[00:00:00] Speaker 02:
Our next case is Apple Inc.

[00:00:02] Speaker 02:
versus Omni Medisci Inc., number 23-1034.

[00:00:11] Speaker 02:
Mr. Cushon.

[00:00:12] Speaker 02:
Good morning, Your Honor.

[00:00:25] Speaker 02:
You reserve three minutes for rebuttal.

[00:00:27] Speaker 04:
That's correct.

[00:00:29] Speaker 02:
Okay, looks like we're ready when you are.

[00:00:31] Speaker 04:
Thank you very much.

[00:00:33] Speaker 04:
We filed a 28-J letter in this proceeding after the court's case in Exxonix v. Medtronic came out, and Omni has not filed a response.

[00:00:47] Speaker 04:
There were two issues we briefed.

[00:00:49] Speaker 04:
We believe the second issue, which addresses that remand question, is largely settled.

[00:00:53] Speaker 04:
I will take that up second in my argument today and turn to the claim construction issue, which is the first issue that was briefed.

[00:01:00] Speaker 04:
So let's start with basics.

[00:01:02] Speaker 04:
This claims all concerned device.

[00:01:05] Speaker 04:
It's a wearable device.

[00:01:06] Speaker 04:
It works by shining light on the skin.

[00:01:08] Speaker 04:
And then there's a sensor which reads the reflected light and turns that into a signal, which is then analyzed.

[00:01:15] Speaker 04:
Claims 3, 8, and 16.

[00:01:18] Speaker 04:
all concerned configuring the device with respect to this feature.

[00:01:23] Speaker 04:
And what they all say is it's going to first either detect or identify an object and second measure that against the threshold.

[00:01:32] Speaker 04:
The device, actually the way it does that... Two of the claims talk about identify, right?

[00:01:37] Speaker 01:
And one of them talks about detect, is that right?

[00:01:39] Speaker 01:
Correct.

[00:01:39] Speaker 04:
Claims three and eight use the term configure to identify an object.

[00:01:43] Speaker 04:
Claim 16 uses the phrase detect an object.

[00:01:46] Speaker 02:
What's the purpose of the invention?

[00:01:49] Speaker 02:
I mean, realizing how it works, I'm just trying to get to the point of identify.

[00:01:54] Speaker 02:
It's not just to say, to make a reading and say there's blood here.

[00:02:01] Speaker 04:
What the claim term, and there's essentially the same claim term in these two sets of claims, it's describing the behavior of the device, which is doing this evaluation of the signal.

[00:02:14] Speaker 04:
And when the board took that up below, didn't really look at what that device component was doing.

[00:02:22] Speaker 04:
What it did was focused on the dictionary definitions by identify and detect.

[00:02:26] Speaker 04:
And I think that's the fundamental problem with their construction.

[00:02:28] Speaker 02:
The argument at that time is still the argument that's before us today.

[00:02:32] Speaker 04:
Correct.

[00:02:33] Speaker 04:
What the board did was reach the conclusion that the terms, the phrases, identify an object, detect an object, as they are used in these claims, covered essentially the same, covered different things.

[00:02:47] Speaker 04:
And they did that because of the dictionary definitions.

[00:02:50] Speaker 04:
What we've provided in our briefing is

[00:02:53] Speaker 04:
evidence showing that the terms, identify and detect, argues interchangeably throughout the specification, which rebuts that presumption.

[00:03:02] Speaker 01:
It also... The board also, though, referred to the actual claim language.

[00:03:05] Speaker 01:
I know there were at least some statements about the specifications.

[00:03:09] Speaker 01:
So you can't just say it was just the dictionaries, even though those were also included in the board decision.

[00:03:14] Speaker 04:
I would direct you to the appendix at appendix 9 and 10, where the board very clearly does attribute their construction to the dictionary definition of the words detect and identify.

[00:03:28] Speaker 04:
And in fact, in Omni's brief in front of this proceeding, they've actually conceded, just at page 20 and 21 of the red brief, that these three claims, this clause in these three claims, can be read to have a common meaning.

[00:03:44] Speaker 04:
So they've looked at the passages we've identified in the specification, and they've agreed that one way of reading this clause is to read those two phrases, pages 20 to 21 of the red brief.

[00:04:01] Speaker 04:
They cited a number of the passages that we identified from the specification where we represented.

[00:04:10] Speaker 04:
Those are showing the interchangeable use of the words, detect and identify.

[00:04:19] Speaker 04:
And they conclude,

[00:04:20] Speaker 04:
that one way of reading those passages is to see these two claimed terms essentially having the same meaning.

