[00:00:00] Speaker 02:
Our next case is Simpson Strong, Thai Company Inc.

[00:00:03] Speaker 02:
versus Columbia Insurance Company.

[00:00:06] Speaker 02:
Docket number 23-1944.

[00:00:09] Speaker 02:
Yes, Your Honor, thank you.

[00:00:16] Speaker 02:
Okay, we got three minutes from Vettel, is that right?

[00:00:19] Speaker 02:
That's correct, Your Honor.

[00:00:21] Speaker 02:
Okay, we have three minutes from Columbia.

[00:00:23] Speaker 03:
Good morning, may it please the court.

[00:00:25] Speaker 03:
The board committed several substantive errors in this case.

[00:00:28] Speaker 03:
But I'd like to start and focus on the procedural error that affected the entire scope of the proceeding.

[00:00:34] Speaker 03:
And that is the board's treatment of Columbia's certificate of correction.

[00:00:38] Speaker 03:
This declaims 18 through 20 of the 867.

[00:00:41] Speaker 04:
On that one, suppose we were to say,

[00:00:46] Speaker 04:
we clarify that the corrected claim was not part of this proceeding.

[00:00:56] Speaker 04:
What more do you have to say about that subject?

[00:00:59] Speaker 03:
That would be perfectly fine for us, Your Honor.

[00:01:02] Speaker 03:
That is the remedy we're requesting.

[00:01:04] Speaker 03:
The problem with this case, Your Honor, is that we can't unravel the web, given that the certificate of correction is already issued.

[00:01:13] Speaker 03:
So as far as we're concerned, we're trying to mitigate the prejudice going forward.

[00:01:18] Speaker 03:
And to clarify.

[00:01:19] Speaker 04:
And you would be able to raise in some other proceeding, perhaps, in that there's a pending infringement case.

[00:01:25] Speaker 04:
There is, Your Honor.

[00:01:26] Speaker 04:
That's true.

[00:01:27] Speaker 04:
Did you file a then after the corrected?

[00:01:29] Speaker 03:
One case involving only the corrected claims, Your Honor.

[00:01:32] Speaker 04:
And in that, presumably, it could be challenged whether that correction was legit.

[00:01:40] Speaker 04:
That is correct.

[00:01:41] Speaker 04:
And whether the corrected version was, you know, claimed unpatentable subject matter.

[00:01:49] Speaker 03:
That is also correct, Your Honor.

[00:01:52] Speaker 03:
So that is the narrowest form of relief that we believe is appropriate for the board's APA violation.

[00:02:00] Speaker 03:
And just, I do want to be clear though, Your Honor,

[00:02:03] Speaker 03:
There are multiple forms of prejudice here.

[00:02:05] Speaker 03:
I think, Judge Toronto, you appreciate that one is that we have no doubt in our mind that Columbia will argue that we are now stopped from challenging the validity of the corrected claims in district court, given that the board addressed them in its decision.

[00:02:21] Speaker 03:
Of course, we dispute that we would be stopped as the case currently stands.

[00:02:25] Speaker 03:
But if the court were to clarify that those claims were not at issue, that would take the prejudice off the table.

[00:02:35] Speaker 03:
I'm happy to answer any other questions about the APA issue, if Your Honors have any.

[00:02:41] Speaker 03:
Otherwise, I can turn to one of the substantive issues.

[00:02:46] Speaker 01:
Won't you do that?

[00:02:46] Speaker 03:
Yes, Your Honor.

[00:02:48] Speaker 03:
I will turn to our indefiniteness challenge to original claims 13 and 14.

[00:02:55] Speaker 03:
So these claims require that each extension flange, which is a three-dimensional component having bends, lies in a two-dimensional plane.

[00:03:06] Speaker 03:
Now we explained in lengthener briefing why in this particular case it doesn't make sense to say that a three-dimensional component lies in a two-dimensional plane without specifying.

[00:03:18] Speaker 04:
So I guess that the thought that I had about that, which I'd like you to respond to, is

[00:03:23] Speaker 04:
If lying in has a mathematical meaning, not only would that not make sense in this case, it could not conceivably ever make sense.

[00:03:32] Speaker 04:
No three-dimensional object lies in a two-dimensional object.

[00:03:36] Speaker 04:
And therefore it's perfectly clear that a mathematical use is not what is being deployed here.

[00:03:44] Speaker 04:
It is instead a use in this field for something else.

[00:03:50] Speaker 04:
like, the board said, what orientation and something else, I forget what the second word was.

[00:03:56] Speaker 03:
Yes, orientation and configuration of one component relative to another.

