[00:00:00] Speaker 00:
Our last case for argument is 23-1511, Hebert v. Allied, Rubber, and Gaskett.

[00:00:09] Speaker 00:
Council, how do I say your name?

[00:00:10] Speaker 02:
Worson.

[00:00:11] Speaker 00:
Excuse me, Worson.

[00:00:13] Speaker 00:
Mr. Worson.

[00:00:15] Speaker 02:
Good morning, Your Honor.

[00:00:16] Speaker 02:
It's Matt Worson for Leland-Aber.

[00:00:20] Speaker 02:
There are two independent reasons that this court

[00:00:26] Speaker 02:
should reverse the district court's grant of summary judgment.

[00:00:32] Speaker 02:
The first relates to deliberate marking of the accused device.

[00:00:38] Speaker 02:
The second relates to the infringement analysis of the district court, which raises a number of issues

[00:00:46] Speaker 02:
uh... which a bear uh... needs to prevail on all of those for that to be a basis for reversal delivered marking by the defendant yes so the defendant here allied marked the accused wrench who would with its own hand wasn't it who was it was the primary sponsor of that market

[00:01:11] Speaker 02:
it was the defendant ally you're on it was it and i think myself and uh... mister a bear was involved well the uh... the record evidence shows your honor that uh... first of all at at page three eighty seven of the joint appendix you'll find the defendant c o james stoddard emailing designs of the accused of ice to a manufacturer in china

[00:01:41] Speaker 02:
Those drawings of the wrench have the patent marking on them.

[00:01:48] Speaker 02:
Also look to page 39.

[00:01:50] Speaker 04:
Who did he rely on to believe that the product should be marked with the patent?

[00:01:55] Speaker 04:
It was Mr. Abert, right?

[00:01:58] Speaker 02:
Could you repeat that?

[00:01:59] Speaker 04:
I'm essentially saying that it was Mr. Abert who was the person who said it should be marked with the patent.

[00:02:04] Speaker 02:
Yeah, that is a misunderstanding.

[00:02:07] Speaker 02:
And I would cite 387 as evidence that it was the defendant's CEO that sent the email.

[00:02:14] Speaker 02:
But also, an independent ground would be a contract that ABER and Allied entered into, a distribution agreement.

[00:02:24] Speaker 02:
That's at 442 at the Joint Appendix.

[00:02:27] Speaker 02:
In that, ARDCO or Allied gained a contractual right to mark the wrenches.

[00:02:34] Speaker 02:
So those two pieces of evidence together establish a deliberate marking of the wrench by the defendant.

[00:02:44] Speaker 02:
And let's remember where we are procedurally.

[00:02:47] Speaker 02:
This is a grant of summary judgment.

[00:02:50] Speaker 02:
This evidence, we submit, is enough to get to trial on that issue.

[00:02:56] Speaker 02:
It should have been construed in plaintiff's favor.

[00:03:00] Speaker 02:
uh... and uh... it was not and we believe that is here uh... and it should be reversed uh... we feel is that what we believe that we fit within this court's throw low decision which raised essentially identical facts uh... some of you know how far you think this marketing marketing argument goes because it's a little confusing to me if uh... if somebody marked their product with a patent number

[00:03:29] Speaker 00:
But it's crystal clear to pretty much everybody in the room, and I'm not saying that's this case, that the device that's being marked is actually missing one of the elements of the patent.

[00:03:40] Speaker 00:
You wouldn't say, would you, that that evidence should prevent summary judgment?

[00:03:45] Speaker 02:
I would say that in that hypothetical, no, it would not.

[00:03:50] Speaker 02:
In our case, we're asserting that it's circumstantial evidence going towards infringement.

[00:03:58] Speaker 00:
So which, I guess I understood the district court to find non-infringement because it concluded that there were multiple claim limitations that mark present in the accused device.

[00:04:09] Speaker 00:
Is that fair?

[00:04:10] Speaker 02:
Yes.

[00:04:10] Speaker 00:
So why would the evidence of marking change that?

[00:04:15] Speaker 00:
That's what I don't understand.

[00:04:16] Speaker 02:
Well, and we can get into the infringement analysis.