[00:04:27] Speaker 04:
They want it to be their narrower meaning, but they are essentially undoing what the board's decision was, which was because of the dictionary definitions that had to have a different meaning.

[00:04:37] Speaker 00:
Am I incorrect that they also relied on the classic presumption

[00:04:50] Speaker 00:
And then they looked at the dictionary.

[00:04:53] Speaker 00:
I didn't hear you.

[00:04:54] Speaker 00:
I haven't heard you say anything about that.

[00:04:55] Speaker 04:
I'm happy to talk about that.

[00:04:56] Speaker 04:
The fact that the terms are used interchangeably in the specification overcomes that presumption.

[00:05:02] Speaker 04:
So the presumption derives from the different dictionary definitions, but you can overcome that presumption by showing that the usage of the terms in the specification is not corresponding to that.

[00:05:12] Speaker 01:
But I don't think you directly answered Judge Albright's question, because if you turn to appendix page 8, I think that's where it starts off, talking about the differences in the claim language, which is what I was also referring to.

[00:05:23] Speaker 01:
And then later, if you go on to page 9, there's at least references to the patent specification I see in certain paragraphs on page 9.

[00:05:32] Speaker 01:
And then, of course, they do turn to the dictionaries later as well.

[00:05:39] Speaker 04:
Sir, if you look at appendix, so the first thing they did was they rely on that dictionary definition at page 9, and they conclude from that that the terms, because they have different meanings, have different

[00:05:53] Speaker 04:
That's the basis of their decision.

[00:05:55] Speaker 04:
They're not relying on these additional passages to interpret the meaning of identify or detect.

[00:06:01] Speaker 04:
They're quoting the dictionary definition and adopting it as the meaning.

[00:06:05] Speaker 04:
And then in the actual application of this at Appendix 51, that's going to this question of whether the prior art we used met that definition.

[00:06:16] Speaker 04:
They rely again on that dictionary definition.

[00:06:21] Speaker 04:
What we did in our briefing below and here was to point out that these phrases, identify an object and detect an object, that the words don't have the precise boundaries that the board has set using that dictionary definition.

[00:06:38] Speaker 04:
So for example, one passage at appendix 189 shows the specification using the phrase that the device detects a particular blood constituent.

[00:06:51] Speaker 04:
Then, in another passage, you see it at 188 and 199, you see the phrase, the device is identifying an object.

[00:07:04] Speaker 04:
Those phrases are being used interchangeably to describe the same behavior of the device.

[00:07:08] Speaker 04:
This is that function of flashing a light on the skin and measuring the signal and analyzing that signal.

[00:07:14] Speaker 04:
So it's not using the words with these precise dictionary definitions.

[00:07:18] Speaker 02:
This is a de novo review we have, right?

[00:07:21] Speaker 02:
It is.

[00:07:21] Speaker 02:
So we don't have to rely on or go straight to those dictionary reviews.

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

[00:07:27] Speaker 04:
And we think you should focus on what the device does, because that's what this claim element is doing.

[00:07:32] Speaker 04:
It's describing what the device does.

[00:07:34] Speaker 04:
The second thing I'd like to flag is that... Before you get it, if I could just double check.

[00:07:39] Speaker 00:
So your position, and we went, when my clerks went through the spec,

[00:07:44] Speaker 00:
Your position is that the way identifying a detector used in a spec sufficiently established for Apple that they were used interchangeably to support however they were used in the three separate claims.

[00:08:00] Speaker 04:
Correct.

[00:08:01] Speaker 04:
And the second thing I'd like to direct your attention to, in the specification, the specification doesn't always use the phrase identify an object to identify a particular thing.

[00:08:12] Speaker 04:
We talk about an example that is called the change detection technique.

[00:08:17] Speaker 04:
This is at appendix 191 and reflecting to the patent.

[00:08:22] Speaker 04:
The patent says the change detection technique may help to identify objects that change in the field of view.

[00:08:28] Speaker 04:
The field of view is a sensor.

[00:08:30] Speaker 04:
That's the component that's doing the work.

[00:08:33] Speaker 04:
The change detection technique involves comparing two signals and seeing if there's a difference between the two signals.

[00:08:39] Speaker 01:
What column and line were you looking at?

[00:08:41] Speaker 04:
That's at column 17, lines 12 to 13 is the specific quote that I just gave you.

[00:08:48] Speaker 04:
So this device is looking for a difference in the two signals.

[00:08:52] Speaker 04:
It's the difference that tells it has identified an object.

[00:08:56] Speaker 04:
So it's not identifying a specific thing.

[00:08:58] Speaker 04:
It's identifying the presence of an object.

