[00:00:00] Speaker 01:
The final case for argument this morning is 23-1194 MEPSO Limited versus Ambrex Technology.

[00:00:57] Speaker 00:
Morning, Your Honors.

[00:00:58] Speaker 00:
May it please the court?

[00:00:59] Speaker 00:
Hillary Preston for the Appellant Maxell Limited.

[00:01:02] Speaker 00:
We're asking the court to reverse the district court's holdings that the 035 patent is invalid as indefinite.

[00:01:10] Speaker 00:
The 035 patent relates to cathode technology within lithium ion batteries.

[00:01:15] Speaker 00:
And the claim term that the court found to be indefinite relates to two components of the chemical compositions that go into that cathode technology.

[00:01:25] Speaker 00:
There's a first component of the claim that specifies what metals can be used within that M1 term.

[00:01:32] Speaker 04:
I'm sorry.

[00:01:33] Speaker 04:
I think it's right to say what metals cannot be used.

[00:01:38] Speaker 04:
This is not insignificant to what I think is an incredibly simple argument on your point.

[00:01:43] Speaker 04:
Yes.

[00:01:44] Speaker 04:
The first clause says, stay out of three circles.

[00:01:48] Speaker 04:
More to come.

[00:01:48] Speaker 04:
And then later, it says, actually, you can

[00:01:54] Speaker 04:
participate in parts of two of those circles, you just can't stay in the cobalt circle with certain percentages.

[00:02:01] Speaker 04:
Those are not inconsistent.

[00:02:04] Speaker 00:
So I agree with your point, Your Honor, and I think

[00:02:08] Speaker 00:
The first component of the claim is a Marquish group that says you must select from cobalt, nickel, or manganese.

[00:02:15] Speaker 00:
The second portion of the term says there must be at least 30%.

[00:02:18] Speaker 04:
I think part of the reason that the district court got to where the district court got was this, to my mind, quite unfortunate language of options.

[00:02:36] Speaker 04:
declaring territory that somebody must stay out of.

[00:02:41] Speaker 04:
So the first clause has a Venn diagram of what nickel, cobalt, and manganese.

[00:02:46] Speaker 04:
You stay out of all three circles.

[00:02:48] Speaker 04:
And then later it says, no, actually just, you got to stay out of the circle that includes cobalt with certain percentages.

[00:02:56] Speaker 04:
So it just freed up.

[00:02:58] Speaker 04:
something that had previously been excluded.

[00:03:01] Speaker 04:
This option business, I think, conveyed the idea that the first part granted somebody an option and then there was a take back.

[00:03:10] Speaker 04:
That's not what

[00:03:11] Speaker 00:
claim language does.

[00:03:12] Speaker 00:
I absolutely agree, Your Honor.

[00:03:14] Speaker 00:
Absolutely agree.

[00:03:15] Speaker 00:
And I think it's the foundation of what the district court got wrong, which is to view it in the way that Your Honor just described and to, first of all, view two different portions of the same claim in isolation, which this court has been very clear is an incorrect way to construe claims and certainly an incorrect way to evaluate them for purposes of indefiniteness.

[00:03:38] Speaker 00:
We have that in the tiniest case from this court.

[00:03:41] Speaker 00:
It's error to read the disputed claim term in isolation, rather than in the context of the surrounding claim language.

[00:03:48] Speaker 00:
Repeatedly, what the district court did in its analysis of this indefiniteness issue is say, let's analyze what that first marcoosh group means, and then finds a contradiction by separately analyzing the second portion of the claim term.

[00:04:03] Speaker 00:
But as Your Honor points out, there is not a contradiction.

[00:04:07] Speaker 00:
There is simply the job is to evaluate two questions to see if you're inside or outside of the claim language.

[00:04:14] Speaker 00:
First question is, is the metal that's involved in M1 one of these three things?

[00:04:19] Speaker 00:
To your point, that zone of exclusion, the first zone of exclusion is, is it one of those three metals?

[00:04:24] Speaker 00:
Easily you can answer that question, yes or no.