[00:04:20] Speaker 02:
your honor uh... and i'm happy to do that now it's it's it's not that's more like a mismarking question rather than an infringement question we do not believe so your honor this is uh... deliberate marking much like the frollo case where it stands as an admission by allied that this wrench

[00:04:46] Speaker 02:
is covered by the patent that it's marking.

[00:04:48] Speaker 05:
But that doesn't override the facts, does it?

[00:04:52] Speaker 02:
No.

[00:04:52] Speaker 02:
So it is not case over.

[00:04:57] Speaker 02:
We automatically win because they marked the wrench.

[00:05:00] Speaker 02:
We're not saying that.

[00:05:01] Speaker 02:
It's circumstantial evidence of it.

[00:05:04] Speaker 04:
But why is that?

[00:05:06] Speaker 04:
Let's assume for a second the judge got it right.

[00:05:10] Speaker 04:
I don't know who the judge was, but if the judge got it right, that they were missing several elements, as the chief said, then that vitiates the marking.

[00:05:27] Speaker 04:
I don't understand why the marking would have any relevance.

[00:05:30] Speaker 04:
I mean, the product is the product.

[00:05:33] Speaker 04:
And would a technology expert come in and say, well, it's missing these four things, but there might be infringement because they put a marking on it and said it was covered.

[00:05:43] Speaker 04:
I wouldn't even, I would not even permit that to be put into evidence, I don't think.

[00:05:49] Speaker 02:
If I may, could I get into the infringement analysis and maybe that'll clarify this issue?

[00:05:56] Speaker 04:
All I care about is,

[00:06:00] Speaker 04:
why would it matter what is on the label?

[00:06:03] Speaker 04:
It bothers me about who I think put it on the label.

[00:06:07] Speaker 04:
But saying that aside, why would it matter if we agree with the court that the elements are missing?

[00:06:15] Speaker 04:
What difference does the label make?

[00:06:17] Speaker 02:
Well, I think two things.

[00:06:18] Speaker 02:
It's a material issue because the infringement case is material.

[00:06:23] Speaker 02:
This is, let's call it a close case.

[00:06:27] Speaker 02:
we believe that there are errors running throughout the infringement analysis.

[00:06:31] Speaker 02:
So I believe that Chief Judge's hypothetical was where there's just a missing element.

[00:06:38] Speaker 02:
But we don't have that here.

[00:06:40] Speaker 02:
We have a wrench that these parties worked together to manufacture and sell, and the defendant marked it with the patent number.

[00:06:49] Speaker 02:
And the defendant is now saying that they don't infringe on that same wrench.

[00:06:55] Speaker 02:
So if I could get into the infringement analysis, in a little background, when we filed this case in the Southern District of California, the case was assigned to Chief Judge Sabra, who conducted claim construction proceedings.

[00:07:13] Speaker 02:
And specifically on the term shaft, rejected defendants' proposed construction of shaft, meaning narrowly a bar or a rod.

[00:07:25] Speaker 02:
Instead, the chief judge adopted Mr. Abert's construction, which was ordinary meaning.

[00:07:33] Speaker 02:
Now fast forward to the summer judgment proceeding, defendant re-litigated this very same issue and argued that shaft means bar or rod.

[00:07:44] Speaker 02:
And defendant prevailed on this very issue.

[00:07:48] Speaker 02:
And the district court, now Judge Oda presiding,

[00:07:55] Speaker 02:
held that shaft means bar or rod.

[00:07:59] Speaker 04:
And didn't Abare agree with that as deposition?

[00:08:06] Speaker 02:
He did not clearly agree.

[00:08:10] Speaker 02:
But under the Markman decision of this court.

[00:08:14] Speaker 04:
The fact that the court says plain army mean doesn't exclude it from including that a shaft is a bar or pole, right?

[00:08:23] Speaker 02:
Your Honor, but that's not what the court held.

[00:08:25] Speaker 02:
It held that it has to be a bar or a rod.

[00:08:29] Speaker 02:
And it's not ordinary meaning.

[00:08:31] Speaker 02:
And defendants' definition, dictionary definition, in the record would be broad enough.