[00:09:01] Speaker 02:
If it identifies a high level of blood sugar, then that's identifying a particular thing.

[00:09:09] Speaker 04:
It could be even, it doesn't even get to the level of what it is, because it's using that difference in the signals to associate with the attempt.

[00:09:16] Speaker 02:
You need to answer my question.

[00:09:17] Speaker 04:
Sure.

[00:09:19] Speaker 02:
If it detects a high level of blood sugar, then that's identifying a particular thing.

[00:09:24] Speaker 04:
Correct.

[00:09:25] Speaker 02:
And I think the... Isn't that what this patent is all about?

[00:09:29] Speaker 02:
And it's specifically in the area of diabetes?

[00:09:35] Speaker 04:
The patent covers a variety of applications.

[00:09:37] Speaker 04:
And I think the critical thing to appreciate it is with the claim language, they have not tied it down to identifying particular things or identifying them by a particular technique.

[00:09:48] Speaker 04:
The way that the device figures out which thing it is looking at is doing things like pattern matching.

[00:09:54] Speaker 04:
They're looking at the signal for kind of like a fingerprint of the molecule, saying, OK, that molecule is glucose or whatever it may be.

[00:10:01] Speaker 02:
But at the end of the day, it identifies a particular thing.

[00:10:05] Speaker 04:
In the way it's described in the specification, the terms identify and detect are being used interchangeably.

[00:10:11] Speaker 04:
And in the context of the claim term, it does not require identifying any particular thing or a particular way of identifying that thing.

[00:10:20] Speaker 04:
So we believe what it's doing is detecting the, or it's confirming that the thing you're looking for is there.

[00:10:26] Speaker 04:
That's the, in our construction we've said,

[00:10:29] Speaker 04:
When the device identifies or detects an object, it discovers or determines the existence, presence, or fact of the object.

[00:10:35] Speaker 04:
It may be a specific object.

[00:10:36] Speaker 04:
It may be any object.

[00:10:38] Speaker 01:
And that's what the point line is.

[00:10:38] Speaker 01:
What if we disagree that the two terms are used interchangeably?

[00:10:41] Speaker 04:
I'm sorry, Your Honor.

[00:10:42] Speaker 01:
What if we disagree that the two terms are used interchangeably?

[00:10:46] Speaker 04:
I think the position of omni coupled with that point of the interchangeability is enough to rebut or overcome the presumption of different meanings that the board used.

[00:10:59] Speaker 04:
We think you should look at the role of the component that's being described in this element of the claim and look and see what it's doing.

[00:11:07] Speaker 04:
And that's what we think our construction is best describing.

[00:11:10] Speaker 02:
Could you address the issue regarding the sufficiency of the reply?

[00:11:15] Speaker 04:
Sure.

[00:11:15] Speaker 04:
And that's addressed by your recent decision in Exxonix.

[00:11:20] Speaker 04:
We believe this case is on all boards without Exxonix.

[00:11:23] Speaker 04:
In Exxonix and here, the patent owner did not raise a claim construction in response to our petition before institution.

[00:11:32] Speaker 04:
The board observed this.

[00:11:33] Speaker 04:
They did not issue a construction of identifying object or detecting object.

[00:11:38] Speaker 04:
After institution, they presented a new construction, Omni did.

[00:11:43] Speaker 04:
which advanced their view about what these two terms mean.

[00:11:47] Speaker 04:
We responded to that, we explained why we thought it was wrong, but we also showed why the component, the specific feature of the component that we had used in the prior art, met their construction.

[00:12:00] Speaker 02:
The boards... Refresh my memory, is it the case that Apple did not submit a construction?

[00:12:06] Speaker 04:
We did.

[00:12:07] Speaker 04:
Our construction, we used the construction I mentioned a minute ago where the construction that best matches what the component of the device is doing is that that component is discovering or determining the existence, presence, or fact of an object.

[00:12:26] Speaker 04:
That's what we presented in response to their construction.

[00:12:29] Speaker 04:
But we also addressed why, under the air construction, where it requires determining what the object is,

[00:12:37] Speaker 04:
the prior art met that requirement.

[00:12:39] Speaker 04:
And what's notable is that in the section of our brief, in our petition, we had discussed two capabilities of this component.

[00:12:48] Speaker 04:
One was determining if it was on the person.

[00:12:51] Speaker 04:
The second was addressed in that same section of obviousness of those three claims, where we said it also can do blood oxygen measurements.

[00:13:01] Speaker 02:
So suppose we agree with you, what would we do here, reverse or remand?

[00:13:08] Speaker 04:
Well, there's an observation by the board that they seem to recognize when the device performs this blood oxygenation measurement technique, it necessarily identifies the constituents in the blood.