[00:04:28] Speaker 00:
The second question is, does it have the requisite percentage of cobalt within M1?

[00:04:35] Speaker 00:
Interestingly, both sides experts were able to go through an analysis and answer those questions, fundamentally satisfying the question about what patent claims are supposed to do.

[00:04:47] Speaker 00:
Can you define the terms of whether you're inside or outside?

[00:04:52] Speaker 00:
Both experts for our client, Maxell, and for ATL were able to at least answer those questions.

[00:05:00] Speaker 00:
Now, ATL's expert did go on to say there's an irreconcilable difference.

[00:05:05] Speaker 00:
But frankly, that should be set aside because what it really shows is they could answer the question of whether you're inside or outside of the claim language.

[00:05:13] Speaker 00:
ATL itself also, in a PTAB proceeding, stated, and this is in our briefing, that a posita would understand the claim terms in the 035.

[00:05:27] Speaker 00:
That is fundamentally the question that we are supposed to be answering.

[00:05:31] Speaker 01:
But just as an aside, as a housekeeping matter, you've got an IPR and these claims, at least by the board, have been invalidated, have been found to be obvious?

[00:05:40] Speaker 00:
That is correct.

[00:05:41] Speaker 00:
Yes, there is a separate.

[00:05:42] Speaker 01:
And what is the status of that?

[00:05:44] Speaker 01:
Is that on appeal here?

[00:05:46] Speaker 00:
It is on appeal.

[00:05:46] Speaker 00:
Well, right in the middle of briefing.

[00:05:48] Speaker 00:
I think your reply brief is due next week, right?

[00:05:51] Speaker 00:
I think you're right.

[00:05:52] Speaker 00:
Yes.

[00:05:52] Speaker 01:
And the district court has stayed the proceeding based on that or based on this appeal?

[00:05:58] Speaker 00:
That's correct.

[00:05:59] Speaker 00:
When the final written decisions came out in the 035 PTAB review, as well as other challenges,

[00:06:08] Speaker 00:
the district court stayed the underlying litigation.

[00:06:11] Speaker 00:
We were about a month out from trial, and the district court stayed that litigation.

[00:06:14] Speaker 01:
And the IPR involves the other patents that are also in dispute, other than the 035, that are also in dispute.

[00:06:21] Speaker 01:
That is correct.

[00:06:23] Speaker 00:
Just to be clear, the 035 had been severed from the case earlier.

[00:06:28] Speaker 00:
So during the claim construction process, which is when the district court found the 035 claims to be indefinite,

[00:06:37] Speaker 00:
we asked the court to sever the 035 from the case so that it could be appealed.

[00:06:42] Speaker 00:
So that's how we got to, Your Honors, was that it was severed and separately entered judgment on that.

[00:06:50] Speaker 00:
So Your Honors, we've talked about the first category of error that we think the district court conducted, which is this error of analyzing the two portions of the claim in isolation rather in context.

[00:07:05] Speaker 00:
The second error or category of errors perhaps that the district court made was to completely refuse to analyze the specification or the prosecution history.

[00:07:18] Speaker 00:
The district court acknowledges in its decision that we pointed the court to the prosecution history and specification, but in its decision does not analyze it, does not discuss it, doesn't weigh anything about the specification or the prosecution, which we believe to be wrong as a matter of law and under the Supreme Court's directive in Nautilus, simply ignores it.

[00:07:41] Speaker 04:
I guess I'm sitting here thinking,

[00:07:44] Speaker 04:
Um, if I conclude that there quite plainly is no contradiction, the sole basis for the district court decision is wrong and it should be reversed.

[00:07:53] Speaker 04:
And I don't even need to look at the specification of the prosecution history.

[00:07:57] Speaker 04:
Would that be wrong?

[00:07:58] Speaker 04:
Well, um, I think your honor, there are, uh, indefiniteness.

[00:08:03] Speaker 04:
I mean, maybe there's a written description issue or something, but

[00:08:08] Speaker 00:
I share your view that once you realize there is not a contradiction, there's really nothing further that needs to be analyzed.