[00:08:38] Speaker 02:
One of their definitions is a passageway or duct.

[00:08:45] Speaker 02:
And that's exactly what Aber is arguing.

[00:08:48] Speaker 02:
is that the shaft is, for example, with the recessed wrench, it's the smooth hollow center in the actuator wheel.

[00:08:57] Speaker 02:
And so what we have here on this issue is Abare won at claim construction, developed his evidence, submitted an expert report, and put in his expert report on this construction, hollow center actuator wheel.

[00:09:16] Speaker 02:
And Judge Oda then rejected this evidence and instead applied the claim constructionarily to hold that it has to be a bar or a rod.

[00:09:27] Speaker 02:
We believe that's error, and this court should reverse.

[00:09:30] Speaker 04:
Why couldn't she find that that was what the plain and ordinary meaning was?

[00:09:37] Speaker 02:
but that that's not what she held your honor she held it's a bar or a ride she went back to what defendants position why couldn't she consistently with the construction of plane in our meeting with the plane or me would require to be what what prevents her from doing i don't think anything would prevent her from saying that uh... taking up this case

[00:10:02] Speaker 02:
to this judge, plain and ordinary meeting, is bar or rod.

[00:10:07] Speaker 02:
That's not what was done here, though.

[00:10:08] Speaker 02:
That's not what we're appealing.

[00:10:10] Speaker 02:
We're appealing a re-litigation of the claim construction order to mean that a shaft has to be a bar or a rod.

[00:10:22] Speaker 02:
And that is not how ABER understood the term

[00:10:27] Speaker 02:
post-claim construction when he developed his evidence and submitted to the court on summary judgment.

[00:10:36] Speaker 02:
Moving on to another non-infringement issue, there's a limitation in the claims threaded interior wall.

[00:10:48] Speaker 02:
At the claim construction hearing in the order, the court held that threaded

[00:10:57] Speaker 02:
has a helical component.

[00:11:00] Speaker 02:
And Mr. Aber in his expert report submits at 310, 328, and 331 of the Joint Appendix photographic evidence to show that we have this threaded interior wall, we have helical

[00:11:23] Speaker 02:
That was submitted at summary judgment by plaintiff Aber, and it was rejected by the district court.

[00:11:32] Speaker 02:
Instead, the district court adopted allied's position, which was not an expert report, but rather it was attorney argument that those threads were parallel.

[00:11:46] Speaker 02:
rather than heal.

[00:11:47] Speaker 04:
While you have time, if you could quickly address the issue of your disagreement with what the court said with respect to the recessed wrench.

[00:11:59] Speaker 02:
Could you repeat the last word?

[00:12:00] Speaker 04:
The recessed wrench.

[00:12:02] Speaker 04:
I see you disagree with the court's determination of non-infringement with respect to that.

[00:12:10] Speaker 04:
With respect to whether there's a threaded collar or not.

[00:12:13] Speaker 02:
OK, OK.

[00:12:16] Speaker 02:
uh... she's going to show she found there's no credit card if you want to address that all right okay and and i'm and so that the last infringement issue i have and i believe this would answer your honor's question is threaded interior wall the claim one for example if you read it it has two limitations moveably coupled

[00:12:42] Speaker 02:
The wrench is movably coupled and it's mechanically connected.

[00:12:46] Speaker 02:
This is a unitary wrench that's claimed.

[00:12:52] Speaker 02:
When the claim is read as a whole, and our evidence, plaintiff's evidence, points to this, that at 328 and 331 of the appendix,

[00:13:04] Speaker 02:
The threaded wall that we're pointing to is interior when you have this mechanical connection that's movably coupled.

[00:13:15] Speaker 02:
Defendant prevailed below by isolating the decoupled wrench.

[00:13:20] Speaker 02:
It has three main pieces.

[00:13:23] Speaker 02:
And defendant prevailed on the argument that it was an exterior wall, not interior.

[00:13:29] Speaker 02:
But this avoids, ignores the claim language, mechanically connected, movably coupled.

[00:13:36] Speaker 02:
I'd like to save the remainder of time for a bottle unless the court has more questions.