[00:13:21] Speaker 04:
But we think as per the exonics phase, at a minimum, it requires a remand to consider our reply argument.

[00:13:28] Speaker 04:
So we would vacate and remand.

[00:13:30] Speaker 04:
Correct.

[00:13:31] Speaker 01:
And is the portion that you feel like was not considered on appendix page 5383?

[00:13:35] Speaker 01:
Is that the portion?

[00:13:36] Speaker 04:
That is the portion.

[00:13:39] Speaker 04:
And I would just address kind of generally what the reply did was explain how this blood measurement, blood oxidation and blood oxygen measurement technique is doing the same thing that the patent is describing doing in order to identify blood consistency.

[00:13:57] Speaker 02:
OK.

[00:13:58] Speaker 02:
We'll restore you to your original three minutes.

[00:14:01] Speaker 04:
Thank you very much your honor.

[00:14:07] Speaker 02:
Mr. Councilor Lurie, did I pronounce that correctly?

[00:14:12] Speaker 03:
Yes.

[00:14:13] Speaker 02:
Okay.

[00:14:14] Speaker 03:
Good morning, Tom Lurie for OmniMedSci.

[00:14:18] Speaker 03:
I'd like to start with the axionic, axonic, I always put an eye on there, case first if I could, and

[00:14:28] Speaker 03:
The problem with Apple's argument is it's founded on a false premise.

[00:14:35] Speaker 03:
And the false premise is that Omni first raised a claim construction issue in the patent on response.

[00:14:45] Speaker 03:
And that's not, for the word identify, from the very beginning, Apple relied on the plain and ordinary meaning of that common English word.

[00:14:54] Speaker 02:
They never submitted their own construction.

[00:14:56] Speaker 03:
They never submitted their own construction.

[00:14:58] Speaker 03:
which means that they're just relying on what it means in the ordinary sense.

[00:15:03] Speaker 03:
And the ordinary sense of the word means to identify, and the word identify means to recognize something as a particular thing.

[00:15:12] Speaker 03:
And there's no question about that.

[00:15:13] Speaker 03:
And that's the context in which Apple made its petition argument.

[00:15:17] Speaker 03:
It said that there's an error, system error,

[00:15:21] Speaker 03:
apparatus in Lissagursky.

[00:15:24] Speaker 03:
And in Lissagursky, when the probe falls off, then there's an error that's generated.

[00:15:30] Speaker 03:
And that's argued, but that identifies the probe being on a wrist or an ear.

[00:15:35] Speaker 03:
Identifying meaning that it identifies the wrist or the ear.

[00:15:39] Speaker 03:
That was their position.

[00:15:41] Speaker 03:
Nothing's changed.

[00:15:42] Speaker 03:
Our position in response was yes, that's what identify means.

[00:15:46] Speaker 03:
They got it wrong in terms of the substance of it.

[00:15:50] Speaker 03:
But our argument in terms of claim construction never changed.

[00:15:53] Speaker 03:
So this is not like Axonics.

[00:15:55] Speaker 03:
In Axonics, the petitioner recognized that there were two different claim terms.

[00:16:02] Speaker 03:
And Axonics argued, implicitly at least, that they had the same meaning, that there was a one-input construction.

[00:16:11] Speaker 03:
And in response,

[00:16:12] Speaker 03:
Then the patent owner said, no, no, no, there's a two input.

[00:16:16] Speaker 03:
And that was the debate.

[00:16:18] Speaker 01:
But was there a dispute between the parties about the plain, ordinary meaning of what identify was?

[00:16:24] Speaker 03:
Apple raised that in the reply.

[00:16:25] Speaker 03:
There wasn't until Apple raised it for the first time in reply.

[00:16:29] Speaker 03:
Before that, we all agreed that it meant you have to recognize a thing, like a wrist or an ear.

[00:16:34] Speaker 03:
That was their argument in the petition.

[00:16:36] Speaker 03:
You have to recognize a wrist or an ear

[00:16:38] Speaker 03:
And they said, Alyssa Gerstke does that.

[00:16:40] Speaker 03:
It really doesn't.

[00:16:41] Speaker 03:
But that was their argument.

[00:16:42] Speaker 01:
Did the dispute not become apparent during the patent owner's response?

[00:16:45] Speaker 01:
I thought that was when the dispute became apparent, and then Apple decided to report it.

[00:16:49] Speaker 03:
So what happened was Apple sort of messed up.

[00:16:54] Speaker 03:
They said all three claims, 3, 8, and 16, use the phrase to identify an object.

