, to a person of ordinary skill in the art.

[00:02:17] Speaker 03:
And this comes up in this... You still haven't turned to the patent itself to answer Judge Prost's question.

[00:02:23] Speaker 03:
Can you turn to it?

[00:02:24] Speaker 03:
No, because I'm not sure... You can't turn to it, or no, you can't answer her question?

[00:02:31] Speaker 01:
Well, I'm not sure maybe I understand.

[00:02:32] Speaker 01:
I think what I'm driving at is it's clear that there is one embodiment in the patent.

[00:02:40] Speaker 01:
And that one embodiment refers to magnets.

[00:02:44] Speaker 01:
But that one embodiment also includes many other elements that we have excluded.

[00:02:50] Speaker 01:
And that same principle, if we were to apply that principle, that clearly there has to be a reference

[00:02:58] Speaker 01:
then we wouldn't be able to remove any of those other elements.

[00:03:02] Speaker 02:
Let me rephrase the question that you're having trouble answering, I think.

[00:03:10] Speaker 02:
You cite the Rasmussen case in support of your argument.

[00:03:14] Speaker 02:
And Rasmussen, we said, one skilled in the art who read Rasmussen's specification would understand that it is unimportant how the layers are adhered so long as they are adhered.

[00:03:28] Speaker 02:
In your client's patent, is there anything that you can point to in the patent specification that would lead a person skilled in the art to understand that it's unimportant to have a magnet?

[00:03:43] Speaker 01:
Not any more than I can say for any of the other elements, Your Honor.

[00:03:47] Speaker 01:
But isn't that a problem then?

[00:03:49] Speaker 02:
No, only because... That's the test.

[00:03:52] Speaker 02:
The test is whether there is something in the specification that would lead a person skilled in the art to understand that the specific item, a magnet, is unimportant.

[00:04:07] Speaker 01:
If you look at the totality of the disclosure, for example, if you look at what is identified as the grill,

[00:04:15] Speaker 04:
Can you help show us in the patent when you're referring to stuff in the spec and you just guide us, it's a very short patent.

[00:04:23] Speaker 01:
Yes, Your Honor.

[00:04:26] Speaker 01:
In the patent, and I will see if I can find a clear reference, the grill is simply referred to as a portable outdoor grill.

[00:04:41] Speaker 01:
And let's see.

[00:04:45] Speaker 01:
a portable outdoor grill, flat and bottom of a portable outdoor grill, item 76, and I'm referring to column 3, line 35.

[00:04:56] Speaker 01:
But, Your Honor, what I think the point might be with the portable outdoor grill is that there's no reference to that even being a metal grill.

[00:05:08] Speaker 03:
It goes on to talk about is removeably securable to the plurality of magnets.

[00:05:12] Speaker 01:
Yes, Your Honor.

[00:05:13] Speaker 03:
In the question you just pointed us to.

[00:05:15] Speaker 01:
Yes.

[00:05:15] Speaker 01:
But the issue here, I think the difficulty that I'm having is in relation to the fact that there are many elements that we remove from the reissue claims.

[00:05:32] Speaker 01:
And all of what we have just discussed, your points that are good points, obviously,

[00:05:38] Speaker 01:
They could be equally applied to all those other elements.

[00:05:42] Speaker 01:
We can make exactly the same statement, exactly the same argument.

[00:05:48] Speaker 01:
There is only reference to a rectangular grill.

[00:05:52] Speaker 01:
It's only referred to the float as being a bullion material.

[00:05:55] Speaker 03:
I mean, I guess when I'm struggling with this, I'm seeing magnets all over your six pages of pad.

[00:06:02] Speaker 03:
I think I saw it 10 times.

[00:06:04] Speaker 03:
and six pages where three pages are figures.

[00:06:06] Speaker 03:
So can you point me to something else?

[00:06:08] Speaker 03:
If you want it to be broader than magnets, I feel like I need something really that you can point us to in the actual specification.

[00:06:17] Speaker 01:
Well, Your Honor, I think, again, there isn't something that says there is an option for magnets.

[00:06:24] Speaker 01:
There isn't anything in the patent that says there's an option for the grill to be rectangular or the float to be rectangular, or that the material for the flow could be something different

[00:06:34] Speaker 01:
than a buoyant material.

[00:06:36] Speaker 01:
None of those references are in there.

[00:06:39] Speaker 01:
If you look at, though, this Court's, in Ray Peters' decision, which is still good law, has not been overruled

[00:06:48] Speaker 01:
The same or similar exact situation was there.

