[00:00:00] Speaker 01:
Our next case for argument is 24-1466, Canutex Completion Solutions versus Wellmatics.

[00:00:09] Speaker 01:
Mr. Cabello, please proceed.

[00:00:11] Speaker 04:
Good morning, Your Honors.

[00:00:12] Speaker 04:
My name's David Cabello.

[00:00:13] Speaker 04:
I'm here on behalf of Canutex.

[00:00:16] Speaker 04:
May it please the court?

[00:00:18] Speaker 04:
Type of construction is sought in this case with respect to the connection profile of the second part to connection profile of the first part.

[00:00:28] Speaker 04:
in independent claims 1, 7, and 13.

[00:00:32] Speaker 01:
So somebody messed up during prosecution, right?

[00:00:35] Speaker 04:
They messed up not only during the prosecution of the claims, but also in the spec and the prosecution history.

[00:00:41] Speaker 01:
They messed up all over the place.

[00:00:43] Speaker 01:
Yes, Your Honor.

[00:00:44] Speaker 04:
We can see that.

[00:00:45] Speaker 01:
So they messed up all over the place, and you want us to correct it.

[00:00:49] Speaker 04:
We want you to correct the claims, yes, Your Honor.

[00:00:52] Speaker 04:
And we believe that the correction is clear if you look at the two, how it's constructed,

[00:00:58] Speaker 04:
and you look at the claim as it's presented until you get to where the error can show.

[00:01:05] Speaker 00:
Can you help me out a little just by way of background?

[00:01:08] Speaker 00:
We've got two potential avenues for relief here.

[00:01:11] Speaker 00:
One is the judicial correction, which happened here.

[00:01:14] Speaker 00:
And the other is going to the PTO for a correction, which you did second, not first.

[00:01:22] Speaker 00:
How did the two work together?

[00:01:24] Speaker 00:
Are they different as a legal matter in terms of what the judge is allowed to do in terms of fixing up an error and the scope of the Patent Office's review?

[00:01:35] Speaker 04:
Well, it is different, Your Honor.

[00:01:37] Speaker 04:
First of all, I think this court has been very clear about what errors a district court can correct.

[00:01:44] Speaker 04:
I think you find that in the Pavel case, and you certainly find it in the Ultimax case, where there is clear direction on what errors can be corrected.

[00:01:52] Speaker 04:
And that is that the error has to be plain or has to be evident on the face of the patent.

[00:01:59] Speaker 04:
And then you have a two-pronged test that says there's no reasonable debate on what the correction should be.

[00:02:05] Speaker 04:
And the filed history is not in conflict with that.

[00:02:10] Speaker 00:
Does that differ, and if so, how, from what the PTO is looking at?

[00:02:14] Speaker 04:
Your Honor, first of all, I don't have that much experience with the PTO corrections.

[00:02:19] Speaker 04:
We have two different approaches by the PTO.

[00:02:24] Speaker 04:
The first is the one that we had filed with the court early on, where the PTO says, while the case is on appeal, we don't have any ability to correct the claim.

[00:02:36] Speaker 04:
And then somehow, this got picked up again by the PTO.

[00:02:40] Speaker 04:
And the PTO said, well, since you all followed an 11-page explanation of the error, you must be seeking to broaden the claim.

[00:02:47] Speaker 04:
And therefore, we can't accept the correction.

[00:02:54] Speaker 04:
I think that if you look at 254 and 255 of the statute, that has to be read together with section 251.

[00:03:02] Speaker 04:
And that is that the PTO can correct the claim.

[00:03:06] Speaker 04:
And it can even broaden the claim.

[00:03:09] Speaker 04:
But then you'd have 251 as a backstop that says you can't broaden the claim beyond the two years after the issue date.

[00:03:16] Speaker 04:
And so that is clear.

[00:03:18] Speaker 04:
But I believe that, in essence, the PTO has adopted and must adopt the precedence by this court.

[00:03:27] Speaker 04:
And that precedence is clear.

[00:03:29] Speaker 04:
And the court has been clear on how this should be corrected.