[00:16:59] Speaker 03:
In fact, claim 16 says to detect an object.

[00:17:03] Speaker 03:
So we said, and that was the only new construction, was DETECT on the word DETECT.

[00:17:08] Speaker 03:
That was the construction we raised for the first time.

[00:17:10] Speaker 03:
That's not an issue here.

[00:17:11] Speaker 03:
We didn't create a new construction for IDENTIFY.

[00:17:15] Speaker 03:
We said DETECT means something different than IDENTIFY, and therefore we had arguments about DETECT, and we lost that, and we haven't appealed that.

[00:17:24] Speaker 03:
But for identify, both in the petition and in the Patent Owned Response, we all used the same definition.

[00:17:30] Speaker 03:
It was in the reply that Apple said, uh-oh, we've got problems because identify, we need to have identify mean the same thing as detect.

[00:17:40] Speaker 03:
That was where things went wrong for Apple.

[00:17:43] Speaker 03:
They wanted identify to mean detect as opposed to identify in the ordinary sense.

[00:17:48] Speaker 03:
that it meant in the petition, it meant in our response.

[00:17:52] Speaker 03:
So that's why axonics doesn't really apply here.

[00:17:55] Speaker 02:
But wasn't Apple addressing how the prior art would meet the definition of identify?

[00:18:04] Speaker 02:
In the reply or in the petition?

[00:18:07] Speaker 03:
In the reply.

[00:18:08] Speaker 03:
In the reply, yes, yes.

[00:18:11] Speaker 03:
But that was a brand new... Okay, so there are two things in the reply.

[00:18:14] Speaker 03:
They said, in the reply, under Apple's new version of what identify means, which is just the same thing as detect, then Lissigowski meets that definition.

[00:18:27] Speaker 03:
That was their first argument.

[00:18:28] Speaker 03:
Then they said, but if identify means the common, ordinary meaning of identify, which is to recognize something as a particular object, then we've got a whole new set of arguments.

[00:18:38] Speaker 03:
And those whole new set of arguments

[00:18:41] Speaker 03:
fundamentally different from the arguments that they raised in their petition.

[00:18:45] Speaker 03:
In the petition, Apple relied on, this is what I've highlighted in pink here, is their entire petition argument to identify an object.

[00:18:55] Speaker 03:
Two sentences.

[00:18:56] Speaker 03:
They said, they cited Lissingersky at column 36.

[00:19:01] Speaker 01:
Sir, what page are you on?

[00:19:02] Speaker 01:
You're reading from a page.

[00:19:03] Speaker 01:
What page are you on?

[00:19:03] Speaker 03:
I'm sorry.

[00:19:04] Speaker 03:
This is appendix page 275.

[00:19:08] Speaker 03:
It's page 62 of Apple's petition.

[00:19:12] Speaker 03:
And it's the last paragraph.

[00:19:15] Speaker 03:
It's one paragraph.

[00:19:16] Speaker 03:
It's literally two sentences long.

[00:19:18] Speaker 03:
It's their entire argument on identifying an object from claims three, eight, and they said 16, even though 16 wasn't that limitation.

[00:19:29] Speaker 03:
And they cited column 36 to 37 of Lissagersky for this error signal in their reply, which is

[00:19:41] Speaker 03:
Appendix page 5383.

[00:19:44] Speaker 03:
They've now got a slightly longer paragraph, still just one paragraph.

[00:19:50] Speaker 03:
And now they're citing column four from Lissigersky.

[00:19:53] Speaker 03:
A whole different section of Lissigersky has nothing to do with the argument they raised in the petition.

[00:19:58] Speaker 03:
So they've got a brand new argument on reply, citing a whole different section, and not talking about the error signals that they talked about in the petition.

[00:20:08] Speaker 01:
I thought that if you look at appendix page 5242, the pen owner response,

[00:20:13] Speaker 01:
I don't know.

[00:20:14] Speaker 01:
Do you have access to that?

[00:20:14] Speaker 03:
I do.

[00:20:15] Speaker 03:
Patent on response, yes.

[00:20:16] Speaker 01:
So looking at PINIX page 5242, it talks about Apple does not propose a construction to identify an object.

[00:20:24] Speaker 01:
And then it goes on to say the word identify is a common word that means x. Right.

[00:20:29] Speaker 01:
And it talks about that.

[00:20:30] Speaker 03:
That's right.

[00:20:31] Speaker 03:
And that was our position, that they didn't have an express construction.

[00:20:35] Speaker 03:
So they were relying on the plain and ordinary meaning.

[00:20:37] Speaker 02:
Right.