[00:06:53] Speaker 01:
And that related to tips for a television.

[00:06:58] Speaker 01:
And again, we could have the same argument.

[00:07:00] Speaker 01:
You wouldn't be able to look at that, their patent, in Inray Peters and find a different description of the tips than the one description there.

[00:07:12] Speaker 04:
Is Inray Peters cited in blue?

[00:07:14] Speaker 01:
Yes.

[00:07:15] Speaker 01:
Inray Peters is cited in the briefing, Your Honor.

[00:07:18] Speaker 01:
And Henry Peters is the Federal Circuit opinion from 1983, 723F2D891.

[00:07:26] Speaker 01:
But it's the same issue, Your Honors, of the fact that what is different in this case than the other cases where this court has decided that there has to be, say, a clear description of an embodiment

[00:07:48] Speaker 01:
That is what it is tied to.

[00:07:50] Speaker 01:
In our case, we have one single embodiment that has multiple elements.

[00:07:57] Speaker 01:
We have in our reissue, we have removed many of these elements.

[00:08:03] Speaker 01:
And the same argument could be said that there is no reference to it not being rectangular in the float, or that it requires less than two support bars.

[00:08:17] Speaker 01:
But the fact of it is, if you look at in repeaters, even though that's not described, that there is a different way of having a tape or a tip shape, that was still something that was known as somebody skilled in the art.

[00:08:33] Speaker 03:
How do you deal with the language in the patent in column one around line 33-ish?

[00:08:41] Speaker 01:
33-ish?

[00:08:42] Speaker 03:
Yes, so it says, lastly, what has been needed is a plurality of magnets.

[00:08:46] Speaker 03:
Can you talk to me a little bit about that phrase, needed?

[00:08:49] Speaker 01:
Absolutely, Your Honor.

[00:08:51] Speaker 01:
Again, the interesting thing in this patent is that word needed applies to all of these elements, many of which we have removed from this patent, or in the reissue, I mean.

[00:09:05] Speaker 01:
So it refers to

[00:09:08] Speaker 01:
However, what is needed is a floating apparatus for supporting a grill, including a substantially rectangular float.

[00:09:17] Speaker 01:
Well, again, just stopping right there, and then there's about 10 elements that are, quote, needed.

[00:09:22] Speaker 01:
Now, the patent office doesn't have any problem with us not calling it a rectangular float, even though, again, nowhere in the disclosure of the 132 patent

[00:09:36] Speaker 01:
is a reference to the ability of the float to be any other shape.

[00:09:40] Speaker 01:
So how can that be?

[00:09:42] Speaker 01:
Well, the reason is that, again, if you apply the principles of in-rate repeaters, you can look to the way somebody skilled in the art would approach it.

[00:09:53] Speaker 01:
And importantly, there were two issues in in-rate repeaters.

[00:09:56] Speaker 01:
Whether or not there was prior art that was relied upon or that was used in the case, and then you included an element

[00:10:06] Speaker 01:
to avoid the prior art, which is not the case here.

[00:10:10] Speaker 01:
There was never any prior art cited in this case that required including magnets or plurality of magnets to avoid the prior art.

[00:10:20] Speaker 01:
And that's true in both the underlying patent, the 132 patent, and in the reissue claims.

[00:10:28] Speaker 01:
So just to be crystal clear, the patent office would allow these claims

[00:10:33] Speaker 01:
even though we don't call it a rectangular flow, even though we've eliminated about 10 other elements that are the same in terms of there's not alternatives defined except for the magnets.

[00:10:47] Speaker 01:
That's the only one they have the problem with.

[00:10:50] Speaker 01:
And the reason that that's wrong, Your Honors, is again, it's a different, the issues and problems are different in this case than in the other cases where

[00:11:03] Speaker 01:
there has been an attempt to look for a different embodiment in a disclosure and then claim that embodiment.

[00:11:11] Speaker 02:
You know, in Enrec Peters, we held that there was nothing in the specification to show that the tapered tips were essential or critical.

[00:11:22] Speaker 01:
Yes, sir.

[00:11:24] Speaker 02:
But here, this case is a little different because

[00:11:29] Speaker 02:
The magnets have a special property, the magnetism, that other connectors don't have.

[00:11:37] Speaker 02:
And there's nothing in the specification that I could read that suggests that the use of a magnet is unimportant and is in any way not essential or critical.

[00:11:52] Speaker 02:
Because as described, that's the only thing disclosed

[00:11:56] Speaker 02:
So I think this is a different case from Henry Peters, correct?

