[00:00:00] Speaker 01:
Our last case of today is 22-1951 Schwinden versus Nina.

[00:00:04] Speaker 01:
I have no idea whether I said either of those names right, so counsel will correct me when they come up.

[00:00:18] Speaker 01:
Now I'm going to go out on limb again.

[00:00:21] Speaker 01:
Mr. Padmanabhan?

[00:00:24] Speaker 00:
Padmanabhan, Your Honor.

[00:00:25] Speaker 00:
Again?

[00:00:25] Speaker 00:
Very good, thank you.

[00:00:26] Speaker 01:
Say one more time.

[00:00:27] Speaker 00:
Padmanabhan.

[00:00:28] Speaker 01:
Padmanabhan, okay.

[00:00:30] Speaker 01:
But you guys, wow, there's a lot of names here that I'm having trouble with.

[00:00:33] Speaker 01:
So how do I say the name of this case?

[00:00:35] Speaker 00:
It's Schwendeman versus Nina.

[00:00:38] Speaker 01:
Okay, that would be cool.

[00:00:40] Speaker 01:
Please proceed.

[00:00:42] Speaker 00:
Thank you, Your Honor.

[00:00:43] Speaker 00:
Good morning.

[00:00:43] Speaker 00:
May it please the Court.

[00:00:45] Speaker 00:
Our claim language requires a retention aid.

[00:00:50] Speaker 00:
The specification says that latex in certain chemical combinations can serve that function.

[00:00:58] Speaker 00:
But that does not mean that whenever latex is included, it is acting as a retention aid.

[00:01:08] Speaker 03:
Can I ask you an upfront housekeeping question?

[00:01:10] Speaker 03:
If we find the board did not err on claim construction, do you concede that we should affirm an unpatentability?

[00:01:19] Speaker 00:
Yes, Your Honor.

[00:01:20] Speaker 00:
Thank you.

[00:01:24] Speaker 00:
Yeah, if you agree with their claim construction, we don't have a separate argument on anticipation.

[00:01:28] Speaker 00:
That's correct.

[00:01:29] Speaker 01:
So this, just to make sure I understand it, this case is about like iron-ons?

[00:01:33] Speaker 01:
Is this like t-shirt things?

[00:01:34] Speaker 01:
Yes, t-shirt iron-ons.

[00:01:36] Speaker 01:
Something on a t-shirt.

[00:01:37] Speaker 00:
Yes, and Judge Cunningham heard part one of this for the dark t-shirts.

[00:01:41] Speaker 00:
This particular patent is for light t-shirts, meaning white or lighter colored t-shirts.

[00:01:49] Speaker 00:
And so specifically, because Kronzer includes latex, doesn't mean that latex is acting as a retention aid.

[00:01:59] Speaker 00:
the district court understood this distinction, finding that the term retention aid is a material that aids in the binding of an applied colorant.

[00:02:19] Speaker 00:
No, Your Honor.

[00:02:20] Speaker 00:
So there's two types of claims.

[00:02:22] Speaker 00:
And so this applies to, I was just using retention aid as an example.

[00:02:26] Speaker 00:
So you'll see a set of claims where there's three requirements, and sometimes it's retention aid, and sometimes you'll see claims with four requirements.

[00:02:35] Speaker 00:
And so all of them, I think, have the film forming binder and maybe the emulsion.

[00:02:40] Speaker 00:
I don't have it specifically, but I can look through the claims.

[00:02:44] Speaker 00:
So each of these is a sheet, you print the image on, and because it's light transfer, it's applied to the shirt, and then you have it.

[00:03:01] Speaker 00:
And it goes to the composition of that.

[00:03:05] Speaker 01:
I'm sorry, what particular claim term are you saying that the board wrongly construed?

[00:03:16] Speaker 01:
Very broad.

[00:03:17] Speaker 01:
Which of those claim terms?

[00:03:19] Speaker 00:
Are you on the 200 patent?

[00:03:21] Speaker 00:
I'm sorry, which one?

[00:03:23] Speaker 01:
So if you look at claim one... I was on the 773 patent, that's okay.

[00:03:29] Speaker 00:
Yeah, I can do this.

[00:03:30] Speaker 00:
So if you go to the 773 patent, claim one, we believe the board got wrong each of those terms

[00:03:42] Speaker 00:
acrylic dispersion, elastomeric emulsion, water repellent, and plasticizer.