[00:20:37] Speaker 02:
Because at that time, there was no construction

[00:20:42] Speaker 02:
And it seems to me that this whole argument comes up, the provenance of the argument is rooted in your response.

[00:20:54] Speaker 03:
Well, I respectfully disagree, because all words have meaning.

[00:20:58] Speaker 03:
They're under Phillips.

[00:21:01] Speaker 01:
Words have the plain, ordinary meaning.

[00:21:02] Speaker 01:
But you did put forth a meaning that then they responded to on reply.

[00:21:04] Speaker 01:
Is that not accurate?

[00:21:05] Speaker 03:
True.

[00:21:06] Speaker 01:
All we did was put... That is accurate.

[00:21:08] Speaker 01:
Wait, let's answer my question.

[00:21:09] Speaker 01:
You put forth a meaning in the Patent Owner Response on appendix page 5242, correct?

[00:21:15] Speaker 03:
We gave voice to the meaning that was inherent in what Apple argued.

[00:21:19] Speaker 01:
OK, so you pit it forth.

[00:21:21] Speaker 01:
And then after that, in the reply, that's when they responded to that meaning you pit forth, correct?

[00:21:25] Speaker 03:
That's right.

[00:21:26] Speaker 03:
That's true.

[00:21:27] Speaker 03:
That is true.

[00:21:27] Speaker 03:
But it isn't any change in construction.

[00:21:31] Speaker 03:
The difference between Erickson, for example, Erickson, they started off with a BRI construction.

[00:21:36] Speaker 02:
But the Board never had a chance to consider Apple's argument.

[00:21:39] Speaker 02:
They absolutely, yeah, I would disagree with that.

[00:21:42] Speaker 02:
Yeah, rejecting the reply.

[00:21:45] Speaker 03:
They rejected the reply because the reply made a brand new argument that was different from what they argued in the petition.

[00:21:52] Speaker 03:
That was the problem.

[00:21:54] Speaker 02:
The claim construction.

[00:21:55] Speaker 02:
I thought that's what we were discussing, that they were responding to your argument, your construction, on Identify.

[00:22:04] Speaker 03:
They were responding to our statement of what the plain and ordinary meaning of Identify is, which, again, our position is, and I think it's

[00:22:17] Speaker 03:
It's hard to refute.

[00:22:18] Speaker 03:
That was the meaning that they gave the term in the petition.

[00:22:23] Speaker 03:
They didn't put voice to it.

[00:22:24] Speaker 03:
They didn't say, we use the word identify, we mean XYZ.

[00:22:29] Speaker 03:
But it's a common English term.

[00:22:30] Speaker 03:
Everybody who speaks English understands identify as identifying something specific.

[00:22:36] Speaker 03:
If you go to a police lineup and you identify

[00:22:40] Speaker 03:
the perp, you pointed somebody out.

[00:22:43] Speaker 03:
The word identified didn't need any particular definition.

[00:22:46] Speaker 02:
The reason it needed a definition here... But once it became clear that it needed definition, then Apple was entitled to go back and address your argument.

[00:22:55] Speaker 03:
No, because we didn't change the definition.

[00:22:57] Speaker 03:
That's why I say it's different between Axonics and Erickson.

[00:23:01] Speaker 03:
In Axonics, there was a definition that was given in the petition that was a one-input definition.

[00:23:10] Speaker 03:
The response then said, no, no, no.

[00:23:12] Speaker 03:
It's not one input.

[00:23:13] Speaker 03:
It's two inputs.

[00:23:15] Speaker 00:
Why isn't it safer procedurally for us to send it back and have them resolve this?

[00:24:02] Speaker 00:
it for us to have to decide this and then if y'all aren't happy you can come back?

[00:24:09] Speaker 03:
Because it gives the petitioners license to sandbag.

[00:24:14] Speaker 03:
Because petitioners can do exactly what Apple did here.

[00:24:18] Speaker 01:
Was there a sir reply?

[00:24:19] Speaker 03:
there was a surreply.

[00:24:20] Speaker 01:
So there was a chance, so let's say that then obviously this was put forth in the pattern of response, Apple responded, and then there was a surreply, so there was another opportunity to respond, right?

[00:24:29] Speaker 03:
There is, but here's the problem.

[00:24:32] Speaker 03:
Because Apple relied at least implicitly on the plain and ordinary meaning of the term, and all we did was give voice to it,

[00:24:38] Speaker 02:
If you decide that that's enough, that when the patent owner says here's the meaning... What do you mean you gave voice to it?

[00:24:47] Speaker 02:
Is that separate from you argued you made an argument?

[00:24:51] Speaker 02:
No.

[00:24:52] Speaker 03:
We just said identify in the plain order meaning of the term means and we...