[00:13:41] Speaker 00:
Just one thing.

[00:13:42] Speaker 00:
Where is the movably coupled language in claim one?

[00:13:45] Speaker 00:
I see mechanics are connected.

[00:13:46] Speaker 00:
Where's movably coupled?

[00:13:48] Speaker 02:
Am I missing it?

[00:13:50] Speaker 02:
Yeah.

[00:13:51] Speaker 02:
It starts at the limitation, an adjustable jaw movably coupled to said shank.

[00:14:03] Speaker 01:
So below a fixed jaw, an adjustable jaw.

[00:14:07] Speaker 04:
Oh, here.

[00:14:10] Speaker 03:
I'm happy to go with whatever issue the court would like to direct me to.

[00:14:25] Speaker 03:
But in the absence of such direction, I'd like to start with the adjustment mechanism.

[00:14:29] Speaker 03:
That term was given a 112-6 construction by the court.

[00:14:34] Speaker 03:
That means there are special rules that apply to understanding the claim.

[00:14:37] Speaker 03:
And one of the terms that was in the construction was shaft.

[00:14:41] Speaker 03:
So the argument here today was a gloss on the construction provided by the court.

[00:14:47] Speaker 03:
The plain and ordinary meaning of the term shaft has to be assessed in the context of the patent.

[00:14:52] Speaker 03:
And that's particularly true with a 112.6 term.

[00:14:56] Speaker 03:
And that's exactly what the district court did when granting summary judgment.

[00:15:00] Speaker 03:
The court looked at the patent, looked at the claim term, and decided that the construction which required the shaft to extend from the actuator wheel could not be met by a hole.

[00:15:12] Speaker 03:
It is a very straightforward determination.

[00:15:15] Speaker 03:
And the construction, the 112-6 construction, is not challenged on this appeal.

[00:15:21] Speaker 03:
We think that that is the end of the story here, because what they point to in their briefing is still a hole.

[00:15:29] Speaker 03:
We don't think in the context of this pattern, a shaft means anything like an elevator shaft or a mining shaft.

[00:15:39] Speaker 05:
your opponents spend so much time on?

[00:15:41] Speaker 03:
The Frollo question, absolutely.

[00:15:44] Speaker 03:
So Frollo is very clear that there is no per se rule that marking creates infringement.

[00:15:51] Speaker 03:
That's the first part of Frollo.

[00:15:54] Speaker 03:
The second part of Frollo goes on and says, there are instances in which marking might create a material issue that would preclude summary judgment.

[00:16:02] Speaker 03:
And in Frollo, I think the facts are very, very different.

[00:16:05] Speaker 03:
I think there was a big corporation.

[00:16:06] Speaker 03:
We're a small corporation.

[00:16:08] Speaker 03:
that marked over the course of many years and so there was at least an issue of fact from which you could infer that there might be some some issue for the jury to determine.

[00:16:21] Speaker 00:
Well, in fact, in the Prolo case, isn't it correct that Wilson Sporting Goods actually had a license and had been paying royalties on the marked product for many, many, many years?

[00:16:30] Speaker 00:
For many, many years.

[00:16:31] Speaker 00:
And they stopped paying royalties and the question was if they continued marking the same product

[00:16:38] Speaker 03:
That's exactly right, Your Honor, and you are very well acquainted with the facts of Frollo.

[00:16:44] Speaker 03:
And nothing like that is here.

[00:16:46] Speaker 03:
And in fact, we went through a few of the relevant facts that I think are in general undisputed.

[00:16:51] Speaker 03:
It's just the conclusions that you wish to draw from those facts.

[00:16:54] Speaker 03:
But the marking came from the appellate.

[00:16:59] Speaker 03:
the drawings were sent by the appellant he sent them to a correct that's undisputed not not that company the i mean company in the sense that correct that but he was this he was the true sponsor doesn't that's exactly right and that's what the judge determined uh... in in her decision and then those were forwarded out you can see that this is forward from the email

[00:17:20] Speaker 03:
of the drawings.

[00:17:22] Speaker 04:
So the company was relying on A-Bear?