[00:03:49] Speaker 00:
And the total list would include the... That's a lot of things now.

[00:03:54] Speaker 01:
That's all the words we're coming in.

[00:03:55] Speaker 02:
For the benefit of the students, I'm going to read it for you.

[00:04:00] Speaker 02:
It's a polymeric composition comprising an acrylic dispersion, an elastomeric emulsion, a water repellent, and a plasticizer.

[00:04:10] Speaker 02:
And as I understand it, your view is the district court misconstrued four of these words by referring to, saying that whatever these claim terms mean, they at least cover the example materials that are in the specification.

[00:04:27] Speaker 02:
And your view, as I understand it, is no, that's not the right construction.

[00:04:31] Speaker 02:
The construction should be functional, based on functional language.

[00:04:35] Speaker 02:
For example, a water repellent is something that repels water.

[00:04:40] Speaker 00:
Exactly.

[00:04:41] Speaker 00:
That's exactly right.

[00:04:44] Speaker 02:
Okay.

[00:04:44] Speaker 02:
And why can't, my view on this was why couldn't it both be correct, in this sense?

[00:04:50] Speaker 00:
Yes.

[00:04:50] Speaker 02:
You know, we had a case earlier today where we talked about, you know, there's a case where it says claims only have to be interpreted as much as they need to be in order to resolve the dispute that's before the court.

[00:05:03] Speaker 02:
And in this case, the prior reference had a t-shirt

[00:05:10] Speaker 02:
transfer sheet that included materials that were listed in their examples for each of those components.

[00:05:17] Speaker 02:
They had acrylic dispersion and elastomeric emulsion with water repellent and plasticizer.

[00:05:23] Speaker 02:
So why wouldn't it be that the court could say this is enough for these claim terms to reinterpret them to say at least they have to cover the exemplary materials identified in this specification?

[00:05:39] Speaker 00:
And Your Honor, the answer to that, and I'll do an example with it just in one second, but the real answer to that in this record is each of those ingredients, whether we call them chemicals or not, each of those ingredients may act as a water repellent or a retention aid in a given composition.

[00:06:02] Speaker 00:
But it's undisputed on this record that they may not, which is why

[00:06:09] Speaker 00:
The thing that happened in the district court where they construed it to include, they said it function, whether it's water repellent or not, and I can read the retention aid one, but basically they construed it with the function, is appreciating that distinction of saying, hey, look, yup, you could have a list of ingredients, and you're right, in a given context,

[00:06:33] Speaker 00:
in a given composition, it may act as a water repellent, or a retention aid, or any of those other terms.

[00:06:40] Speaker 00:
But it's absolutely true that it may not.

[00:06:45] Speaker 01:
And so what happens is, the reason it makes a difference is... But the court found that the Chrome Search 769 did disclose each of those elements.

[00:06:55] Speaker 01:
Nina had argued that they did so even in a way that met the functional requirements that you're saying should exist.

[00:07:02] Speaker 00:
So the board was careful in saying that our arguments where we said it didn't disclose and it really doesn't disclose that a retention aid, for instance,

[00:07:13] Speaker 00:
it doesn't in the in formula 7 up there's no discussion of saying that in that particular formulation a particular the latex is acting as a retention aid or the latex is doing there's no disclosure in in kronzer actually so if you look at the expert reports on like water repellent for instance and that example is in our brief which is why i'm bringing it up is if you look at nina's citations for it they'll cite to the chemical

[00:07:40] Speaker 00:
their expert will say, yep, that's a generally known water repellent, not saying it's a water repellent specifically in that formulation, or saying that it's an inherent property of that chemical, but just saying it's a water repellent, and then to the extent, saying it's a water repellent by citing back to the Williams patent or Schwendeman's patent, and saying, hey... Just so I understand your argument, in your opinion, does Crime Zone 769 disclose all the elements

[00:08:05] Speaker 03:
But in your opinion, it potentially does not disclose the functions.

[00:08:09] Speaker 03:
Is that a good summary of your argument?

[00:08:12] Speaker 00:
No.

[00:08:13] Speaker 00:
I want to be careful about it.

[00:08:16] Speaker 00:
So when you read Kronzer 769, and I'm not even saying read it, start to finish.

[00:08:22] Speaker 00:
Even a perusal of it.