[00:12:03] Speaker 02:
Your Honor, it's exactly the same situation because the issue of whether or not... Are you telling me that the use of a magnet is not essential or critical based on the way this specification is written?

[00:12:19] Speaker 01:
Absolutely, Your Honor.

[00:12:21] Speaker 02:
The specification doesn't... Show me some place in the specification that says that the magnet is just one of many components or one of many means of connecting or just exemplary or something.

[00:12:36] Speaker 02:
I find no language to that effect.

[00:12:39] Speaker 01:
Well, there isn't any language that makes it a critical element, Your Honor.

[00:12:43] Speaker 01:
And I think that's more the test that at least the Board has argued.

[00:12:48] Speaker 01:
There is the same position in patents.

[00:12:53] Speaker 01:
Typically, you're not explaining how all of the elements that you're citing are not important.

[00:13:01] Speaker 01:
You're just identifying the elements.

[00:13:04] Speaker 01:
There's no benefit to, because in a way you're almost arguing that there could be prior art with the same elements.

[00:13:13] Speaker 01:
But that's not the way patents are written typically.

[00:13:16] Speaker 01:
is to suggest that your own elements that you're including are somehow possibly not needed.

[00:13:23] Speaker 01:
And in repeaters stands for the proposition that you don't have to identify that there are different elements, but it can still be the same embodiment.

[00:13:35] Speaker 01:
I think part of the issue, Your Honor, too, is when this is part of just

[00:13:41] Speaker 01:
Claim drafting.

[00:13:41] Speaker 01:
There's, I think, part of the confusion, and this is maybe even hard to explain, hard for me to explain, but there is a difference between an embodiment and an invention.

[00:13:53] Speaker 01:
And in all the other cases, the Antares case, the Forum US case, the cases that came before, there is an effort to identify a different embodiment and then make claims and a reissue based on that.

[00:14:12] Speaker 04:
You're well into your rebuttals, so how about one for the government?

[00:14:15] Speaker 01:
Oh, yes.

[00:14:15] Speaker 01:
Sorry, Your Honor.

[00:14:16] Speaker 01:
Thank you.

[00:14:17] Speaker 01:
Thank you.

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

[00:14:20] Speaker 00:
Peter Sallward on behalf of the USPTO Director.

[00:14:24] Speaker 04:
This court should affirm the board's- Can I just ask you to start off with In re Peters?

[00:14:29] Speaker 04:
I didn't see it listed in the table authorities in blue.

[00:14:33] Speaker 04:
And so you presume we didn't respond to it in red.

[00:14:36] Speaker 04:
No, it is in gray.

[00:14:38] Speaker 04:
And Judge Lynn may have already done your job for you in terms of distinguishing it.

[00:14:42] Speaker 04:
But why don't you give it a shot as well?

[00:14:44] Speaker 00:
Yes, Your Honor.

[00:14:45] Speaker 00:
I believe it was cited in the blue brief.

[00:14:46] Speaker 00:
And we did respond in the red brief on Peters.

[00:14:49] Speaker 00:
And the essential point is, I'll say, in two parts.

[00:14:53] Speaker 00:
Peters does not reference Industrial Chemicals Supreme Court case that this court traced back the history of this doctrine to and applied and elucidated in US forum in Antares.

[00:15:08] Speaker 00:
So we don't have that court sort of explanation of how the controlling law in industrial chemicals would have affected the outcome in that case.

[00:15:18] Speaker 00:
It's not discussed.

[00:15:20] Speaker 00:
That's one point.

[00:15:21] Speaker 00:
And the other is that it's just factually distinguishable.

[00:15:24] Speaker 00:
As Judge Lynn pointed out, the clips that were at issue in that case were kept in the reissue claims.

[00:15:30] Speaker 00:
The only thing that was removed is the shape of the clips.

[00:15:33] Speaker 00:
And whereas here, Float and Grill is trying to remove the plurality of magnets element entirely, not just one descriptor of it.

[00:15:42] Speaker 02:
How do we decide whether an element is critical or essential or unnecessary?

[00:15:50] Speaker 00:
Well, I'll start by saying I don't think there's a lot of guidance about that, because that test is not discussed in US forum or in Terry's, where this court discussed this issue in far more detail.

[00:16:05] Speaker 00:
It's just simply stated as a conclusion in Peters without a great deal of explanation, except that the Peters Court.

[00:16:13] Speaker 00:
It's a conclusion that has

[00:16:16] Speaker 02:
significant consequence.

[00:16:18] Speaker 02:
It does.

[00:16:19] Speaker 02:
So shouldn't there be some clarity as to how one discerns whether an element is critical or essential?