[00:04:00] Speaker 03:
So that's what the board said.

[00:04:02] Speaker 03:
Yes, the problem with that, Your Honor, is that the orientation of the extension flange relative to the base plane is tied to

[00:04:12] Speaker 03:
how much of that component lies within the intersecting plane.

[00:04:18] Speaker 03:
And I think we showed this in page 17 of our gray brief.

[00:04:21] Speaker 03:
We have an example that shows that you cannot adequately specify the orientation

[00:04:27] Speaker 03:
of a three-dimensional component that intersects a plane that is itself perpendicular to a base plane without indicating how much of that three-dimensional component and which surface of that component lies in the plane.

[00:04:40] Speaker 03:
And we know that's the case in this particular context, Your Honor, because in every other limitation where the inventors required a 3D component to lie in a plane,

[00:04:51] Speaker 03:
The inventor specified that it was a particular surface.

[00:04:55] Speaker 03:
We see that in the base plane limitation of plane 1, but we also see that in planes 7, 12, 20, and 21.

[00:05:04] Speaker 03:
So there is an internal inconsistency in this particular pattern as to how the inventors

[00:05:10] Speaker 03:
describes the orientation.

[00:05:12] Speaker 04:
This is all just an indefinite mis-argument, right?

[00:05:16] Speaker 04:
That's correct, Your Honor.

[00:05:17] Speaker 04:
So we're not looking for anything more than whether a relevant artist can reasonably discern the boundaries of this.

[00:05:27] Speaker 04:
It doesn't seem to me to be

[00:05:34] Speaker 04:
defeated by the range of possibilities for something that is, in normal parlance, almost entirely plainer.

[00:05:48] Speaker 03:
Well, the problem with that premise, Your Honor, that the flanges are entirely plainer, is that the board expressly rejected that contention by Columbia at appendix pages 35 to 37.

[00:06:02] Speaker 03:
The board correctly, in our view, said that the flanges need not be thin, relatively flat, and substantially planar.

[00:06:09] Speaker 03:
It then turned around at appendix 38 and narrowly construed the claim to require that the entirety of this flange lie within a plane.

[00:06:19] Speaker 03:
The only way that construction could possibly be correct is if indeed the flanges are substantially planar.

[00:06:26] Speaker 03:
And that's a problem.

[00:06:27] Speaker 03:
The board's construction is inconsistent with its own fact findings.

[00:06:31] Speaker 03:
Now the board also rejected our alternative construction that required any portion of the extension flange to lie within the plane because the board said that that construction was too broad.

[00:06:42] Speaker 03:
So if we accept the board's findings in face value, we're left with a broad construction that the board rejected and a narrow construction that is inconsistent with the board's own fact findings and we're left

[00:06:54] Speaker 03:
at square one, trying to determine what the claim means.

[00:06:58] Speaker 03:
The problem here is that the board accepted the premise that extension flanges can be multi-planar.

[00:07:04] Speaker 03:
And without additional specificity in the claims, a person still here would be unable to determine whether a multi-planar flange lies within the scope of the claims, which is a hallmark of indefiniteness.

[00:07:19] Speaker 03:
We see.

[00:07:20] Speaker 04:
And this is all in the context between

[00:07:24] Speaker 04:
of a essentially planer wall.

[00:07:29] Speaker 04:
Two other panels are going to be stuck in for fire prevention.

[00:07:36] Speaker 04:
The hanger has to have a essentially planer back to it.

[00:07:44] Speaker 04:
And you're just talking about the cross pieces.

[00:07:48] Speaker 04:
That kind of connect the back to the

[00:07:53] Speaker 04:
the back of the hanger to the ultimate back that's going to connect to the wall.

[00:08:07] Speaker 04:
The term is here.

[00:08:09] Speaker 03:
An extension flange lying in.

[00:08:12] Speaker 03:
Yes, precisely because all agree that the extension flanges can be multi-planar.

[00:08:18] Speaker 03:
I'm sorry, what does multi-planar mean?

[00:08:21] Speaker 03:
Meaning that the extension flange can comprise multiple components, each lying in different planes.

[00:08:27] Speaker 03:
I think a good example of that, Your Honor, is the Tsukamoto reference that we used to challenge Claim 16, but which the Board never

[00:08:36] Speaker 03:
reached, that prior reference has an inclined portion and a connection portion that is perpendicular to that component.

[00:08:48] Speaker 03:
Is that in the appendix?

[00:08:51] Speaker 03:
It is, Your Honor.

[00:08:52] Speaker 03:
That would be an appendix.

[00:08:59] Speaker 05:
You have a figure in your briefing too.