[00:03:33] Speaker 04:
And that is that the error has to be evident

[00:03:36] Speaker 04:
and so you have to establish where the error is and why the specification when read in light of the drawings and how that specification is understood by a person of ordinary skill and the art supports the corrections sought by the capital.

[00:03:53] Speaker 01:
Council, I just have a quick procedural question.

[00:03:56] Speaker 01:
Why did you

[00:03:57] Speaker 01:
You filed with us on 28J a notice the PTO said it couldn't decide.

[00:04:03] Speaker 01:
Yes, Your Honor.

[00:04:04] Speaker 01:
Why didn't you file the notice when they did decide?

[00:04:07] Speaker 01:
Why did you let that just stand and leave us with the misimpression that that was all?

[00:04:14] Speaker 04:
Your Honor, we have filed yet another.

[00:04:16] Speaker 04:
After the appellees filed their notice, we asked prosecution counsel, actually, we asked the client, why weren't we made aware of this?

[00:04:25] Speaker 04:
The client had to go back to U.S.

[00:04:26] Speaker 04:
Prosecution Council, and we have an email from U.S.

[00:04:31] Speaker 04:
Prosecution Council that says we have no record where we have advised candidates of this later decision.

[00:04:38] Speaker 04:
And so, Your Honor, we just were not aware of the later decision by the PTO.

[00:04:43] Speaker 04:
The client was not aware of it.

[00:04:45] Speaker 04:
Prosecution Council did not make the client aware of it.

[00:04:48] Speaker 04:
Prosecution Council did not make his Canadian counterpart aware of it.

[00:04:52] Speaker 01:
So is this the same prosecution counsel that messed the patent up all over the place?

[00:04:56] Speaker 04:
I don't know, you know.

[00:04:59] Speaker 03:
I can't speak to that.

[00:05:04] Speaker 03:
Go ahead.

[00:05:05] Speaker 03:
We don't, I think, I'm going to use the word technically, have a correction question.

[00:05:13] Speaker 03:
We have a claim construction question.

[00:05:16] Speaker 03:
That is, there is no request to change the words

[00:05:22] Speaker 03:
of the document that sits in from the patent office as the official document.

[00:05:30] Speaker 03:
That's what 255 allows the patent office to do.

[00:05:34] Speaker 03:
We have a question of whether when a skilled artisan reads the language in this claim and the specification after a moment's thought,

[00:05:47] Speaker 03:
the skilled artisan would understand that the wrong words were chosen, and these words have to have meant and must mean the thing that you say.

[00:05:56] Speaker 03:
Namely, that the word second there really ought to be first.

[00:06:03] Speaker 03:
So I'm not sure why exactly the same standard would necessarily apply under 255 to what the patent office can do to this.

[00:06:14] Speaker 03:
So on this question,

[00:06:17] Speaker 03:
Do I understand correctly that the heart may be just up or down?

[00:06:25] Speaker 03:
of your claim is there is no reasonable alternative to the understanding that you say any skilled artisan would have.

[00:06:37] Speaker 03:
And it requires, first of all, seeing that two or three identical mistakes were made in the spec, one of them being painfully clear on its face that it was a mistake, which then tells you that all the other ones were also a mistake.

[00:06:53] Speaker 03:
And same thing with the claim.

[00:06:57] Speaker 04:
Yes, Your Honor, that is our position.

[00:06:59] Speaker 04:
And if you look at the drawings and you see the first part and the second part, it becomes painfully obvious where the mistake is.

[00:07:07] Speaker 04:
The first part is the piece that attaches to the down-hole tool that may get stuck.

[00:07:12] Speaker 04:
And the second part latches that first part.

[00:07:15] Speaker 04:
And so if you look at the second, the specification and the claim,

[00:07:23] Speaker 04:
with respect to the second part, it talks about a releasable engagement profile, engaging the first part, and latching the first part, and releasing that first part.

[00:07:35] Speaker 04:
And so when you look at how the claim is structured, everything refers to the first part, except for that last reference to the first part.

[00:07:47] Speaker 04:
It turns out to be its second part.