[00:08:24] Speaker 00:
And it's why I was careful to say it's in a chemical combination.

[00:08:27] Speaker 00:
So I'm not saying Kronzer doesn't disclose a number of chemicals that could act in each of these functional ways.

[00:08:35] Speaker 00:
Whether it's a water repellent, whether it's a retention aid, whether it's a film forming binder.

[00:08:39] Speaker 00:
The problem is you'll see the sheer number of combinations Kronzer discloses and how many failures there are.

[00:08:47] Speaker 00:
But there is not a single combination in there, which is what's remarkable, that has the claimed combination.

[00:08:54] Speaker 02:
And that discloses the- That's a different argument.

[00:09:00] Speaker 02:
That's a very different argument, isn't it?

[00:09:01] Speaker 02:
That's an argument that is Kronzer doesn't disclose

[00:09:04] Speaker 02:
What's claimed, which is different than what you're arguing here, is that the claim construction's in there.

[00:09:12] Speaker 00:
It's related in this way, Your Honor, and maybe I wasn't clear.

[00:09:15] Speaker 00:
The reason those are related in this instance is when I say Kronzer doesn't disclose the claimed combination, it's because you have to know the functions of those particular chemicals in each of those combinations, like they use 7F.

[00:09:32] Speaker 02:
But you also said that

[00:09:37] Speaker 02:
is directed to a transfer sheet from a t-shirt, right?

[00:09:42] Speaker 02:
Yeah.

[00:09:42] Speaker 02:
OK.

[00:09:43] Speaker 02:
And what you're saying, whatever you say, is that Croizer doesn't teach a transfer sheet that has the four elements that are recited in claim one.

[00:09:52] Speaker 02:
Instead, they had to pick and choose different parts.

[00:09:55] Speaker 00:
I'm not I'm not saying it so I I thought I was answering the question where I can't say Kronzer is not just as you point out Kronzer is related to light train or light t-shirt transfer and so in that sense Kronzer is going to have the concepts that we're talking about is somewhere in there and

[00:10:16] Speaker 00:
But then when they get to the formulations, which they have many, not just one or two, and they have a lot of failures, but when you look at those specific combinations, they were able to find one, but Kronzer doesn't teach what the elements, what the chemicals do within a particular formulation.

[00:10:32] Speaker 03:
Maybe can you answer this question?

[00:10:34] Speaker 03:
Can you tell me what Kronzer 769 is missing?

[00:10:38] Speaker 03:
Maybe answer that for me.

[00:10:39] Speaker 00:
So Kronzer 769, for instance, does not specifically teach in a formulation, for instance,

[00:10:46] Speaker 00:
the, that latex in that particular formulation that they're relying on is a retention aid, actually acts to protect the image.

[00:10:56] Speaker 00:
Or Kronzer, for instance, does not say that there's another ingredient that specifically acts as a water repellent.

[00:11:03] Speaker 00:
And so the problem for

[00:11:05] Speaker 00:
Kronzer the problem in Kronzer is you can see a lot of chemicals and that's why the board is doing it this way because the board can't meet your standard of either explicit disclosure or Inherency in doing its anticipation analysis if it construes the claim even as the way the district court construed it Appreciating exactly applying Phillips and saying yep.

[00:11:26] Speaker 02:
There's a function to this We do your honor

[00:11:47] Speaker 02:
plasticizer functioning to the overall resultant product of the claim, right?

[00:11:55] Speaker 00:
Your honor, I would disagree with that in this way, your honor.

[00:12:00] Speaker 00:
So when you look at the district court's construction of plasticizer, for instance, it says a material or materials that act as a softening agent.

[00:12:10] Speaker 00:
So they say that.

[00:12:12] Speaker 00:
And if you read on page, where did it go?

[00:12:16] Speaker 00:
I think it's Appendix 654.

[00:12:21] Speaker 00:
What the court says in all of these is, and they were talking about the plaintiffs in this case when they go back for infringement.

[00:12:29] Speaker 00:
But what they said was, hey, you have to prove this based on the materials in the accused product satisfying these requirements.

[00:12:39] Speaker 00:
Meaning exactly what I'm saying is there's only two or three ways to prove something.

[00:12:43] Speaker 00:
One, the prior art says it, or it's inherent.

[00:12:45] Speaker 00:
Or, you have to look at a specific formulation, develop the evidence to say, yup, in this specific formulation, this ingredient is acting as a water repellent, or is acting as something.