[00:08:16] Speaker 00:
There are, of course, decisions from this court that talk about an indefiniteness analysis with claim language alone being improper.

[00:08:25] Speaker 00:
So I think it would be appropriate to both analyze the claim language and also look to the specification in the prosecution history, all of which supports that there's no contradiction and therefore no indefiniteness.

[00:08:35] Speaker 01:
I would venture to say, just a guess, that analysis that you applied and that legal principle applies where we're going to find the claims.

[00:08:44] Speaker 01:
In order to find the claims indefinite, you also have to search the spec to see if there's something there, but not in the reverse circumstance that we have here.

[00:08:53] Speaker 00:
I agree with that, Your Honor.

[00:08:54] Speaker 00:
Yes, I agree with that.

[00:08:55] Speaker 00:
I think when the court is going to take a path to find an entire patent invalid as indefinite, it is inappropriate to stop at the claims.

[00:09:06] Speaker 00:
That is where one needs to make sure that they've evaluated

[00:09:10] Speaker 00:
the full teaching of the specification and the prosecution history.

[00:09:14] Speaker 01:
But as Judge Toronto just said, if you say that there's no indefinite issue in the claim language, I guess I'm wondering whether or why our cases would say you still got to look at the SPAC.

[00:09:30] Speaker 00:
Perhaps it would be unnecessary.

[00:09:34] Speaker 00:
Your Honor, because the district court did

[00:09:38] Speaker 00:
failed to analyze the spec and the prosecution history.

[00:09:42] Speaker 00:
And ATL, in its briefing, actually reinforces that point and tells you that it's unnecessary to look beyond the claims itself.

[00:09:52] Speaker 00:
We believe that is incorrect as a matter of law.

[00:09:56] Speaker 00:
When we do look at the specification, what we see is that there is a consistent

[00:10:03] Speaker 00:
teaching towards having cobalt be part of M1, and therefore no contradiction.

[00:10:10] Speaker 00:
In many examples, all 13 examples that are in the specification, the applicant discusses having at least 30 percent cobalt in M1.

[00:10:24] Speaker 00:
The specification also talks about preferably having at least 30% by mole and then increasing to higher percentages by a mole of cobalt in M1.

[00:10:35] Speaker 00:
Now, ATL argues that all of that discussion in the specification and our reliance on it is an improper effort to bring in limiting embodiments into the claims.

[00:10:48] Speaker 00:
Frankly, that entire line of cases is just irrelevant.

[00:10:52] Speaker 00:
This is not a situation where we're trying to bring into the claims limiting embodiments from the specification.

[00:11:00] Speaker 00:
That's just the wrong line of cases to be considered here.

[00:11:05] Speaker 00:
Because what you're supposed to be doing under Nautilus and this court's teaching is to look to the specification to see if it conveys reasonable certainty about whether the claims are definite.

[00:11:17] Speaker 00:
In their briefing on this point, they do not cite any indefiniteness cases.

[00:11:23] Speaker 00:
They cite only Phillips, the Golight case, SRI for general principles about how to conduct claim construction.

[00:11:32] Speaker 00:
The other case that they rely on in discussing specification is the Allen Engineering case, which they point to as saying when there is a contradiction, that is a basis for finding indefiniteness.

[00:11:44] Speaker 00:
I'll point out for the court, as the court is probably familiar, the Allen Engineering case involves an actual conflict between the specification and the claims.

[00:11:53] Speaker 00:
We don't have that here.

[00:11:55] Speaker 00:
Specification is consistent with the claims in requiring cobalt in M1.

[00:12:03] Speaker 00:
I'd like to reserve the remainder of my time.

[00:12:06] Speaker ?:
Thank you.

[00:12:14] Speaker 02:
May it please the court?

[00:12:16] Speaker 02:
I'm David Block.

[00:12:16] Speaker 02:
I'm here from Greenberg Trowering.

[00:12:18] Speaker 02:
We represent ATL.

[00:12:22] Speaker 02:
This court has held many a time that we must construe claims with an eye toward giving effect to all of their terms, even if it renders the claims inoperable or invalid.