[00:07:49] Speaker 04:
But if you read through that claim, it's clear that what we're talking about

[00:07:53] Speaker 04:
is the engagement profile of the first part.

[00:07:56] Speaker 04:
And in fact, when you look.

[00:07:57] Speaker 03:
And just to return to maybe where we started, if I thought what you just said is right, that there is simply no reasonable alternative, what role, if any, should be played by the extraordinarily high degree of sloppiness that is evident here?

[00:08:23] Speaker 04:
You know, I've struggled with trying to understand, and I can see that it is extraordinarily sloppy.

[00:08:30] Speaker 04:
I've struggled to understand what happened.

[00:08:32] Speaker 04:
I think that at some point, prosecution counsel wanted to change the order of first and second part, because they talk about the first part as being down-hold and the second part as being up-hold.

[00:08:48] Speaker 04:
If I prosecuted this case, I would have talked about it as down-hold and up-hold so we don't confuse each other.

[00:08:53] Speaker 04:
But at some point, I believe that they chose to change the order and talk about the up-hold section as being second part and the down-hold part as being the first part.

[00:09:04] Speaker 03:
But ultimately, you acknowledge the sloppiness, but are saying that just shouldn't play a role if you meet the very demanding standard.

[00:09:16] Speaker 03:
that there is no other reasonable reading of this claim language, read against what the claim language says about what is releasing what, right?

[00:09:28] Speaker 03:
The outside piece is releasing the inside piece that's going to come out, and it's doing it by expanding

[00:09:34] Speaker 03:
so that it can come out, and the fact that it's also evident from this fact.

[00:09:39] Speaker 03:
You're ultimately saying, you know, really so sorry about the sloppiness, but that shouldn't make a difference.

[00:09:47] Speaker 04:
And, Your Honor, I agree with you.

[00:09:49] Speaker 04:
I mean, that's where we are.

[00:09:51] Speaker 04:
But I think we also need to take into consideration the fact that, at the preliminary injunction hearing, no one, not the appellee, certainly not the appellant, raised the issue of this

[00:10:03] Speaker 04:
mistake in the claim.

[00:10:05] Speaker 04:
All the parties understood what the claim was supposed to claim, and in fact, we believe that makes the error evident.

[00:10:12] Speaker 00:
Can I just ask you just on a little different?

[00:10:15] Speaker 00:
I mean, what's bothering me about this case is the public notice function that the patent is supposed to serve.

[00:10:22] Speaker 00:
And you've got a lot of people out there who are trying to do due diligence in reading the patent and making a lot of investments on the outside based on what the patent says.

[00:10:32] Speaker 00:
That's a hard job given our claim construction disputes that arise with respect to every patent that's ever challenged.

[00:10:39] Speaker 00:
But isn't it particularly hard and challenging if now you're saying the public notice includes everyone out there doing a deep dive and not reading literally what clearly the patent says and noticing and taking notice and then correcting themselves?

[00:10:59] Speaker 00:
Well, we know the patent owner couldn't have meant this, so it means something else.

[00:11:03] Speaker 00:
Doesn't that bump up against the public notice

[00:11:07] Speaker 04:
Function that pat we're supposed to be in You look at the drawing and the purpose of the tool Then there can be no other reason then that Reference to the second part must be in the first part similar to the ultra max case where there was a comma missing, you know And insert that comma

[00:11:33] Speaker 04:
And in fact, we believe that a person with more than air skill in the arc would understand that the reference in the claim to the second part is indeed a reference to the first part.

[00:11:42] Speaker 01:
During your rebuttal time, would you like to save some?

[00:11:44] Speaker 04:
Yes, Your Honor, I would.

[00:11:48] Speaker 04:
Thank you, Your Honor.

[00:12:04] Speaker 02:
May it please the Court, Philip Barnes on behalf of the athlete.

[00:12:07] Speaker 02:
Judge Proves, I'd like to go back to the very first question that you asked my friend about the standards in the third district.

[00:12:13] Speaker 02:
And I believe that this Court has clearly articulated, and Judge Toronto hit on it as well, that the standards are absolutely different.