[00:13:13] Speaker 02:
characteristic as defendants contend, or must incorporate such a component in sufficient amount to actually provide the desired characteristic as plaintiffs contend.

[00:13:23] Speaker 02:
And he says on the first dispute, the court agrees with the findings.

[00:13:28] Speaker 02:
So that means that the plasticizer may only be capable of providing the characteristic associated with plasticizer.

[00:13:36] Speaker 00:
So your honor, he's careful to go on in that same paragraph that you're reading.

[00:13:41] Speaker 00:
If you go two or three lines down, the reason the court did it is, I believe, because they didn't want to further limit it to the embodiment.

[00:13:50] Speaker 00:
So the court says, as defendants further observe,

[00:13:53] Speaker 00:
plaintiff's construction threatens to limit the claims to the disclosed embodiments, which here would be improper.

[00:14:00] Speaker 00:
Between that and then the statement that I read you on the second dispute, and if you just look at the claim constructions, you can see that the only way, I'm sorry, let me, I apologize, I know you want to ask another question.

[00:14:11] Speaker 00:
The only way for us to prove infringement, as the district court intended, was us to look at the formulation that we're accusing of infringing.

[00:14:22] Speaker 00:
look at the ingredients and say, yep, this ingredient is playing the role that you say, whether it's for plasticizer, whether it's for... It is capable.

[00:14:31] Speaker 01:
Okay, Council, if Dr. Stoll has any other questions on the letter S, but you've used almost all your rebuttal time as well.

[00:14:37] Speaker 01:
Okay, so then let's hear from Mr. Ruschetti.

[00:14:49] Speaker 04:
the court, Joseph Reschetti for appellee Nina, and with me my partner Alexander Walden.

[00:14:57] Speaker 04:
And so I'd be more than happy to just start with questions, but I think this is a case of a very straightforward claim, very broad, four ingredients.

[00:15:08] Speaker 04:
And the spec and the claims, I mean, you look at the board's decision, and the judge told you, you stated it perfectly.

[00:15:15] Speaker 04:
All they said, they didn't define the outer limits of the claim.

[00:15:18] Speaker 04:
They only defined it to the extent they needed to rule on the ground.

[00:15:22] Speaker 04:
And all they said was, these terms, like water repellent, just add a comma and say it at least includes the example, so forth, and the specification for the water repellent claim term, as it's discussed in the spec.

[00:15:36] Speaker 04:
And in going through all their responses, there's no intrinsic evidence to suggest that was improper.

[00:15:42] Speaker 01:
And I thought that it was short.

[00:15:50] Speaker 01:
The water repellent language is from column 9 to 10.

[00:15:56] Speaker 01:
So I'll give you a second to get the code out with me.

[00:16:13] Speaker 01:
All right, with me.

[00:16:14] Speaker 01:
Column 9 to 10.

[00:16:15] Speaker 01:
So what is water repellent?

[00:16:17] Speaker 01:
It says water repellent may also be incorporated

[00:16:20] Speaker 01:
into order to improve the washware resistance of the transferred image.

[00:16:25] Speaker 01:
Examples of additives include, and then polyurethanes, wax dispersions, and it gives a bunch of mineral wax, a bunch of examples.

[00:16:32] Speaker 01:
But is the board correct that if a reference discloses one of these examples, but suppose the reference discloses one of those examples, but not in a sufficient quantity to actually operate or function as a water repellent.

[00:16:47] Speaker 01:
Like suppose there's just a smidge of mineral wax, like you know what I'm saying?

[00:16:50] Speaker 01:
Just a tiny little dash of mineral wax, and it doesn't actually act as a water repellent because it isn't there in sufficient quantity to do so.

[00:16:59] Speaker 01:
Is that the board's construction?

[00:17:02] Speaker 04:
And I think your question is a good one, but it goes to the claim language drafted, right?

[00:17:06] Speaker 04:
The claim language doesn't require any amount, much less a sufficient amount.

[00:17:10] Speaker 01:
Well, the claim language requires a water repellent.

[00:17:13] Speaker 04:
The ingredient, right, requires a water repellent.

[00:17:17] Speaker 04:
And the specification explains that a water repellent are these suitable materials.

[00:17:23] Speaker 04:
And so I think the one thing that gets a little confused.