[00:09:01] Speaker 03:
We do as well.

[00:09:02] Speaker 03:
Yeah, the appendix page would be appendix 1890, figure 4.

[00:09:08] Speaker 03:
We also have that figure reproduced in our briefing as well, both I believe the blue and the gray brief.

[00:09:16] Speaker 03:
The inclined portion three

[00:09:22] Speaker 03:
B is one plane of the extension flange.

[00:09:26] Speaker 03:
The triangular portion there, which is labeled 3D prime, lies in a different plane, and those two components are right angles.

[00:09:35] Speaker 03:
Nobody disputes that collectively those components perform the function of extending through

[00:09:42] Speaker 03:
the sheathing from the channel shape portion to the back flange and yet those two components lie in different planes and that's part of the problem is that the board's fact findings clearly accept that a hanger like Tsukamoto could fall within the claims and yet the board rejected or construed the claim in such a way as to make that impossible and again we're left with uncertainty as to how

[00:10:08] Speaker 03:
and how much of a surface in Tsukamoto's extension flanges must lie within the plane in order to satisfy the limitation.

[00:10:18] Speaker 03:
The final point I'll make on this, Your Honor, is that the claim originally did, when it was first filed, specify any particular surface that must lie in the plane, the major surface.

[00:10:29] Speaker 03:
The examiner during prosecution rejected the claim as indefinite because the word majors is a degree.

[00:10:35] Speaker 03:
But rather than fixing the problem,

[00:10:37] Speaker 03:
the applicant made it worse by simply removing any reference to the surface.

[00:10:43] Speaker 03:
And so if the claims were indefinite before, they are certainly indefinite after the amendment, right?

[00:10:49] Speaker 03:
After the amendment, Your Honor, yes.

[00:10:52] Speaker 03:
That is correct.

[00:10:53] Speaker 05:
I guess in the examiner's mind, who was

[00:10:58] Speaker 05:
laser-like focused on the issue, the examiner approved the claim for indefinite mispurposes.

[00:11:04] Speaker 03:
Well, that's correct.

[00:11:05] Speaker 03:
But the examiner was focused on the board major and not necessarily on the board surface.

[00:11:11] Speaker 03:
And given that every other limitation reciting 3D components lying in a 2D plane do specify the surface, I think there is an internal inconsistency here that is missing from all those other prior art references on which Columbia and the board relied.

[00:11:27] Speaker 03:
I will just say one thing about substitute claim 32 and the enablement issue.

[00:11:34] Speaker 03:
This claim is broad enough to cover a hanger without top flanges.

[00:11:40] Speaker 03:
But the specification describes and depicts only hangers with top flanges.

[00:11:45] Speaker 03:
And the problem is that Columbia's own expert testified at appendix 3037 and 3039

[00:11:51] Speaker 03:
that the 867 patent hanger simply, quote, would not work without top flanges and would be, quote, inoperable.

[00:12:00] Speaker 03:
Our expert agreed with that testimony, which should have ended the impact.

[00:12:04] Speaker 05:
Is that expert really referring to the embodiment in Figure 2, which

[00:12:09] Speaker 05:
wholly relied on the top planches disclosed to do the connection.

[00:12:13] Speaker 05:
And so, of course, if you remove those top planches from the figure, then the thing would fall down.

[00:12:19] Speaker 05:
Then there would be no means of connecting to the wall.

[00:12:22] Speaker 03:
Well, yes, Your Honor, but that's the only embodiment that is disclosed in the patent.

[00:12:26] Speaker 03:
All the figures 1 through 14a disclose a single embodiment, and it is undisputed that that embodiment is covered by a claim 32.

[00:12:35] Speaker 03:
There's no hint in the pattern.

[00:12:37] Speaker 04:
And can I just ask on that?

[00:12:40] Speaker 04:
So if I said to you, when I asked, if I asked my clerk, the clerks, how would you hang this without the top?

[00:12:49] Speaker 04:
It was under 10 seconds that somebody said, use the back to nail it in.

[00:12:57] Speaker 03:
So, Your Honor, a couple of things, a couple of responses to that question.

[00:13:01] Speaker 03:
Tell me if it's irrelevant what I mean.

[00:13:03] Speaker 03:
Well, it is, Your Honor, because the inquiry is whether the specification enables not just back-mounted hangers generally, but whether it enables the ability to back-mount this specific hanger.

[00:13:17] Speaker 03:
And the reason you wouldn't be able to back-mount this specific hanger.

[00:13:21] Speaker 03:
Can't get the hammer between those things.

[00:13:22] Speaker 03:
That's one reason, Your Honor.