[00:12:20] Speaker 02:
In 254 and 255, as the statutory scheme is set up, the Patent Office has broader authority than the District Court to correct claims.

[00:12:28] Speaker 02:
Because the Patent Office can look beyond an obvious claim

[00:12:31] Speaker 02:
and can correct and even broaden claims in a certificate of correction, as long as it is a minor typographical error in the patent.

[00:12:39] Speaker 02:
This court in Nova laid out that the authority of the district court to correct the claim is much smaller and narrower.

[00:12:46] Speaker 02:
It's actually a subset of those minor typographical errors that are obvious, basically so obvious that the patent office wouldn't take the time to go to the printing office and issue a certificate of correction.

[00:12:57] Speaker 02:
Because everyone in the world, to your public notice point,

[00:13:00] Speaker 02:
knows exactly what the correction is.

[00:13:03] Speaker 02:
So as Judge Taranto said, the standard is exacting and is extremely narrow because of the public notice function.

[00:13:11] Speaker 01:
Well, I don't see anywhere in NOVO or anywhere else where it says you can only correct, like, commas or typos or grammar errors.

[00:13:19] Speaker 01:
It says the correction is not subject to reasonable debate based on consideration of the claim language and specification.

[00:13:25] Speaker 01:
That's the standard, correct?

[00:13:26] Speaker 01:
Yes, Your Honor, but there are.

[00:13:27] Speaker 01:
Not limited to typos.

[00:13:28] Speaker 02:
No, I'm not saying that.

[00:13:29] Speaker 02:
I'm not arguing that at all.

[00:13:30] Speaker 02:
What I'm saying is that the error must be so obvious that there just is absolutely no, Judge Toronto, I think, said it the best, where you just read the claim and you know without a shadow of a doubt that there is a problem here and we know exactly how to fix it.

[00:13:44] Speaker 03:
So let me just tell you, I truly do not see any reasonable alternative to this correction.

[00:13:51] Speaker 03:
So persuade me otherwise.

[00:13:53] Speaker 02:
Yes, Your Honor.

[00:13:54] Speaker 02:
So if you look at the patent itself, at the appendix, APP,

[00:14:00] Speaker 02:
The problem with respect to the correction is that the discussion solely comes from the preferred embodiment.

[00:14:10] Speaker 02:
That's what Mr. Cabello was referring to in the three drawings and a bit of the discussion.

[00:14:18] Speaker 02:
His entire argument focuses solely on that preferred embodiment and the reading of that.

[00:14:23] Speaker 02:
But this patent, in numerous places, unlike many patents, it just uses a boilerplate to say, you know, oh, the claims aren't limiting.

[00:14:29] Speaker 02:
it goes out of its way to say that this embodiment is not limiting.

[00:14:33] Speaker 02:
And we put forth in the district court an expert's declaration who said this tool could be constructed in other ways.

[00:14:41] Speaker 03:
Right.

[00:14:41] Speaker 03:
I read the expert declaration.

[00:14:42] Speaker 03:
I must say I thought it all seemed without foundation.

[00:14:51] Speaker 01:
That was as nice as you could possibly say.

[00:14:55] Speaker 02:
Well, Your Honor.

[00:14:56] Speaker 02:
The issue is one of ordinary skill in the art can appreciate what a connection profile is.

[00:15:00] Speaker 02:
And there's no doubt that the court did and identified both, which can be seen in the drawings.

[00:15:04] Speaker 02:
There's one at the top of both pieces of the tool.

[00:15:06] Speaker 03:
But that is not to say.

[00:15:08] Speaker 03:
Just reading the claim.

[00:15:11] Speaker 03:
There is the engagement thing.

[00:15:13] Speaker 03:
the connection profile of the down-hole part that's just going to be left in the drilling hole until somebody comes and fishes it out.

[00:15:25] Speaker 03:
By expanding this, you release that.

[00:15:29] Speaker 03:
Now that has to be this thing.

[00:15:32] Speaker 03:
It's not releasing something else from what's on here.