[00:24:58] Speaker 03:
I stated what that meaning is.

[00:25:01] Speaker 03:
We weren't saying that Apple used the wrong meaning of identify.

[00:25:05] Speaker 03:
We were saying, this is the meaning that Apple used, so we could contrast it with the tact.

[00:25:11] Speaker 00:
The problem was- I'm sorry.

[00:25:12] Speaker 00:
I haven't appeared in front of the PTAB, but can't you, if it were to go back to the PTAB, to your point about sandbagging, can't the PTAB deal with that equally

[00:25:40] Speaker 00:
this R&P tab and they can deal with it.

[00:25:45] Speaker 03:
The reason it's sandbagging and the reason it harms patent owners is because the patent owner then has a Hobson's choice, right?

[00:25:51] Speaker 03:
If other petitioners do what Apple did and not define their terms and just start making arguments without any construction, then the patent owner has a Hobson's choice between A, saying, OK, here's the meaning that the petition's giving this term, and let me argue specifically about that meaning, because otherwise we're just arguing in the abstract.

[00:26:10] Speaker 03:
In which case, then, for the first time, the petitioner can say, oh, well, we've got a whole new meaning of that term, which is what Apple did.

[00:26:19] Speaker 00:
I think that makes me confused.

[00:26:21] Speaker 00:
Why were you compelled to give it a meaning?

[00:26:26] Speaker 00:
I don't understand why you had to give it a meaning in yours other than to make an argument of what the meaning is.

[00:26:36] Speaker 03:
Because we had to contrast it with the term detect.

[00:26:40] Speaker 02:
The problem, again, this is... And that's the new theory that was presented for the first time in this proceeding, and it was in your response.

[00:26:49] Speaker 02:
The opposite of what Judge Albright is talking about, about the sandbagging, the opposite is putting a burden on petitioners.

[00:26:57] Speaker 02:
It's just totally unrealistic to anticipate and speculate every theory that may come up and to address it fully.

[00:27:06] Speaker 02:
And at that point, what we end up doing is closing the courthouse doors to litigants.

[00:27:19] Speaker 03:
This isn't a situation where Apple had to anticipate anything we were doing, because they were using the term identify in the same sense we were using it in our response.

[00:27:30] Speaker 03:
There was no difference between us and the way we were using the term until Apple's reply when they tried to change the meaning of identify.

[00:27:39] Speaker 03:
I'm sorry.

[00:27:40] Speaker 01:
How do we know that they were using the term the same?

[00:27:43] Speaker 03:
Because when you look at what they argued in their petition,

[00:27:47] Speaker 03:
They say, thus, Lissagursky's... What page are you on?

[00:27:50] Speaker 03:
I'm sorry.

[00:27:50] Speaker 03:
This is the same site, appendix 275.

[00:27:53] Speaker 03:
This is their entire argument on how Lissagursky meets the claim limitations.

[00:28:07] Speaker 03:
Thus, Lissagursky's censor can identify... Just a second.

[00:28:10] Speaker 03:
I'm sorry.

[00:28:11] Speaker 03:
Sure.

[00:28:18] Speaker 03:
Yes, the last paragraph on the bottom of the page, the last sentence.

[00:28:27] Speaker 03:
Okay.

[00:28:27] Speaker 03:
Thus, Lissingersky's sensor can identify when an object, and to give the examples of a wrist or an ear, is in range of the sensor.

[00:28:35] Speaker 03:
And then they quote the claim language, the wearable device is at least in part configured to identify an object.

[00:28:40] Speaker 03:
So, Apple is using the term identify

[00:28:43] Speaker 03:
to say that it knows that they're risked or near, which is the construction that's the plain, ordinary meaning of the term.

[00:28:50] Speaker 03:
That's all we did was say that's the plain, ordinary meaning of the term that Apple was using in its petition.

[00:28:58] Speaker 03:
And then Apple said, oh, no, we don't want to have that meaning.

[00:29:02] Speaker 03:
We want to have a different meaning.

[00:29:03] Speaker 03:
We want it to mean the same thing as detect.

[00:29:05] Speaker 03:
That's where things got off.

[00:29:08] Speaker 01:
Let me ask you one other question.

[00:29:10] Speaker 01:
In terms of the reply that Apple put forth, do you agree that they did not include any new prior art references?

[00:29:19] Speaker 03:
No, I don't agree with that.

[00:29:21] Speaker 03:
First of all, they included Tran.

[00:29:23] Speaker 03:
which was a brand new reference in terms of this Identify limitation.