[00:16:28] Speaker 00:
I think that Peters, given the more recent treatment of this court in US forum in Antares, would be considered less thorough.

[00:16:38] Speaker 00:
Those courts didn't feel the need to address whether the element, in view of industrial chemicals, whether the element was critical or not.

[00:16:46] Speaker 00:
So when applying industrial chemicals, as described in US forum in Antares, there's a question of whether we even have to ask if the element is critical, or whether

[00:16:57] Speaker 00:
whether it's critical or not, it has to be clearly and unequivocally disclosed.

[00:17:02] Speaker 00:
Now the board went a step beyond that here and said it is critical and then said it is not clearly and unequivocally disclosed that there are alternatives to the magnets.

[00:17:11] Speaker 04:
What about, your friend referred back and forth several times to the fact that there were all these other things he changed.

[00:17:17] Speaker 04:
in the claims, and they were no different in kind than the magnets.

[00:17:21] Speaker 04:
So how come you let him get away with that, not with this?

[00:17:24] Speaker 04:
So can you differentiate between what he's talking about?

[00:17:28] Speaker 00:
I can't explain the absence of an additional rejection, but I can conjecture, Your Honor, that this court sometimes will affirm on one ground and not reach the alternate ground because it's unnecessary.

[00:17:40] Speaker 00:
And so that the examiner here sort of, and then the board in reviewing that,

[00:17:45] Speaker 00:
took the low-hanging fruit, that the most important element of this claim is the magnets, because the entire purpose of this support is to attach to the grill, securably and removably, and keep it stable in the water.

[00:18:00] Speaker 00:
And so you could see where the shape of the float, if it still floats, is less important.

[00:18:05] Speaker 00:
But it's hard to see any reasonable way that you could have this invention and not have

[00:18:11] Speaker 00:
something that's keeping the floats secure to the float support.

[00:18:17] Speaker 02:
But isn't that your appellant's argument?

[00:18:20] Speaker 02:
That the specification makes clear that you have to have something that attaches the grill to the float, but it doesn't necessarily have to be the only preferred embodiment that was disclosed to wit a magnet.

[00:18:35] Speaker 02:
It could be a nut and a bolt.

[00:18:39] Speaker 00:
Just to be clear, in the 1-3-2 patent, there is nothing, no other means besides the plurality of magnets disclosed for accomplishing this function.

[00:18:49] Speaker 02:
But there's nothing that requires more than a single embodiment to be disclosed, correct?

[00:18:58] Speaker 02:
The invention can be far broader than this single embodiment disclosed.

[00:19:06] Speaker 00:
I think the context is important, Your Honor.

[00:19:08] Speaker 00:
What we have here is the test under 251, which is not the test for written description.

[00:19:14] Speaker 00:
The test under 251 is that it must be clearly and unequivocally disclosed.

[00:19:19] Speaker 00:
And so if you want to claim

[00:19:22] Speaker 00:
alternate embodiments, they have to be clearly and unequivocally disclosed.

[00:19:26] Speaker 00:
What the Supreme Court said in industrial chemicals is that the new claims cannot merely be suggested to one of ordinary skill in the art.

[00:19:36] Speaker 00:
It's not enough that one of ordinary skill in the art would think, oh yeah, I can think of a bunch of ways that I might do this instead.

[00:19:44] Speaker 00:
That's not the standard.

[00:19:46] Speaker 00:
Because we're in the context of reissue claims under 251, it has to be clearly and unequivocally disclosed in the original specification that the inventor contemplated and intended to claim the invention attempting to be captured in the newly added claims.

[00:20:08] Speaker 04:
Can I ask you a housekeeping question, which is, if you were to prevail on the 251 issue, is there a need to deal with the second question raised here, which is indefiniteness?

[00:20:19] Speaker 04:
Definiteness covers fewer claims than the 251, right?

[00:20:23] Speaker 00:
That is correct, Your Honor.

[00:20:24] Speaker 04:
So if we did indefiniteness, we'd still have to do 251, but not the other way around, right?

[00:20:28] Speaker 00:
That's correct, Your Honor.

[00:20:30] Speaker 00:
Again, the board sort of, I think, mindful of Peters

[00:20:36] Speaker 00:
did go through the trouble and say that the plurality of magnets are a critical element in the claim.

[00:20:42] Speaker 00:
And they found that the magnets are part of the support because they're embedded in it.

[00:20:46] Speaker 00:
That plurality of magnets is one of the elements recited to overcome the deficiencies of the prior art, among other elements.