[00:15:36] Speaker 02:
Well, Your Honor, that presumed that

[00:15:39] Speaker 02:
That presumes that that's the only embodiment and the only way that you're going to get it.

[00:15:42] Speaker 03:
What I just said is entirely the claim.

[00:15:45] Speaker 02:
It's entirely the claim.

[00:15:46] Speaker 02:
But you have to read the claim in light of the specification.

[00:15:48] Speaker 02:
And you're presuming that that claim is directed to the one and only preferred embodiment.

[00:15:52] Speaker 02:
It doesn't have to be that.

[00:15:53] Speaker 03:
No, I'm not.

[00:15:54] Speaker 03:
I'm reading the claim language about radially expanding the engagement profile to release the thing that, when it's not expanded, it's holding.

[00:16:05] Speaker 03:
The thing that it's releasing is this.

[00:16:07] Speaker 03:
That's the first part.

[00:16:10] Speaker 02:
correct in that reading of the preferred embodiment.

[00:16:15] Speaker 02:
But, Your Honor, if you go to the specification at column four, line five, and this goes, we sort of jumped down into the errors obvious on the face and now the only way to correct it would be the second part.

[00:16:31] Speaker 02:
I disagree with that part of the test because if you were to look at column four, line 62,

[00:16:40] Speaker 02:
It says, once the piston has been shifted sufficiently, second part may be disengaged from first part by pulling, applying a sufficient force to second part to disengage releaseable engagement profile from connection profile.

[00:16:54] Speaker 02:
And so that second part has a connection profile itself at the top.

[00:16:58] Speaker 02:
And that is where you apply that sufficient force.

[00:17:01] Speaker 02:
So that second part of the claim language, if it has an error in it, it may not necessarily be the first part.

[00:17:07] Speaker 02:
It could be if we're going to what the, you know,

[00:17:10] Speaker 02:
the patentee intended, it could be that they're trying to talk about this section about applying a sufficient force to cause that release, and that sufficient force would be applied to the connection profile of the second part, not the first part.

[00:17:23] Speaker 02:
So it could be that the claim language was intended to say something about the second part as supported by this piece of the specification.

[00:17:30] Speaker 02:
Also, with respect to

[00:17:32] Speaker 02:
That same, just a little further down in that section of the patent, it says, while releasable engagement profile 26 may be resilient and resist outward movement, releasable engagement profile 26 may also be simple engagement members that are able to slide out of the way once piston 32 has been shifted.

[00:17:51] Speaker 01:
I have a question.

[00:17:53] Speaker 01:
Connection profile 16, isn't that the connection profile of the first part, 12, throughout the entire specification?

[00:18:00] Speaker 01:
Is it connection profile 16, the connection profile of the first part?

[00:18:05] Speaker 02:
Yes, Your Honor, that's the connection profile of the first part in the drawings, which is in the preferred embodiment.

[00:18:10] Speaker 01:
No, throughout the whole spec.

[00:18:11] Speaker 01:
Connection profile 16, when they use that number, it's referring to particular drawings.

[00:18:16] Speaker 01:
That is the connection profile of the first part.

[00:18:17] Speaker 02:
But that discussion only appears in one place talking about the preferred embodiment.

[00:18:21] Speaker 01:
The problem that we face is that...

[00:18:24] Speaker 01:
It appears, let's see, 1, 2, 3, 4, 5, 6, 7, 8, 9, the word connection profile, 16, 10, 11, 12, 13, 14, 15, 15 times, to be clear.

[00:18:35] Speaker 01:
Right, but that- Okay, not disappear one time, 15 times.

[00:18:38] Speaker 02:
Sure, Your Honor, but it's in the only preferred embodiment.

[00:18:42] Speaker 02:
And as we know from the Thorner case, the Hillrom case, we don't limit patents to the preferred embodiment in the only way that

[00:18:47] Speaker 01:
is shown to be drawing the... No, you're trying to draw some import from the bottom of column four.

[00:18:55] Speaker 01:
And I'm saying you're failing to appreciate that to the extent column four talks about a connection profile, it actually says connection profile 16.