[00:13:24] Speaker 03:
Both experts agreed on that point.

[00:13:27] Speaker 03:
And that's only if you install the hanger first before the drywall.

[00:13:31] Speaker 03:
If you install the drywall first, as is clearly contemplated by the patent in Column 7, you would have to drill through or nail through the drywall itself to get to the back flanges, which would defeat what Columbia says is the entire purpose of the invention.

[00:13:46] Speaker 03:
So even though prior art hangers could be face mounted,

[00:13:48] Speaker 03:
It's undisputed.

[00:13:50] Speaker 03:
Both experts agreed that this particular hanger could not.

[00:13:53] Speaker 03:
And so we think we're on all fours.

[00:13:55] Speaker 04:
Why would that defeat the purpose you just need?

[00:13:59] Speaker 04:
Is there an inch or so longer?

[00:14:02] Speaker 03:
According to Columbia, the purpose of this patent, the crux of the invention, is minimizing the cutouts in the drywall.

[00:14:11] Speaker 03:
And so if you had to nail through the drywall into the back flange,

[00:14:14] Speaker 04:
that the nail-filled nail hole is a cutout?

[00:14:21] Speaker 03:
Yes, Your Honor.

[00:14:22] Speaker 03:
That is correct.

[00:14:25] Speaker 03:
So we would ask that the court reverse the enablement issue.

[00:14:28] Speaker 03:
I'm happy to answer other questions.

[00:14:30] Speaker 03:
Otherwise, I will save my time.

[00:14:33] Speaker 02:
Thank you.

[00:14:45] Speaker 00:
Morning, Your Honors.

[00:14:46] Speaker 00:
Yes.

[00:14:47] Speaker 00:
Scott Edson, along with my colleague, Mr. John Schrader, on behalf of Columbia Insurance Company.

[00:14:51] Speaker 00:
I want to jump in and address a few issues that Judge Toronto raised.

[00:14:57] Speaker 00:
First, on the APA issue, I think the question was, if we clarify that the corrected claim was not part of the proceeding, then do we need to do anything else?

[00:15:06] Speaker 00:
Well, Simpson can't have it both ways here, Your Honor.

[00:15:09] Speaker 04:
Simpson doesn't have this.

[00:15:11] Speaker 04:
It's not having the other way yet.

[00:15:15] Speaker 00:
But if the court was to say, for instance, that claims 18 to 20 in corrected form were not before the board, and the board shouldn't have opined on that, the board also opined in the same manner on the corrected claims 5 and 17.

[00:15:30] Speaker 00:
And so therefore, the decision that Simpson wants to take advantage of and keep the success that it had with those corrected claims would also have to be discarded.

[00:15:40] Speaker 00:
It can't have it both ways.

[00:15:41] Speaker 05:
Why would that be?

[00:15:44] Speaker 05:
if it turns out that there was no argument made by the petitioner challenging the validity of the corrected claims.

[00:15:54] Speaker 05:
And the board made it clear that it wasn't committing itself at the institution as to whether the corrected claims were in play.

[00:16:04] Speaker 05:
They could be, they could not be.

[00:16:06] Speaker 05:
But then we read the final written decision as saying, if it was before us, we would probably say it's okay, but the inference there is that it wasn't actually before the board, so the board wasn't opining on it.

[00:16:22] Speaker 05:
At the same time for the other claims, the other corrected claims,

[00:16:26] Speaker 05:
They were being disputed in the petitioner reply and back and forth between the parties and so it was a contested issue in front of the board and then the board addressed the merits.

[00:16:38] Speaker 05:
Why would that be a wrong way of just viewing the entire proceeding?

[00:16:43] Speaker 00:
It goes to the differences in the challenges that they had between claims 18 and 20.

[00:16:48] Speaker 00:
which they didn't lodge a 102 or 103 challenge to.

[00:16:51] Speaker 00:
They just had the sole 112 challenge to.

[00:16:53] Speaker 00:
They had no backup grounds.

[00:16:55] Speaker 00:
On the other claims, they had 102-103 challenges.

[00:16:59] Speaker 00:
And as you know, Your Honor, they did argue both the pre-corrected and corrected claims in the reply to the patent owner's statement at appendix 790 and 791 in the board address to those corrected claims.

[00:17:13] Speaker 00:
The claims 5 and 7.

[00:17:15] Speaker 00:
Yes, Your Honor.

[00:17:16] Speaker 00:
Right, but not for these claims.

[00:17:18] Speaker 00:
Not for claims 18 and 20, no, Your Honor.

[00:17:20] Speaker ?:
Right.