[00:12:33] Speaker 02:
That's a quote from hemonics, but it's been said many a time.

[00:12:38] Speaker 02:
The problem here is that at least one has to mean something.

[00:12:44] Speaker 02:
And the phrase at least one appears right there in the definition of M1.

[00:12:49] Speaker 02:
And if M1 can be quote, at least one of cobalt, nickel, or manganese.

[00:12:57] Speaker 02:
And the claim says, and read on.

[00:13:00] Speaker 02:
And read on.

[00:13:01] Speaker 02:
And then the claim says, but actually it has to have cobalt after all.

[00:13:05] Speaker 04:
Why is that a contradiction?

[00:13:06] Speaker 04:
It's just, we're going to tell you in two steps.

[00:13:09] Speaker 04:
The excluded territory is this big.

[00:13:12] Speaker 04:
And actually, we're going to now shrink it.

[00:13:14] Speaker 04:
It's only this big contained entirely within the first excluded territory.

[00:13:20] Speaker 04:
That absolutely wouldn't even raise an eyebrow if the second part were in a dependent claim.

[00:13:29] Speaker 04:
And since we read dependent claims as including everything in the independent claim, we would never say that was a contradiction.

[00:13:36] Speaker 04:
Because it's not a contradiction.

[00:13:38] Speaker 02:
Your honor, I disagree.

[00:13:39] Speaker 02:
I think it is a contradiction to say that M1 can be all manganese, at least one.

[00:13:45] Speaker 02:
I'm sorry.

[00:13:45] Speaker 04:
It doesn't say can be.

[00:13:47] Speaker 04:
This is a definition of excluded territory.

[00:13:51] Speaker 04:
Anytime you are doing something with manganese or nickel or cobalt, you can't do that.

[00:13:58] Speaker 04:
Subject to what we're about to say next.

[00:14:02] Speaker 02:
That is actually that you can do that.

[00:14:04] Speaker 02:
No, you can't.

[00:14:05] Speaker 04:
This is the definition of what's claimed as exclusive territory.

[00:14:10] Speaker 02:
Your honor, they're claiming as exclusive territory.

[00:14:12] Speaker 02:
That's what a claim does, right?

[00:14:14] Speaker 02:
Yes.

[00:14:15] Speaker 02:
That is what a claim does.

[00:14:16] Speaker 02:
But to claim a Marcoosh group, you can select from any of these, as the district court says, seven options.

[00:14:23] Speaker 04:
It doesn't say you can select.

[00:14:25] Speaker 04:
It says, if you select from any of those things, you're in trouble.

[00:14:30] Speaker 04:
You're on our territory.

[00:14:32] Speaker 04:
And now later it says, we're going to say, well, we're going to refine that so that you have less territory to stay away from.

[00:14:43] Speaker 02:
And Your Honor, the problem with that is that's not the way they claim, even in the same claim.

[00:14:48] Speaker 02:
Take a look at how they define M2 in the exact same claim.

[00:14:52] Speaker 02:
M2 is to be magnesium and at least one of these other transition metal elements.

[00:14:58] Speaker 02:
Now that indicates

[00:15:00] Speaker 02:
that you have to have an M2 magnesium plus another element.

[00:15:04] Speaker 02:
To say that M1 must be, maybe, it represents, actually is the word they use in here, they don't use comprising or consisting generally of, they say represents, M1 represents at least one of cobalt, manganese, and nickel, right?

[00:15:24] Speaker 02:
And so to say it represents at least one of those, if the person of ordinary skill in the art is to walk in and look at this claim as a whole, he says on the one hand, again, he's three years out of school, he's 25 years old, we know that, that's their definition of person of skill in the art, he says on the one hand, it says that M1 represents at least one of all nickel, all manganese.

[00:15:49] Speaker 03:
I think we get your point, but could you answer a question that was

[00:15:55] Speaker 03:
inside of one of Judge Toronto's points, which is what if the second limitation here about cobalt being 30% to 100% by mole of M1, what if that limitation was not in independent claim one, but let's say it was in dependent claim two?