[00:17:24] Speaker 04:
That's exactly right.

[00:17:25] Speaker 04:
I don't know if it's A-Bear or Hebert.

[00:17:27] Speaker 03:
I will go with A-Bear.

[00:17:28] Speaker 03:
I think that is correct.

[00:17:34] Speaker 03:
The bottom line is that throughout this whole process, which was not the extended process of Frollo with a long history between the parties, the reliance was on A-Bear to correctly mark.

[00:17:47] Speaker 00:
But why did your client mark?

[00:17:49] Speaker 03:
Well, it has to do with the actual relationship.

[00:17:53] Speaker 03:
So it started off as a distributor relationship where he produced the wrenches, and so he had control of the market.

[00:17:59] Speaker 03:
And then once he was brought on, once the quality of the wrenches was determined to be insufficient, and my client

[00:18:08] Speaker 03:
found a new manufacturer for those wrenches, he continued the process of marking the wrench.

[00:18:14] Speaker 03:
He was the one who supplied the drawings.

[00:18:16] Speaker 03:
He was the one who communicated.

[00:18:18] Speaker 03:
And that's what the declarations that we have in the record here show.

[00:18:22] Speaker 03:
There was no real involvement of anyone.

[00:18:24] Speaker 00:
OK, so I have probably a dumb question.

[00:18:27] Speaker 00:
In fact, was it the case that the wrench design was changed during that time, or was it always mismarked?

[00:18:35] Speaker 00:
Is the product being sold?

[00:18:38] Speaker 00:
that's accused of infringement here with the marking the same relevant to the claim terms as the product that was previously sold.

[00:18:47] Speaker 03:
That's my understanding is that the product has never changed and I think the declaration that we have says that we didn't even realize that it was being marked with a patent number until the lawsuit was brought.

[00:18:58] Speaker 04:
That the company relied on A-Bear to believe that it was covered by the patent?

[00:19:03] Speaker 04:
Correct.

[00:19:03] Speaker 03:
That's exactly right.

[00:19:04] Speaker 03:
That's exactly right.

[00:19:06] Speaker 03:
I'll just address very very briefly the helical issue.

[00:19:10] Speaker 03:
The problem, just like with the adjustment mechanism,

[00:19:15] Speaker 03:
where there's a hole which can't extend from, the problem with the helical issue is that there is no collar, it's a solid shaft, and there's no helix.

[00:19:25] Speaker 03:
The thing that is pointed to as the allegedly infringing feature are grooves that don't run all the way around the exact piece.

[00:19:33] Speaker 03:
So we don't think that there's any way that you could ever possibly interpret that as a helix.

[00:19:37] Speaker 00:
Why does it have to have a helix?

[00:19:39] Speaker 00:
What about

[00:19:41] Speaker 03:
it's a threat of limitations you judge more so i understand credit interior wall but something could something be threaded heart of the interior wall but not the entire interior wall and still potentially need the limitation i think i haven't thought about the specific question but i think it's absolutely possible that you could have half of the path of the wall be threaded but that means half of the wall doesn't mean half the wall

[00:20:07] Speaker 03:
in a semi-circular sort of way, because that does not actually be, that's not a threader.

[00:20:12] Speaker 03:
That's then just ridges.

[00:20:15] Speaker 03:
And so that we think that's a clear distinction.

[00:20:18] Speaker 00:
So it doesn't have to be threaded, like such that a screw could be screwed into it.

[00:20:20] Speaker 03:
Correct, that's exactly the same.

[00:20:22] Speaker 00:
And so if it was not threaded all the way around, you have some problems with that screw.

[00:20:27] Speaker 03:
It is not my field, but that is my understanding, is that even I have that understanding, is that if you don't go all the way around, you don't have a threader.

[00:20:35] Speaker 03:
I had one final observation, and I'm happy to see the rest of my time, unless the court has questions.

[00:20:40] Speaker 03:
And that's that this case almost certainly could have been submitted on the briefing.

[00:20:44] Speaker 03:
It's very

[00:20:48] Speaker 03:
brevity in the briefing is admirable in some ways, but I think that there's an issue that, as briefed, there's no way to prevail on the case because of that 112.6 issue.