[00:17:27] Speaker 01:
That's why I wrote sentence one.

[00:17:28] Speaker 01:
Water repellent to improve the washware resistance of the transferred images.

[00:17:33] Speaker 01:
Examples include, so I mean, I guess I could be wrong, but I kind of think it's sort of saying these things can act as water repellents when they improve the washware resistance of the transferred image.

[00:17:47] Speaker 01:
I don't know, maybe I'm not reading this book right.

[00:17:50] Speaker 04:
I guess, Your Honor, how we would look at this is, just from a claim construction standpoint, is we start with the claim construction.

[00:17:55] Speaker 04:
We start with the claim language, as Phillips tells us to do.

[00:17:59] Speaker 04:
And we work through that analysis.

[00:18:01] Speaker 04:
We look through the other claims, and the other claims are instructive, dependent and independent, because they explain when the patent owner is referring to water repellent as an example, but any other claim terms.

[00:18:13] Speaker 04:
that what they're referring to is a list of materials.

[00:18:16] Speaker 04:
And we see that through their use of marcoosh groups.

[00:18:19] Speaker 04:
And they do that in independent claims 10 and 14.

[00:18:22] Speaker 04:
And this is, as this court is well aware, a very common practice in patent prosecution.

[00:18:27] Speaker 04:
And you identify a set of materials that satisfy the limitation.

[00:18:33] Speaker 03:
Why don't you explain what a marcoosh group is for the benefit of the crowd?

[00:18:37] Speaker 04:
Absolutely.

[00:18:37] Speaker 03:
Do you think that crowd care is what a marcoosh group is?

[00:18:42] Speaker 03:
I don't think they care about it.

[00:18:42] Speaker 04:
Go ahead.

[00:18:43] Speaker 04:
It's just a way in which a patent owner, when they're drafting their claims, can narrow down a limitation and say, it must come from one of these materials.

[00:18:56] Speaker 04:
And what's nice here is the Marcoosh groups create a narrower subset of the example.

[00:19:02] Speaker 04:
Sometimes they parallel the specification perfectly, but what the board did was a little nuance.

[00:19:07] Speaker 04:
Their independent claims

[00:19:10] Speaker 04:
were broader.

[00:19:11] Speaker 04:
They said at least includes the examples in the specification, but not limited to.

[00:19:15] Speaker 04:
And that was the correct way to interpret the claim, because these claims are broader than the other claims in the patent that have the Marcouche group.

[00:19:22] Speaker 04:
So, for example, if I have a dependent claim that has a Marcouche group, and I list out certain examples, like Claim 2 or Claim 12, right, these are examples where you would know under the claim construction precedent that the independent claim must include

[00:19:36] Speaker 04:
At least what's the subject matter disclosed and required in the independent claim.

[00:19:41] Speaker 04:
So they're important for that.

[00:19:42] Speaker 01:
So do you think it's possible for a water repellent to be a water repellent under this claim as long as it has a smidge of mineral wax, even if it's not enough to actually repel water?

[00:19:55] Speaker 04:
And I think this is why.

[00:19:56] Speaker 01:
That's a yes or no question.

[00:19:57] Speaker 04:
It's a yes in the context of these claims, this specification, and it's a yes because what they're asking the function to be read into is not the water repellent.

[00:20:07] Speaker 01:
The claim says water repellent.

[00:20:10] Speaker 01:
Aren't I supposed to interpret the plain meaning of the claim term?

[00:20:13] Speaker 04:
Yes, but water repellent as the specification in the claims indicate is a list of suitable materials.

[00:20:19] Speaker 01:
So is it your view that in this case,

[00:20:21] Speaker 01:
the patentee acted as his own lexicographer and potentially deviated from the plain and ordinary meaning of the word water repellent when listing suitable materials, such that even if those suitable materials are not present in sufficient quantity to actually repel water, they're nonetheless water repellents?

[00:20:38] Speaker 04:
So what I would suggest, Your Honor, is that a water repellent, the function of repelling water, when you look at patent owner's arguments,

[00:20:46] Speaker 04:
is not about the ingredient itself, it is about the composition as a whole.

[00:20:50] Speaker 04:
And the claims are directed to transfer layers and polymeric compositions, which is broader in concept than the t-shirt image transfer that was spoken about.