[00:19:02] Speaker 01:
And connection profile 16 is only the connection profile of the first part.

[00:19:06] Speaker 01:
So it can't have no skilled artisan would read column four to understand the connection profile 16 as being the connection profile of the second part.

[00:19:14] Speaker 02:
I'm not saying that at all.

[00:19:15] Speaker 02:
What I'm saying is that in

[00:19:18] Speaker 02:
The part in column four is that there's a force applied to the second part.

[00:19:24] Speaker 02:
And that force is applied, one of ordinary skill in the art would understand if we look back at the drawings, to the connection profile of the first part, which is tubing connector 22.

[00:19:32] Speaker 02:
That is where that force is applied.

[00:19:34] Speaker 02:
It is applied to a connection profile.

[00:19:37] Speaker 02:
And so what I'm saying is, one of ordinary skilled art.

[00:19:40] Speaker 03:
So in that model, right, you have the string that goes all the way up to the ground, and you come to this two-part thing that's now deep in the hole.

[00:19:50] Speaker 03:
And basically, where it attaches the string, there's this little connection profile, right, way up here.

[00:19:57] Speaker 03:
come down, this is the second part, to where it mates with the first part.

[00:20:02] Speaker 03:
And the release profile, the release engagement profile, sits at this end of the second part.

[00:20:08] Speaker 03:
By expanding, and now I'm talking about the claim language, by expanding this, you're going to release this from the connection profile up by the string?

[00:20:21] Speaker 02:
No, Your Honor, that's not what I'm saying with respect to what's being said in column four.

[00:20:26] Speaker 02:
What we're talking about now is if we get to the point where we say, okay, the error is obvious on the face, how do you correct it?

[00:20:32] Speaker 02:
What I'm saying is if you appreciate that it says the release, the portion about the second part, you could literally delete that entire clause as if it, not just the wording is incorrect of the second part, but the whole phrase.

[00:20:46] Speaker 02:
Maybe that whole phrase wasn't intended to be there.

[00:20:48] Speaker 02:
And you could simply grab a language from down here in this part of the spec and replace it as we did in our brief, our red brief at page 38.

[00:20:58] Speaker 02:
And this is a reasonable correction that changes the scope of the claim and has not been rebutted by the other side.

[00:21:08] Speaker 02:
on the topic of reasonableness at all.

[00:21:10] Speaker 01:
So for example... Well, but here's why.

[00:21:12] Speaker 01:
I mean, you're offering... The question is, how would a skilled artisan read this?

[00:21:18] Speaker 01:
And to the extent that they repeat the error that's in the claim in the spec, they actually attach number 16 to it.

[00:21:25] Speaker 01:
And so a skilled artisan would look and they'd be like, well, no, they clearly... 16 is the connection profile of the first part.

[00:21:31] Speaker 01:
So they attach that number to the error.

[00:21:34] Speaker 02:
Well, Your Honor, I respectfully disagree with every place that happens in fact.

[00:21:38] Speaker 01:
No, in the abstract, you're right.

[00:21:39] Speaker 01:
It doesn't have the number 16, but we're talking about a skilled artist in reading this, and what would they think?

[00:21:43] Speaker 02:
Not just the abstract, Your Honor.

[00:21:44] Speaker 02:
In the summary, which I think is important, because as it goes through, it says, according to an aspect, according to another aspect, according to another aspect, and it lists this language in there.

[00:21:53] Speaker 02:
And then at the very end of it, it says, in other aspects, the features described above

[00:21:58] Speaker 02:
may be combined together in any reasonable combination, as will be recognized by those of skill in the art.

[00:22:04] Speaker 01:
And one of skill in the art, in our case... And you guys weren't even confused, right?

[00:22:08] Speaker 01:
In either in the PI, in the PI, or in your invalidity contentions.

[00:22:12] Speaker 01:
In both cases, you treated this term as applying to the connection profile of the first part.

[00:22:18] Speaker 01:
And if you're confused about where you did it, it's page 478 and 479 of your invalidity contentions.