[00:16:14] Speaker 02:
Okay.

[00:16:17] Speaker 03:
Would that create some kind of

[00:16:23] Speaker 03:
terrible conflict that render claim dependent claim to indefinite so to make sure i understand your hypothetical claim one says and to represents and one and one right it's the same limit the first and one limitation is exactly the same okay but the second and one limitation cobalt being thirty percent one hundred percent is out of claim one it's not there because now it's independent claim to

[00:16:52] Speaker 03:
Would dependent claim two be indefinite in your view?

[00:16:59] Speaker 02:
No.

[00:17:00] Speaker 02:
In that instance, claim two would be a subset of claim one.

[00:17:05] Speaker 02:
The problem is that they claim both the broad range and the narrow range in the same claim.

[00:17:10] Speaker 02:
And that's something even the MPEP, section 2170305C, frowns upon.

[00:17:16] Speaker 02:
It says use of a narrow numerical range

[00:17:18] Speaker 02:
within a broader range in the same claim may render the claim indefinite precisely for the reason we have here.

[00:17:24] Speaker 02:
It's not that you have claim 10 that says it's all cobalt, dependent claim 10.

[00:17:30] Speaker 02:
It's that you have the independent claim capturing both the broad scope, at least A, B, and C, and then at the same time saying that there's a narrower scope.

[00:17:42] Speaker 02:
And that creates an insoluble ambiguity.

[00:17:46] Speaker 04:
Can I just ask you a question?

[00:17:47] Speaker 04:
Did you cite the MPEP in your red brief?

[00:17:50] Speaker 02:
I did not, no.

[00:17:51] Speaker 02:
Oh.

[00:17:53] Speaker 02:
Yeah, I don't really think this is, you know, it's not a patent prosecution question.

[00:17:57] Speaker 02:
The MPEP is not binding authority on this court.

[00:18:01] Speaker 04:
But I did think it was... I guess I just keep getting fixated maybe on this point that this is inelegant, but it sure is not a contradiction.

[00:18:12] Speaker 04:
And the ineligence here, I gather, do I remember right, has a perfectly natural explanation, namely the second thing was added in prosecution.

[00:18:22] Speaker 02:
The second thing was added in prosecution, yes, seven years after the patent was applied for.

[00:18:28] Speaker 02:
And there's a whole sort of torturous sequence of events where

[00:18:32] Speaker 02:
it first they restrict to cobalt and then they say at least one of cobalt nickel and manganese and then they say oh and by the way it's 30 percent but they keep that at least one language in there throughout and we know that they can claim it properly right because they did it not only in their related patent the 019 patent they do it in the same claim when they claim M2 and so what is the person of ordinary skill in the art to think

[00:18:59] Speaker 02:
And that's really the problem here, because it is not the court's job, as you know, to rewrite the claims in order to preserve their validity.

[00:19:06] Speaker 02:
That's the Hillerong case, right?

[00:19:08] Speaker 02:
Where the meaning of a claim term is clear, as it is here, we do not rewrite the claim to preserve its validity.

[00:19:15] Speaker 02:
And what's actually being asked here is that the court disregard the phrase, at least one, and substitute it with cobalt, comma, or cobalt and at least one of nickel and

[00:19:30] Speaker 02:
manganese, and then with the further limitation that the amount of cobalt must be 30% to 100%.

[00:19:37] Speaker 02:
It's the at least one that creates the problem here.

[00:19:42] Speaker 02:
The at least one is not just inelegant.

[00:19:45] Speaker 02:
It is contradictory because it is not the case that M1 can be at least one of manganese or nickel if it has to also have cobalt.

[00:19:59] Speaker 02:
Again,

[00:20:01] Speaker 02:
It's you you picture the thought experiment here where you do have your person of ordinary skill He's got a BS in chemistry.

[00:20:08] Speaker 02:
He's come out of school.