[00:20:59] Speaker 03:
It's everything in the brief admits that there's no way to meet the extending from limitation.

[00:21:06] Speaker 03:
So it was really

[00:21:09] Speaker 03:
At the outset of this we say in our briefing that this was a frivolous appeal and at the outset of the appeal We did flag that for the appellate.

[00:21:18] Speaker 03:
So with that unless there any questions.

[00:21:20] Speaker 02:
I'll see the rest of my Two quick points first of all on the shaft construction of

[00:21:34] Speaker 02:
It remains the same that the district court construed shaft to mean ordinary meaning.

[00:21:42] Speaker 04:
Let me move on to something that I care more about.

[00:21:45] Speaker 04:
Okay.

[00:21:45] Speaker 04:
With respect to the district court's determination, how is a solid cylinder a collar?

[00:22:02] Speaker 02:
I think if Your Honor looks at Claim 8 in particular, Claim 8 explicitly claims that type of a collar, Your Honor.

[00:22:18] Speaker 02:
And if Your Honor would go down to the... I'm asking for the recessed wrench.

[00:22:24] Speaker 02:
Okay, yes, and I think this would read on the recessed wrench, a smooth collar comprising a tubular member.

[00:22:34] Speaker 02:
And this would be the, in the recessed wrench, this would be the adjustable jaw that is movably coupled to the primary piece, which is the fixed jaw.

[00:22:54] Speaker 02:
And so at Appendix 328, you would see these tubular threaded collars, which are movably coupled and connect with the primary piece.

[00:23:19] Speaker 02:
You can see this at Appendix 330.

[00:23:23] Speaker 02:
the movable coupling of this tubular member.

[00:23:28] Speaker 02:
And then just finally, on the Frollo case, Chief Judge Moore referenced that royalties had been paid by Wilson in that case.

[00:23:42] Speaker 02:
Here, too, Allied was paying royalties to Aber.

[00:23:47] Speaker 02:
And that's at paragraph 38 of his expert report.

[00:23:52] Speaker 04:
I didn't hear you say anything in response to council's contention that we can stop just with respect to the means plus function analysis in this case.

[00:24:04] Speaker 04:
If you want to say anything in response to that.

[00:24:07] Speaker 02:
Thank you, your honor.

[00:24:08] Speaker 02:
The claim construction order doesn't contain the argument made.

[00:24:16] Speaker 02:
There's simply no time of that 112 paragraph 6

[00:24:22] Speaker 02:
construction to shaft.

[00:24:25] Speaker 02:
So this is post hoc argument by council.

[00:24:31] Speaker 02:
The record is that we had the claim construction order.

[00:24:35] Speaker 02:
Mr. Aber prepared his evidence according to it.

[00:24:39] Speaker 02:
And then things changed when allied relitigated its summary judgment.

[00:24:45] Speaker 00:
So just so I understand for clarity, are you saying it's not a 112-6 limitation?

[00:24:49] Speaker 02:
well that's where i took what you just said uh... no no we're talking about two different uh... terms so that the court held that the adjustment mechanism with section one twelve paragraph six and it provided uh... a a construction relative to that and that that goes to the summary judgment grant here that is all true

[00:25:16] Speaker 02:
But a separate issue is how do we construe shaft?

[00:25:22] Speaker 02:
Can shaft mean an absence, a passageway, a duct?

[00:25:29] Speaker 02:
Heber prepared his evidence meaning that, yes, that broadly fits the ordinary meaning of shaft.

[00:25:37] Speaker 02:
And so in his expert report,

[00:25:39] Speaker 04:
He points to the hollow center of the actual... Other than just a conclusory statement that he thought that, what did he base that on?

[00:25:48] Speaker 02:
In the claim construction order, your honor.

[00:25:50] Speaker 04:
No, I'm saying, he was acting as an expert, is my understanding.

[00:25:55] Speaker 04:
And when he made that conclusory statement that you just said to us, what did he say to support that opinion?

[00:26:05] Speaker 02:
Being the inventor?

[00:26:07] Speaker 02:
uh... manufacturing these wrenches those two things here