[00:17:20] Speaker 00:
There was an indefiniteness challenge.

[00:17:23] Speaker 00:
Simpson had every opportunity, if it wanted to further address it, to raise the issue.

[00:17:28] Speaker 00:
At no point in time did they seek accommodations from the board.

[00:17:31] Speaker 00:
to raise any additional argument related to those claims.

[00:17:34] Speaker 00:
They had a 112 argument related to an antecedent basis issue that was mooted by the certificate of correction.

[00:17:40] Speaker 00:
Since it acknowledged that, they did nothing further.

[00:17:43] Speaker 00:
They sat on their hands.

[00:17:44] Speaker 00:
They made a strategic decision to not do anything.

[00:17:46] Speaker 05:
Well, they probably made a strategic decision not to petition for every single claim in the patent.

[00:17:52] Speaker 05:
That doesn't mean that they're stopped from later challenging

[00:17:55] Speaker 05:
every non-petitioned court claim in the patent, right?

[00:17:59] Speaker 00:
Well, not necessarily, Your Honor.

[00:18:00] Speaker 00:
What they can't do is sit on their hands and not do self-help when they're fully aware of the issues before the board.

[00:18:06] Speaker 00:
When Columbia puts it at issue at every turn, both in Columbia's briefing and communications to the board, they can't just sit back and say, we only had a 112 argument that was mooted by this ticket of correction and get a ruling that they don't like later and then come back to this court and ask it to be sent back.

[00:18:23] Speaker 00:
That's the problem that they've got, Your Honor.

[00:18:27] Speaker 05:
So what is it that you're looking for here?

[00:18:29] Speaker 05:
You want the court to conclude that the board definitively made a ruling on the corrective claims, 18 to 20?

[00:18:42] Speaker 00:
We want the court to affirm the PTAB's ruling.

[00:18:45] Speaker 00:
And Judge Shinn, if your question is, did the court have both sets of claims before it,

[00:18:51] Speaker 00:
It is our opinion that they did under 255.

[00:18:54] Speaker 05:
But did the board actually decide and pass on the corrected claims?

[00:18:59] Speaker 05:
That's the question.

[00:19:01] Speaker 00:
I think they did, Your Honor.

[00:19:03] Speaker 00:
If you look at their analysis and the rationale.

[00:19:05] Speaker 04:
Do you think that the question of a stoppile that would come up depends on whether the board ruled on the corrected claim or just whether it was in front of them, even if not ruled on?

[00:19:20] Speaker 00:
The question of estoppel in the district court?

[00:19:22] Speaker 04:
Yes.

[00:19:23] Speaker 00:
So if the question is directly, would MITAC in Columbia assert estoppel in the district court, my colleague is right.

[00:19:34] Speaker 00:
We would.

[00:19:35] Speaker 00:
Simpson had a chance to litigate these claims at the PTAB.

[00:19:38] Speaker 04:
Okay, that's an interesting point.

[00:19:42] Speaker 04:
Now, the specific question I asked you, does, in your view, does the stopple depend on whether the claim, the correct claim, was adjudicated by the board or just that it could have been adjudicated in the proceeding, even if this is the second alternative, it wasn't?

[00:20:04] Speaker 00:
I think it's stopped if they raised or could have raised it.

[00:20:08] Speaker 00:
And Simpson could have raised it by seeking additional relief, additional accommodations from the board, which they did not do.

[00:20:15] Speaker 00:
So I'm not sure it necessarily hinges on the ruling one way or another.

[00:20:19] Speaker 00:
It hinges whether they could have raised it.

[00:20:21] Speaker 00:
And they didn't do that, Your Honor.

[00:20:22] Speaker 00:
That's what the Estoppel statute provides.

[00:20:25] Speaker 01:
Did the board conduct the associative analysis of claims 18 through 20?

[00:20:30] Speaker 00:
pre-corrected and corrected, Your Honor.

[00:20:32] Speaker 00:
If you read the opinion in the appendix, they give a full analysis of claims 18 to 20 pre-corrected, and then they say, as is in the briefing, our analysis is the same, pre-corrected versus corrected.

[00:20:45] Speaker 05:
Yes, Your Honor.

[00:21:02] Speaker 05:
They say we find the term joys provides antecedent basis for the term structural component.

[00:21:07] Speaker 05:
We would reach the same result, regardless of whether the certificate of correction has effect in this proceeding.

[00:21:15] Speaker 00:
Correct, John.

[00:21:15] Speaker 00:
I think we're on the same page, sir.