[00:20:09] Speaker 02:
He's 25 years old He looks at the patent and he's not sure whether and he is he is tasked by his boss She says I want to make exactly the lithium-ion battery in the 035 patent claim one But I want M1 to be entirely nickel Can I do it?

[00:20:28] Speaker 02:
looks at the patent says well on the one hand it says at least one of cobalt nickel or manganese so it can't be nickel all nickel on the other hand we've got this clause down here that says you know wherein the amount of cobalt is thirty percent to a hundred percent why does it have to have cobalt in it doesn't say that up here so what does he do he says it's contradictory i don't know goes to the specification now as uh... sir why doesn't this youngster say of course you can't do that

[00:20:58] Speaker 04:
That's your product is not read on by one of the claim limitations.

[00:21:05] Speaker 04:
Done.

[00:21:05] Speaker 02:
Again, I think it goes to the same point we've been making for the same reason the district.

[00:21:12] Speaker 04:
I think this is, to my mind, a single point case.

[00:21:17] Speaker 02:
We agree it's a single point case.

[00:21:18] Speaker 02:
We think the single point is that at least one has to bear some meaning.

[00:21:23] Speaker 02:
It has to be construed, indeed, as a person of ordinary skill in the art would constru it.

[00:21:27] Speaker 02:
And it's not a phrase

[00:21:29] Speaker 02:
that requires expert testimony.

[00:21:31] Speaker 02:
It's not a phrase that requires anything more than anyone else's.

[00:21:35] Speaker 02:
I mean, those are three of the most common words in the English language, right?

[00:21:39] Speaker 02:
In the Encora case, which I believe both Judge Chen and Judge Taranto were on, the court says, look, if the term at issue would have so clear and ordinary meaning that a skilled artisan would not be looking for clarification of the specification, then you can just look at the claim.

[00:21:55] Speaker 02:
And if the claim says two inconsistent things,

[00:21:58] Speaker 02:
at least one of these three metals and also has to have cobalt in it, excluding all nickel, excluding all manganese, excluding nickel manganese combinations, then there is a contradiction.

[00:22:13] Speaker 02:
Not an ambiguity, not something that one needs to then dig through the file history and the specification to resolve.

[00:22:19] Speaker 02:
Not a situation where the patentee has served as his or her own lexicographer, using at least one in a way that's idiosyncratic, in a way that's different than the way other people use at least one.

[00:22:31] Speaker 02:
At least one means what it says, says what it means.

[00:22:33] Speaker 02:
We can cite for it and here's who for it.

[00:22:36] Speaker 02:
And the reality is that that's the language that Maxwell uses in its other patents.

[00:22:42] Speaker 02:
and it's the language Maxell uses in this patent when it comes to M2.

[00:22:47] Speaker 02:
I think we pointed the court to the 019 patent, whether it's related is kind of an interesting academic question, because the spec is the same, the title is the same, one of the inventors is the same, but because they're a different inventive entity, they are not technically related, they don't claim back to the same initial

[00:23:08] Speaker 02:
initial filing but clearly there is some genetic relationship between the two since the specification is identical, since the name is identical, since they're suing the same products, since it covers essentially the same flavor of lithium ion battery.

[00:23:23] Speaker 02:
But if you look at the 019 patent, there, defining M2, they say magnesium, or magnesium, and at least one of the following other elements.

[00:23:35] Speaker 02:
That's how you would claim this.

[00:23:37] Speaker 02:
if you were trying to claim a Marcouche group in which cobalt was required.

[00:23:46] Speaker 02:
The problem here is you have a Marcouche group, and Marcouche is quite clear.

[00:23:49] Speaker 02:
The court talks about that in a number of different cases, what the Marcouche concept means.

[00:23:55] Speaker 02:
I think that's in multi-layer, which I believe is one of your cases, Judge Toronto.

[00:23:59] Speaker 02:
A Marcouche group is a group that you are supposed to select from.

[00:24:05] Speaker 02:
It gives you all of the options.

[00:24:07] Speaker 02:
It gives you a range of different options that you can take from.

[00:24:10] Speaker 02:
And if you're going to have a dependent claim, like Judge Chen suggests, that limits that marcoosh group in some way, shape, or form, that's fine.