[00:21:03] Speaker 04:
And their argument is that not that water repellent, these are all examples of known water repellents, but they're saying that the composition as a whole, the polymeric composition, has to repel water.

[00:21:16] Speaker 04:
And that's different.

[00:21:17] Speaker 04:
I think a simple analogy to a cake.

[00:21:20] Speaker 04:
If it's a cake composition that requires flour, salt, and a sweetener, right?

[00:21:25] Speaker 04:
Sugar's a sweetener.

[00:21:26] Speaker 04:
But just because I put a sweetener in the cake, it doesn't mean the cake composition as a whole is sweet.

[00:21:34] Speaker 04:
And that's what they're conflating.

[00:21:36] Speaker 04:
If the patent owner wanted claims, and what's more important about these claims?

[00:21:40] Speaker 01:
This claim is written to a polymeric composition comprising a water repellent.

[00:21:44] Speaker 01:
So there has to be a water repellent, right?

[00:21:46] Speaker 04:
Just like a cake composition is directed to flour, salt, and sweetener, a sweetener, but the sweetener doesn't dictate that, right?

[00:21:53] Speaker 04:
The amount of the sweetener dictates it.

[00:21:55] Speaker 04:
Now these claims don't have amounts.

[00:21:57] Speaker 04:
There's other claims that do.

[00:22:00] Speaker 02:
What about the district court proceedings?

[00:22:01] Speaker 02:
Do I remember correctly that Schwendeman was relying on the district court's claim constructions or asserting that the district court's claim constructions are what the board should adopt?

[00:22:14] Speaker 04:
That is correct.

[00:22:15] Speaker 02:
And what did the district court say about this variation that you're talking about?

[00:22:19] Speaker 04:
That the claims did not cover anything with respect to a sufficient amount.

[00:22:24] Speaker 04:
The district court's decision said these claims are not directed, they don't impart any function to the composition as a whole.

[00:22:32] Speaker 04:
And just to be clear, let me just grab appendix sites.

[00:22:43] Speaker 04:
So at 4859, the court made clear about that the notion that this was only about elements that are capable of being water repellent, right?

[00:22:51] Speaker 04:
So that was one piece of the judge's ruling.

[00:22:54] Speaker 04:
On 4859 and 4860 from the appendix, we see the court saying that nothing in the claims refers to, let alone requires, any amount of any of the recited materials.

[00:23:07] Speaker 04:
The sentence above that says, nothing in the claim language requires that any of these materials impart any desired characteristics for the release layer.

[00:23:15] Speaker 04:
That's the composition as a whole.

[00:23:17] Speaker 01:
OK, well, what about column 10?

[00:23:20] Speaker 01:
I'm still on that set of seven for you, Patton.

[00:23:23] Speaker 01:
I'm at line 59 on column 10.

[00:23:27] Speaker 01:
The film forming binder, e.g.

[00:23:30] Speaker 01:
acrylic dispersion.

[00:23:31] Speaker 01:
That's one of the claim elements in claim one, right?

[00:23:33] Speaker 01:
Acrylic dispersion.

[00:23:34] Speaker 01:
Yes.

[00:23:35] Speaker 01:
is present in a sufficient amount so as to provide adhesion of the release layer and image to the receptor element.

[00:23:44] Speaker 01:
Isn't that sort of suggesting that there has to be an amount sufficient to perform the function?

[00:23:49] Speaker 04:
Under a preferred embodiment.

[00:23:51] Speaker 04:
This is under release layer formulation one.

[00:23:54] Speaker 04:
So yes, they could have drafted claims that way.

[00:23:57] Speaker 01:
The preferred embodiment has to have enough of the element to actually perform the function, but the claims themselves don't.

[00:24:05] Speaker 04:
That's exactly correct, Your Honor.

[00:24:07] Speaker 04:
This is the most preferred embodiment.

[00:24:09] Speaker 04:
The way they drafted the claim is incredibly broad.

[00:24:13] Speaker 04:
It covers all the embodiments, not just the most preferred embodiment.

[00:24:17] Speaker 04:
And there's varying levels of scope in the claims that they obtained and were awarded.

[00:24:21] Speaker 01:
And would you also tell me that the dependent claims tend to go into the more specific and

[00:24:29] Speaker 01:
point towards the preferable amount of weight of various elements so that the dependent claims cover, we're not reading the preferred environment out, the dependent claims are directed to them?