[00:21:23] Speaker 00:
Jumping to the merits of the indefinite misarguing on claims 18 to 20,

[00:21:33] Speaker 00:
The term joist is used interchangeably for a structural component.

[00:21:38] Speaker 00:
I think Simpson acknowledges that if you look at the reply brief, footnote four, page 12.

[00:21:43] Speaker 05:
Do you agree that the claim is restricted to joists?

[00:21:49] Speaker 00:
No.

[00:21:50] Speaker 00:
It's a structural component.

[00:21:52] Speaker 00:
A joist is interchangeable with structural components, so when you say

[00:21:56] Speaker 00:
restricted to joist, I guess it's if we have the same understanding of joist that it's used as an umbrella term for a variety of structural components, then I would say yes.

[00:22:06] Speaker 00:
No.

[00:22:06] Speaker 00:
But if we don't... Joist is one type of structural component.

[00:22:10] Speaker 00:
Then I would say no.

[00:22:11] Speaker 00:
No.

[00:22:13] Speaker 00:
The claim refers to a structural component, a joist.

[00:22:16] Speaker 00:
If you're saying that a joist is a type of structural component which we disagree with, we think it's interchangeable with,

[00:22:23] Speaker 00:
And I think Simpson acknowledges that when they say the term joist is used as an umbrella term for a structural component.

[00:22:29] Speaker 00:
So I think that's where we have a disagreement as to the premise of whether a structural component is a species, so to speak, or a joist is a species of a structural component.

[00:22:40] Speaker 00:
We disagree with that.

[00:22:41] Speaker 04:
Where did he say Simpson says something about joists?

[00:22:46] Speaker 04:
Sure, Your Honor.

[00:22:47] Speaker 00:
Reply brief, footnote four.

[00:22:49] Speaker 00:
They acknowledge, I believe it's on page 12,

[00:22:52] Speaker 00:
They acknowledge that the term joist is used as an umbrella term for structural connectors.

[00:23:04] Speaker 04:
Olympia points out that Simpson's product literature, this is from their product literature, is that what you're relying on?

[00:23:12] Speaker 00:
I believe so, Your Honor.

[00:23:17] Speaker 00:
And to the point about the claim, Simpson acknowledges that

[00:23:21] Speaker 05:
The term joist and... I guess they say a structural component is broader than a joist.

[00:23:28] Speaker 00:
And then... Yes, and then... The factor layers.

[00:23:43] Speaker 00:
Right, the first part of the footnote says Columbia points out that Simpson's product literature refers to certain structural components using the umbrella term joist.

[00:23:55] Speaker 05:
And then they essentially contradict their own literature and they say, well, but we say that... Let's assume to a moment that structural component means a joist, but it can mean other kinds of structural components like a truss.

[00:24:11] Speaker 05:
Okay, and so therefore structural component is broader than joist.

[00:24:17] Speaker 05:
Then I guess my question is why wouldn't the claim be restricted to joist and therefore exclude trusses because you've introduced the term joist in the preamble and then all of the subsequent references in the body to a structural component

[00:24:38] Speaker 05:
referring back to the joist for antecedent bases.

[00:24:45] Speaker 00:
And I think, Your Honor, that that question hinges on the premise of whether the preamble there is limiting, and it is not.

[00:24:53] Speaker 00:
Simpson acknowledges that the preamble is not limiting.

[00:24:58] Speaker 00:
If you look at the petition, page 293,

[00:25:01] Speaker 00:
You say that the joist, frame wall, the upper plate studs, and the shavings of claim 16, from which 18 to 20 depend, are not positively recited.

[00:25:10] Speaker 05:
Was it your position that the preamble is limiting?

[00:25:14] Speaker 05:
No, Your Honor.

[00:25:17] Speaker 05:
You never said the preamble is limiting.

[00:25:22] Speaker 00:
I don't believe so, Your Honor.

[00:25:24] Speaker 00:
And then Simpson says that the joist or structural member cited in the preambles are merely an intended use.

[00:25:30] Speaker 00:
That's at the appendix of page 261.

[00:25:32] Speaker 05:
And so you urged the board to rely on the joist as antecedent basis for structural component.

[00:25:42] Speaker 05:
Did you not?

[00:25:44] Speaker 05:
We did.

[00:25:44] Speaker 05:
We did, Your Honor.

[00:25:46] Speaker 05:
So you can't tell me to ignore the preamble then?

[00:25:51] Speaker 00:
I can tell you that it's not limiting.

[00:25:53] Speaker 00:
We made a typographical correction using the certificate of correction to something that is not limiting the preamble.

[00:26:02] Speaker 05:
What if the preamble had said daughter and then the body of the claim over and over again said the child, the child, the child?