[00:24:19] Speaker 02:
But you can't do it all in the same claim, because if you do it in the same claim, you're contradicting yourself.

[00:24:24] Speaker 02:
And again, it is, as you say, a one-issue case.

[00:24:28] Speaker 02:
And the reason it's a one-issue case is because 112 requires you to particularly point out and distinctly claim your invention precisely to the point you're making, Judge Toronto, so that competitors know how to avoid infringement.

[00:24:42] Speaker 02:
And if they cannot avoid infringement, it defeats the public notice function of the patent claims.

[00:24:46] Speaker 02:
To say at least one of these three, when in fact the patentee is not seeking that scope of protection,

[00:24:55] Speaker 02:
It fails to apprise the public of what is still open to it.

[00:24:58] Speaker 02:
That's in the Cox case, which I believe Judge Prost, you were on.

[00:25:03] Speaker 02:
Like any other property, the scope and boundaries need to be clear.

[00:25:06] Speaker 02:
That's right there in Nautilus.

[00:25:08] Speaker 02:
And there is a heavy presumption in favor of the plain and ordinary meaning of the phrase, at least one.

[00:25:15] Speaker 02:
Like I said, three of the most conventional words in the English language.

[00:25:18] Speaker 02:
And the district court really did make an implied finding there, that at least one has its plain and ordinary meaning.

[00:25:26] Speaker 02:
And we know that the court can do that to sort of imply factual findings in the BASF case and others.

[00:25:32] Speaker 02:
And really, there is no expression in the file history, in the specification, that the plaintiff intended at least one to mean anything more than what it actually means in plain English.

[00:25:45] Speaker 02:
And remember, it's not the court's job to uphold

[00:25:50] Speaker 02:
a patent's validity, either to make it operable or to sustain its validity.

[00:25:55] Speaker 02:
If you take a look at the Chef America case, you'll recall that was a case in which, oh, the claim was to heating bread.

[00:26:03] Speaker 04:
We don't cite that one very much, do we?

[00:26:05] Speaker 02:
I kind of like it, though.

[00:26:06] Speaker 04:
Yeah, I know.

[00:26:08] Speaker 02:
It's kind of a fun one.

[00:26:09] Speaker 02:
It's an easy story.

[00:26:10] Speaker 02:
The claim says, quite literally, that the bread is supposed to be heated to 800 Fahrenheit.

[00:26:16] Speaker 02:
You heat the bread to 800 Fahrenheit, you turn it into a charcoal briquette.

[00:26:20] Speaker 02:
Everyone understood that what was actually intended was that you heat the oven to that temperature.

[00:26:25] Speaker 02:
But it doesn't matter.

[00:26:27] Speaker 02:
And what the court said in that case is that even if, and that was another case where experts came up and said, well, anyone would understand that.

[00:26:35] Speaker 02:
A person of ordinary skill would understand what was intended was to heat the oven, not the bread.

[00:26:43] Speaker 02:
Just like Dr. Look says here, I had to fight him for a while, but he admitted at least one means at least one.

[00:26:50] Speaker 02:
Everyone knows what that phrase means.

[00:26:52] Speaker 02:
He says, well, nevertheless, I'd still be able to understand what the inventor intended.

[00:26:56] Speaker 02:
That's not the test.

[00:26:59] Speaker 02:
It cannot be the case that you can use a phrase like at least one and then say, never mind, that's not actually what I meant.

[00:27:05] Speaker 02:
And that is the proposal here.

[00:27:07] Speaker 02:
What you're hearing

[00:27:09] Speaker 02:
From the other side, respectfully, is that the court should rewrite the phrase at least one to mean cobalt, comma, or cobalt and at least one of, dot, dot, dot, wherein the volume of cobalt is x. Until you say that cobalt is required, the person of ordinary skill in the art doesn't know it, and that's the problem.

[00:27:27] Speaker 02:
Thank you.

[00:27:28] Speaker 01:
Thank you.