[00:24:40] Speaker 04:
There's definitely dependent claims that go into the amounts and weights.

[00:24:45] Speaker 04:
And so, you know, I think it's a perfect example of, you know, it's a cautionary tale, right, that when you drive to claims, be careful what you wish for.

[00:24:52] Speaker 04:
And if you get something that really only includes four ingredients,

[00:24:56] Speaker 04:
If you wanted the composition as a whole to have certain functionality, put in a wearing clothes that says the composition repels water.

[00:25:03] Speaker 04:
If you want to have a sufficient amount, put in a sufficient amount, right?

[00:25:09] Speaker 04:
I mean, I think it's that we're working with the claims that were drafted, and I think the board's analysis followed Philip's guidance perfectly.

[00:25:17] Speaker 01:
And unless I'm mistaken, none of the claims at issue, for example, if I look at the 773 patent, the only claims at issue in the speed tag petition are one

[00:25:31] Speaker 01:
are limited by weight, correct?

[00:25:33] Speaker 04:
That's correct.

[00:25:34] Speaker 01:
Yeah, so all the PTAB did here was find, anticipated the broad claims that don't have specific weight limitations, but they did not touch, I don't even know if you asked them to touch, I doubt it, the weight limiting claims.

[00:25:48] Speaker 04:
That's correct.

[00:25:49] Speaker 01:
Okay, anything further?

[00:25:51] Speaker 04:
Unless there's any other questions?

[00:25:53] Speaker 04:
I mean, just one further thing about retention, just to make clear, I mean, the board below did find that issue was waived.

[00:25:59] Speaker 04:
because it was raised in their sub-reply.

[00:26:02] Speaker 04:
So the discussion of the retention aid, I just want to make it clear.

[00:26:05] Speaker 04:
It's in our brief, so we'll rest on that.

[00:26:07] Speaker 04:
But that's an issue before it found its way through, that they didn't appeal in this.

[00:26:12] Speaker 04:
Thank you.

[00:26:26] Speaker 00:
Your Honor, that last point on retention aid, it's not a finding that we waived retention aid on claim construction.

[00:26:33] Speaker 00:
So the claim construction issue is still alive as the retention aid.

[00:26:38] Speaker 00:
Your Honor, I want to go back to this capability issue.

[00:26:41] Speaker 00:
And there's two things I want to point out and just have you consider as you go back on this is the district court's opinion where you're reading that capable language on, I think it's page 15 of the opinion, and I'll use your citation.

[00:26:54] Speaker 00:
on appendix 4859.

[00:26:56] Speaker 00:
It really does go to this sufficient amount, if you look in the next paragraph, and the judge really didn't put it in because he was afraid that it would go tight more narrowly to the disclosure embodiment.

[00:27:08] Speaker 00:
But more importantly on the second dispute,

[00:27:10] Speaker 00:
where you can see how the judge does agree that when we're proving infringement in district court, we'd have to show that those materials that are in the accused products actually meet his specific requirements, which

[00:27:25] Speaker 01:
We're not bound by any of that, right?

[00:27:27] Speaker 00:
You're not, Your Honor, but I'm just pointing out that that is, it's more supportive of the idea that our construction is correct.

[00:27:34] Speaker 00:
The other aspect of it that's supportive of our idea that our construction is correct is when Nino was also applying Phillips and arguing for construction in the district court, they didn't take this position that it was just the list of ingredients.

[00:27:46] Speaker 00:
They also looked at the exact sentences that some of which you talked to Mr. Reschetti about.

[00:27:54] Speaker 00:
that this functional language does provide, whether it's mechanical stability, or whether it's water repelling, or whether it's binding the colorant.

[00:28:04] Speaker 00:
And in each of those instances, the district court never said it's just capable of.

[00:28:09] Speaker 00:
They're actually saying that is the function that must be performed.

[00:28:13] Speaker 00:
And under Phillips, it is the plain meaning of water repellent, or it is the plain meaning of many of those words.

[00:28:20] Speaker 02:
Just a quick question to make sure I understand.

[00:28:22] Speaker 02:
I think the position of MENA is that it has to be water repellent on its own, but it doesn't necessarily mean that it has to impart the function of repelling water for the whole transfer sheet.

[00:28:37] Speaker 02:
Do you agree with that?

[00:28:38] Speaker 00:
I don't your honor.