[00:26:11] Speaker 05:
Wouldn't the references to child and the body be referencing the daughter?

[00:26:17] Speaker 00:
It would depend on the other aspects of the claim, Your Honor.

[00:26:20] Speaker 04:
Let's assume there are no other aspects.

[00:26:24] Speaker 00:
Then it probably could.

[00:26:26] Speaker 00:
So then it would be a daughter-based crane, right?

[00:26:30] Speaker 05:
It wouldn't include sons.

[00:26:33] Speaker 04:
Your Honor.

[00:26:34] Speaker 04:
OK.

[00:26:36] Speaker 04:
Can you talk about planes?

[00:26:40] Speaker 00:
We can talk about planes.

[00:26:41] Speaker 00:
Yes, Your Honor, we can.

[00:26:44] Speaker 00:
Simpson's main problem here

[00:26:46] Speaker 00:
is that the definition doesn't fit with their preferred piece of prior art.

[00:26:54] Speaker 00:
Specifically, it's pretty clear that base plane and extension flange plane are used differently by the patentee in this case.

[00:27:01] Speaker 00:
When the patentee wants to define a plane having a surface, like base plane, it does so in the claim.

[00:27:07] Speaker 00:
And you look at within claim one, it talks about the top surface of the support member.

[00:27:13] Speaker 00:
When it's using extension flange plane, it's using it completely differently.

[00:27:17] Speaker 00:
It's using it to show orientation.

[00:27:19] Speaker 00:
And I think the best way to address some of the diagrams that have been in the briefing and the example that my colleague illustrated here is think of a, which Simpson, by the way, I think they confused the term intersect with laying in a plane.

[00:27:33] Speaker 00:
And just Toronto, I think you were right earlier.

[00:27:36] Speaker 00:
One of your clerks in 10 seconds on enablement said you would just nail the back flanges.

[00:27:41] Speaker 00:
We'll hear.

[00:27:42] Speaker 04:
That's the other point.

[00:27:43] Speaker 00:
It is.

[00:27:44] Speaker 00:
But it's analogous here in that when you read the claim in the context of the entire claim, when it's lying generally perpendicular, going up and down, you understand the orientation of the extension flange, extension portion with the two extension flanges in the extension flange claim.

[00:28:05] Speaker 04:
Even if the extension flange doesn't have to be flat, even if it could have a true bend in it so that portions of it you would describe as having different orientations from each other.

[00:28:21] Speaker 00:
If we're talking about the minor angles and the top portion there where it bends around.

[00:28:26] Speaker 04:
Any bend will do.

[00:28:30] Speaker 04:
I even assume it's not a curve, although at some micro level they'll all be curves, but something more like what you would describe as an angle.

[00:28:41] Speaker 00:
I think the board did address that, Your Honor, at appendix page 37.

[00:28:45] Speaker 04:
In a way that I found hard to understand.

[00:28:48] Speaker 00:
I apologize for that.

[00:28:50] Speaker 04:
It seemed to be trying to fit this three-dimensional object into something that wasn't quite a plane, but like a table.

[00:29:00] Speaker 00:
It's designed to illustrate a general orientation, which is what it does.

[00:29:06] Speaker 00:
And what the board did find persuasive when you're talking about lying in a plane is Simpson's art for hanger technology when they use the exact same term to define various components of their hangers as lying in a plane.

[00:29:20] Speaker 00:
And so when Simpson prosecutes and pursues its own patents, one of ordinary skill in the art understands what it means to lie in a plane

[00:29:27] Speaker 04:
when it's defining the orientation of those products, but when my tech does it... Are you accepting now that the board was right to reject the... There was a proposal about, you know, the... Generally planer and... Generally planer or something like that?

[00:29:47] Speaker 00:
Your Honor, we disagree with the board.

[00:29:49] Speaker 00:
It's not up for appeal here.

[00:29:51] Speaker 00:
So we didn't take issue with it.

[00:29:53] Speaker 00:
I understand the board's position.

[00:29:56] Speaker 00:
on that, but we certainly don't agree with it.

[00:30:02] Speaker 00:
I see that I'm at time.

[00:30:04] Speaker 00:
You're at a time.

[00:30:05] Speaker 00:
Thank you very much.

[00:30:06] Speaker 00:
Thank you all for your consideration.

[00:30:16] Speaker 02:
Thank you, Your Honor.

[00:30:20] Speaker 03:
I will begin where my colleague on the other side left off, and that is the extension flange limitation.

[00:30:25] Speaker 03:
Judge Torano, you are correct.