[00:27:35] Speaker 01:
We've got a few minutes left if you need them.

[00:27:39] Speaker 00:
Thank you, Your Honor.

[00:27:40] Speaker 00:
Just a few points that I want to respond to from what my colleague mentioned.

[00:27:47] Speaker 00:
Both in the red brief and listening to my colleague, you would imagine that this was an appeal about what the phrase, at least one, means.

[00:27:56] Speaker 00:
It is not.

[00:27:57] Speaker 00:
It is an appeal about a finding that this patent is invalid for indefiniteness.

[00:28:02] Speaker 00:
ATL doesn't even acknowledge that it is their burden to prove that indefiniteness with clear and convincing evidence.

[00:28:08] Speaker 00:
It's just an interesting reframing of the issue.

[00:28:12] Speaker 00:
I think there's not a construction issue around at least one what it means.

[00:28:16] Speaker 00:
The fundamental issue is the same thing that we started with, which is when you read the entire claim together, does a posita understand what it means?

[00:28:25] Speaker 00:
And the answer to that question is yes.

[00:28:28] Speaker 00:
And interestingly, this hypothetical that was discussed about a young engineer not being able to

[00:28:35] Speaker 00:
understand what the two portions of the M1 claim mean is in conflict with what ATL's expert was able to do and what ATL said was the understanding of a posita, that a posita would understand what the claim terms mean and that the claim term would have its plain and ordinary meaning.

[00:28:56] Speaker 00:
Both of those points are in the record.

[00:28:59] Speaker 00:
With respect to my colleague's acknowledgement

[00:29:02] Speaker 00:
that if this limitation on the molar percentage was in a dependent claim, there would not be an indefiniteness issue.

[00:29:10] Speaker 00:
I think that's critical, because there is no doubt that, of course, a dependent claim has all the limitations of the independent claim.

[00:29:21] Speaker 00:
And there should not be a different result for indefiniteness if this limitation comes in a dependent claim or an independent claim.

[00:29:28] Speaker 00:
We've cited this point in our blue brief on page 42, where we talk about claim 10 in the 035, which actually does have a limitation of 100% coalt.

[00:29:41] Speaker 00:
They don't have a challenge with that.

[00:29:44] Speaker 00:
And they've acknowledged that's fine.

[00:29:45] Speaker 00:
But somehow, when the limitation is in the independent claim, they are unable to understand it.

[00:29:51] Speaker 00:
With respect to the question of how the Marcouche group should be construed as options or as things to select from, as the court well knows, the objective of a Marcouche group is that it is a closed group.

[00:30:09] Speaker 00:
The point is it is a list of exclusionary things, meaning there cannot be any other metals in that group.

[00:30:16] Speaker 00:
It does not imply that any of those things must be in M1.

[00:30:20] Speaker 00:
The point is that there cannot be other metals in there.

[00:30:23] Speaker 00:
So again, when we're looking at a Posita evaluating whether or not both of these limitations have been met, first question, is it one of the metals?

[00:30:33] Speaker 00:
Second question, is it the right amount of cobalt?

[00:30:36] Speaker 00:
That's it.

[00:30:39] Speaker 00:
With respect to the comments that were made about the 019 patent, I think we heard a little bit of different approach just now about whether the 019 has some, I think I wrote it down correctly, genetic relationship to the 035.

[00:30:54] Speaker 00:
I don't know what that phrase means, but in their briefing, they consistently discussed the 019 as a related patent, just so the record is clear, it is not related, and the specification is not identical.

[00:31:07] Speaker 00:
So they're not related patents.

[00:31:09] Speaker 00:
There is not a identical specification.

[00:31:12] Speaker 00:
There is an overlap of inventors and some common language in the specification.

[00:31:18] Speaker 00:
And unless your honors have any remaining questions, I'll yield the rest of my time.

[00:31:22] Speaker 01:
Thank you.

[00:31:23] Speaker 01:
We thank both sides.

[00:31:24] Speaker 01:
The case is submitted.

[00:31:25] Speaker 01:
That concludes our proceeding for this morning.