[00:29:28] Speaker 03:
So just understand claim, and I say my time's up, but... Trail is included in the petition, though, too, right?

[00:29:34] Speaker 03:
I'm sorry, the reference is, but not with respect to claims 3, 8, and 16.

[00:29:39] Speaker 03:
In the identifying and detecting language.

[00:29:41] Speaker 01:
And your position is that they use the same references and replies in the petition, but they utilize them in a slightly different way.

[00:29:46] Speaker 01:
Is that your argument?

[00:29:47] Speaker 03:
Well, yeah.

[00:29:49] Speaker 03:
They use different embodiments of those references for these limitations.

[00:29:56] Speaker 03:
They didn't use the same embodiments of Lissagersky, and they didn't use Tran at all for claims 3, 6, and 18.

[00:30:03] Speaker 03:
And that was brand new in the reply.

[00:30:08] Speaker 03:
So as a matter of law, that should not have been considered.

[00:30:12] Speaker 03:
Time's up.

[00:30:14] Speaker 02:
Thank you very much.

[00:30:30] Speaker 04:
Thank you, Your Honor.

[00:30:31] Speaker 04:
I think this is not an uncommon situation of a case that comes to you where the parties say that the plain and ordinary meeting of a term

[00:30:40] Speaker 04:
is not in dispute.

[00:30:42] Speaker 04:
And then once you start the fight, you actually discover there is a dispute.

[00:30:45] Speaker 04:
That's exactly this case.

[00:30:47] Speaker 04:
I also want to flag that we probably disagree about what the claim term is that we're fighting about.

[00:30:54] Speaker 04:
He wants to use the word identify.

[00:30:56] Speaker 04:
We're referring to the clause of the claim that says, configure the device to identify an object.

[00:31:03] Speaker 02:
Given the importance of the issue that we're talking about,

[00:31:09] Speaker 02:
And it just seems to me that the arguments made by the parties bear this out in the briefing.

[00:31:17] Speaker 02:
There's an intersection of the legal theories and arguments, and it comes down to this identifier.

[00:31:23] Speaker 02:
Why would you have anticipated that in your petition?

[00:31:27] Speaker 02:
Why wouldn't you have seen this claim has this function here, this particular point that I need to address?

[00:31:34] Speaker 04:
I believe we did in the petition.

[00:31:37] Speaker 04:
If you look at the first sentence of the section on appendix 275 that was being discussed, the first sentence of our position was, Lissa Gerstie teaches that its sensor can detect when the device has fallen off.

[00:31:52] Speaker 04:
And then we use, in an interchangeable manner, Lissa Gerstie sensor then

[00:31:57] Speaker 04:
can identify when an object has done that.

[00:32:01] Speaker 04:
So we're referring to the clause and the behavior of the device as it respects that part of the claim requirement.

[00:32:08] Speaker 04:
We believe that was clear how the prior device met that requirement of the claim.

[00:32:15] Speaker 04:
And we then present our position.

[00:32:19] Speaker 04:
On the next page of this section of reasons why claims 3.8 and 16 are obvious, you're seeing us discuss a second capability of the same component of the same device.

[00:32:32] Speaker 04:
It's just reflecting.

[00:32:33] Speaker 04:
We've given them notice of this ability to do something else that this component can do.

[00:32:38] Speaker 04:
And we believe that was perfectly appropriate.

[00:32:41] Speaker 01:
Can you respond to opposing counsel's argument that in the reply you used the same prior art but maybe utilized different embodiments of that prior art or for different claims?

[00:32:53] Speaker 01:
Can you just respond to that?

[00:32:54] Speaker 04:
Yeah, I again would direct you to appendix 276 because you see us discussing right there

[00:33:00] Speaker 04:
that this device that's described in the prior Lissagursky can detect blood oxygen.

[00:33:06] Speaker 04:
And when we came in the reply, we explained how it does that.

[00:33:09] Speaker 04:
It does that by identifying the two different types of hemoglobin that yield the measurement that is the blood oxygenation measurement.

[00:33:19] Speaker 04:
Last couple of very brief points, and I know I'm going to be running out of time in a minute.

[00:33:24] Speaker 04:
You kind of raised this equities point, and that's actually addressed in the exonic decision that explains the prejudice to petitioners of a new claim structure coming in.

[00:33:35] Speaker 04:
And the last point I'd just like to flag was that when we came forward in the reply, we very much clearly addressed what we said originally, and we made it very clear we were responding to this new claim construction, which fits precisely into the rationale of exonics.

[00:33:52] Speaker 02:
OK.

[00:33:52] Speaker 02:
Thank you, counsel.

[00:33:55] Speaker 02:
This case is taken under advisement.