[00:28:40] Speaker 02:
I don't agree that it that's true, but there's also Oh, no

[00:28:58] Speaker 00:
Yes or no?

[00:28:59] Speaker 00:
Yes.

[00:28:59] Speaker 00:
But Your Honor, let me just expand on one part of that.

[00:29:03] Speaker 00:
So when people say, like when Nita says in the record, something is a water repellent, there is no evidence that any one of these ingredients is only like, and that's why I said inherently, there's only three ways to do this.

[00:29:17] Speaker 00:
Either the prior art says, here's my chemical composition, and I'm saying this chemical I'm using to be a water repellent, which case it will be a teaching.

[00:29:25] Speaker 00:
Or we'd say, oh, everybody knows, or this ingredient is always a water repellent.

[00:29:31] Speaker 00:
Inherently, that's all it does.

[00:29:33] Speaker 00:
That would also meet that teaching.

[00:29:35] Speaker 01:
If those two- Okay, why though, Mr. Reschetti had a nice little analogy, which I could wrap my head around, which is like a recipe that says add a salt, add a sweetener, sugar is a sweetener.

[00:29:46] Speaker 01:
That doesn't mean the cake is necessarily sweet.

[00:29:49] Speaker 01:
You know, you've asked to have a polymeric composition which adds a water repellent.

[00:29:54] Speaker 01:
could be just a pinch of water repellent, like a pinch of salt in a recipe or something.

[00:29:57] Speaker 01:
It doesn't make the whole thing salty.

[00:29:59] Speaker 01:
But there is salt in the recipe.

[00:30:01] Speaker 01:
So here you have a water repellent in the recipe for your polymeric composition.

[00:30:06] Speaker 00:
Why does the composition itself have to be water repellent?

[00:30:12] Speaker 00:
It has to have, and this is what the spec says too about water repellency.

[00:30:16] Speaker 00:
It doesn't make any sense in the context of this spec.

[00:30:19] Speaker 00:
If you're reading just doing normal Phillips is to say, here's my sheet and the function that I want is water repellency.

[00:30:29] Speaker 00:
And to say, well, there's a smidge of whatever you think might be a water repellent.

[00:30:33] Speaker 00:
You don't know if it's a water repellent unless it's acting as a water repellent.

[00:30:36] Speaker 00:
And that's my point is,

[00:30:37] Speaker 00:
Any of those ingredients aren't inherently water repellent.

[00:30:41] Speaker 00:
It's only if they're put in a particular way do you even know that functionality is being used.

[00:30:46] Speaker 00:
Some of them, for instance, could be a surfactant, but not a water repellent.

[00:30:49] Speaker 02:
Your argument assumes that it has to, whatever the plasticizer is, that it has to impart that on the whole

[00:30:59] Speaker 02:
product, the end product.

[00:31:01] Speaker 00:
In the composition.

[00:31:02] Speaker 00:
Otherwise, you won't know.

[00:31:04] Speaker 00:
And the reason for that is why I said there's only three ways you know something is happening.

[00:31:08] Speaker 00:
If the prior art doesn't say this ingredient, I'm using it as a water repellent, there is absolutely, there is absolutely.

[00:31:16] Speaker 03:
Aren't there some dependent claims that I believe Chief Judge Moore talked about with the opposing counsel that would give you that sort of sufficient amount so that you could know potentially what is actually

[00:31:25] Speaker 03:
happening on the entirety of the composition, as opposed to the more general claims that we've also been talking about that were actually the subject at issue here.

[00:31:34] Speaker 00:
And there are dependent claims that may have some ranges.

[00:31:38] Speaker 00:
But the main point, if you go back to Phillips, the thing that's missing here is none of these ingredients are uniquely any one thing.

[00:31:46] Speaker 00:
They're only that characteristic if you can only assess that in a particular combination.

[00:31:53] Speaker 00:
And so the falsity of it is you can't just say polyethylene glycol is always a film forming bond.

[00:31:59] Speaker 01:
Okay, Council, I think we have your argument.

[00:32:00] Speaker 01:
You're way over time.

[00:32:01] Speaker 01:
I thank both Councils for their argument.

[00:32:03] Speaker 01:
This case has taken over submission.

[00:32:05] Speaker 01:
We're going to take a brief recess and then we're going to come back and we'd love it if you students were able to stay and we'd be happy to answer any questions you have.