[00:30:27] Speaker 03:
This is like fitting a square peg into a round hole, precisely because in all those other prior references that my colleague referred to, the components of the issue were relatively flat and planar.

[00:30:39] Speaker 03:
Here the board rejected that premise, and so with that premise rejected, Columbia's argument fails.

[00:30:46] Speaker 03:
Turning to the EPA issue, my colleague suggested that we sat on our hands and didn't try to seek any accommodations.

[00:30:55] Speaker 03:
for Columbia's certificate of correction.

[00:30:57] Speaker 03:
That is incorrect.

[00:30:59] Speaker 03:
At appendix 7723 and 7725, we requested prior to institution permission from the board to brief the effect that the certificate of correction would have on the proceeding.

[00:31:12] Speaker 03:
The board at appendix 491 rejected those requests and made very clear that we wouldn't be heard on the issue.

[00:31:19] Speaker 03:
And this is really the crux of the APA violation, is that having

[00:31:23] Speaker 05:
But getting to the specific question of what you did in your reply, you did in your reply challenge the patentability of corrected claims five and seven.

[00:31:33] Speaker 05:
And so therefore, you knew how to do that.

[00:31:36] Speaker 05:
And you had the opportunity right then and there to make your patentability challenge to corrected claims 18-20.

[00:31:43] Speaker 05:
But you sat on your hands.

[00:31:45] Speaker 05:
And I'm trying to understand why you did one thing for one set of corrected claims

[00:31:51] Speaker 05:
and did a different thing for the other set of corrected claims.

[00:31:54] Speaker 05:
Can you explain that?

[00:31:55] Speaker 03:
Yes, Your Honor, because the corrections to claims 5 and 17, which are the other set of claims to which Your Honor is referring, did not moot our indefiniteness or limb description arguments.

[00:32:08] Speaker 03:
The Board agreed with those arguments, notwithstanding the certificate of correction.

[00:32:12] Speaker 03:
Now, the Board also invalidated those claims based on prior art.

[00:32:16] Speaker 03:
The difference with claims 18 through 20 is that we, by Columbia's own mission, their admission rather, their correction rooted in nullified our indefiniteness argument, we weren't allowed to brief whether the COC was even a fact.

[00:32:35] Speaker 03:
And therefore, we were bound by a petition that no longer addressed the claims that in Columbia's telling word issue.

[00:32:42] Speaker 03:
But our hands were tied.

[00:32:44] Speaker 05:
You could have made a 102 or 103 argument.

[00:32:46] Speaker 05:
No, Your Honor.

[00:32:47] Speaker 05:
We did.

[00:32:49] Speaker 03:
We couldn't, because we requested permission to brief that issue.

[00:32:54] Speaker 03:
The board denied that request.

[00:32:56] Speaker 03:
The only way we could have raised a 102 or 103 argument on the corrected claims is if the board required Columbia to go through the motion to amend procedure, which is supposed to govern PGRs.

[00:33:08] Speaker 03:
But the board didn't do that, and that's part of the prejudice here is that the board didn't afford

[00:33:12] Speaker 03:
us any accommodations to cure the prejudice, as this court said in Honeywell the board was required to do.

[00:33:21] Speaker 05:
There's litigation over the validity of the certificate of correction, right?

[00:33:28] Speaker 03:
Not yet.

[00:33:28] Speaker 05:
Your Honor, we... Not yet.

[00:33:30] Speaker 05:
Okay.

[00:33:31] Speaker 03:
That's right.

[00:33:32] Speaker 03:
Of course, we preserve our ability to challenge that certificate down the road if and when we get there.

[00:33:39] Speaker 04:
And I know this is also getting ahead of ourselves, but your answer to an estoppel assertion would have to be that you couldn't have presented the certificate of correction, right?

[00:33:59] Speaker 04:
Because of the wording of the estoppel provision.

[00:34:03] Speaker 04:
And is that right?

[00:34:04] Speaker 04:
And then your argument is we tried and they said no, and that's enough or couldn't?

[00:34:08] Speaker 03:
Yes, Your Honor.

[00:34:10] Speaker 03:
I mean, there can be no dispute that we couldn't address the corrected claims at the time we filed our petition, because those claims didn't exist.

[00:34:18] Speaker 03:
For that reason, we would argue, of course, that there is no estoppel, even as the case currently stands.

[00:34:23] Speaker 03:
But as my colleague on the other side admitted, they do plan to argue estoppel, and we need to cure that prejudice.

[00:34:32] Speaker 02:
Thank you.

[00:34:33] Speaker 02:
Thank you.

[00:34:33] Speaker 02:
Thank you for the argument.