[00:20:56] Speaker 00:
But in the alternative, the patent never described the plurality of magnets as exemplary or optional.

[00:21:03] Speaker 00:
and that the magnets are key to securing the grill for use in bodies of water.

[00:21:08] Speaker 00:
And putting all those things together, the board found it to be a critical element.

[00:21:12] Speaker 00:
And then having found it to be a critical element, the board then went on to find that there is literally no other alternative to the plurality of magnets for performing this function disclosed.

[00:21:23] Speaker 00:
So it obviously cannot be that the new claims are clearly and unequivocally disclosed by the original specification.

[00:21:31] Speaker 03:
Maybe just for fun to play devil's advocate.

[00:21:34] Speaker 03:
Do you, I'm just kind of, I think harping off of really your opposing counsel sort of logic.

[00:21:40] Speaker 03:
Do you believe that a cup holder is needed for this invention or critical?

[00:21:44] Speaker 03:
Maybe I should use your terminology critical.

[00:21:47] Speaker 00:
Right.

[00:21:47] Speaker 00:
Your honor, I don't believe it's critical.

[00:21:50] Speaker 00:
And then, as I said, and Judge Lynn asked a very good question, what does it mean for something to be critical?

[00:22:00] Speaker 00:
Well, can you function?

[00:22:02] Speaker 00:
perform the primary function of the invention without that element.

[00:22:10] Speaker 00:
The cup holder is the most obvious example of something that you can cut and will make no difference at all.

[00:22:17] Speaker 00:
I'm inclined to think because

[00:22:21] Speaker 00:
the Peters Court didn't take account of industrial chemicals, that that's not necessarily a proper inquiry.

[00:22:28] Speaker 00:
That this court is bound to apply the inquiry in industrial chemicals and say simply, it can't be suggested.

[00:22:36] Speaker 00:
It has to be clearly and unequivocally disclosed.

[00:22:39] Speaker 04:
Thank you.

[00:22:40] Speaker 00:
Thank you.

[00:22:42] Speaker 04:
We'll restore two minutes of rebut.

[00:22:44] Speaker 01:
Thank you, Your Honor.

[00:22:46] Speaker 01:
Really quickly, a couple things.

[00:22:48] Speaker 01:
One thing, too, that I have included on page 13 of our brief is a colorized version of the figure one and claim four, reissue claim four.

[00:23:00] Speaker 01:
And what we have done here with the reissue claim four is we've took out plurality of magnets, but we've left in the exact way that the grill and the float have to be attached together.

[00:23:15] Speaker 01:
It's just not specifying exactly that it has to be magnets.

[00:23:21] Speaker 01:
So what does that mean?

[00:23:22] Speaker 01:
It means that it could include magnets.

[00:23:25] Speaker 01:
Magnets are not excluded from claim four or the other claims.

[00:23:30] Speaker 01:
And I think that's an important distinction here.

[00:23:33] Speaker 01:
As your honor Lynn pointed out, in one of your prior opinions, and this is an OVA, pure water versus safari, the court held

[00:23:45] Speaker 01:
particular embodiments appearing in written descriptions will not be used to limit claim language that has broader effect.

[00:23:53] Speaker 01:
And even where a patent describes only one embodiment, which is what we have here, claims will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion.

[00:24:16] Speaker 01:
That's not what occurred here.

[00:24:18] Speaker 01:
We have a right to claim an embodiment.

[00:24:21] Speaker 01:
It's the same embodiment.

[00:24:24] Speaker 01:
The reference to the other cases, including the Supreme Court case, what is different is that in all of those cases, it related to trying to include or claim a new invention or a new embodiment

[00:24:44] Speaker 01:
of an invention that was not disclosed in the original patent.

[00:24:49] Speaker 01:
And that is the night and day difference between these two cases.

[00:24:54] Speaker 01:
N-ray Peter still applies here because a person of ordinary skill in the art would be able to understand that this is not complicated.

[00:25:04] Speaker 01:
You can attach a float to a grill with something beyond magnets.

[00:25:08] Speaker 01:
And that's within their knowledge and skill.

[00:25:11] Speaker 01:
and that there is further, there was not prior art relied upon.

[00:25:15] Speaker 01:
That's the difference.

[00:25:16] Speaker 01:
It's the same embodiment.

[00:25:18] Speaker 01:
We're not excluding magnets.

[00:25:20] Speaker 01:
It's not a different invention.

[00:25:22] Speaker 04:
Thank you, Your Honor.

[00:25:23] Speaker 04:
We thank both sides in the case's signature.