[00:22:23] Speaker 01:
You all glossed right over this error,

[00:22:26] Speaker 01:
Treated it as meaning exactly what he says a skilled artisan would understand it to me.

[00:22:31] Speaker 02:
Well, your honor What do we do with that with respect to the preliminary injunction?

[00:22:35] Speaker 02:
That is that's obviously a different phase of the case that happens early on where we don't have to come forward with our claim construction positions or disclosing actually it was incumbent on the plaintiff when they're presenting to the court to identify the likelihood of success on the merits and identify all the issues that they would have to overcome and deal with in the case and prevail on them

[00:22:53] Speaker 02:
at the point where they did not do that and put forth just plain and ordinary meaning, all we had to do was beat them on their playground and say, okay, if they're correct on everything, we can still succeed to beat your preliminary injunction by defeating your likelihood of success on the merits and other, you know, equitable issues that came up.

[00:23:10] Speaker 02:
It wasn't strategic.

[00:23:11] Speaker 01:
Okay, fair.

[00:23:12] Speaker 01:
Get to the invalidity contentions.

[00:23:13] Speaker 02:
The invalidity contentions also happened early in the case where we

[00:23:17] Speaker 01:
You treated it as meaning exactly what he says.

[00:23:21] Speaker 01:
It's evident to opus kildoris and it would mean.

[00:23:24] Speaker 02:
We treated it as accepting, in the best case scenario, their argument.

[00:23:30] Speaker 02:
If we're going to apply 102 to it, we would apply that.

[00:23:33] Speaker 02:
But with respect to our- What are you accepting there?

[00:23:35] Speaker 01:
It's your invalidity contentions.

[00:23:37] Speaker 02:
Right.

[00:23:37] Speaker 02:
But in your invalidity contentions, you often accept the argument of the other side as their reading the claim to apply your prior art to it.

[00:23:43] Speaker 02:
And that's what we did with respect to the 102 issues.

[00:23:45] Speaker 02:
In our invalidity contentions, we also raised 112 and indefiniteness and identified this as a problem there.

[00:23:51] Speaker 02:
And so we can make alternative arguments without eliminating our ability to argue indefiniteness during the claim construction phase.

[00:23:57] Speaker 02:
And to assume that we didn't recognize it at the preliminary injunction phase is pure speculation on his part.

[00:24:02] Speaker 02:
He has no idea what we recognized or didn't recognize and what we were going to do strategically in the case.

[00:24:07] Speaker 02:
But nevertheless, to judge Toronto's point, this patent is sloppily drafted, sloppily written, and we

[00:24:14] Speaker 03:
we do face the issue of a public notion problem.

[00:24:20] Speaker 03:
So what case law or principle says on the assumption, which I know you resist, or you say, no, they're accurate.

[00:24:31] Speaker 03:
There isn't only one reasonable correction, or at least one reasonable small correction.

[00:24:38] Speaker 03:
But taken as an assumption, there is, and that any skilled artisan would recognize what this was meant to say.

[00:24:44] Speaker 03:
And it's a very small change.

[00:24:46] Speaker 03:
So it's very much like the very narrow absurdity doctrine in statutory construction law.

[00:24:52] Speaker 03:
If you look at Scalia Garner, chapter 37, it's exactly the same principle.

[00:25:00] Speaker 03:
But on that assumption, what tells us that the repetition of sloppiness should, I don't know, equitably disentitle the patent owner to the construction that every reasonable, every skilled artisan would understand to have been meant?

[00:25:19] Speaker 02:
Well, the hallmarks of a major error versus a minor error from the case law of this court indicates that even sometimes the error can be

[00:25:27] Speaker 02:
so obvious, and you think you might know what it is.

[00:25:30] Speaker 03:
But it's just- But I'm asking you just versus this question, except that we all know what the correction is.

[00:25:39] Speaker 03:
What does the sloppiness, the degree of sloppiness, have to do with whether they then get the benefit of that, or they've lost it because, my goodness, this was sloppy?

[00:25:51] Speaker 02:
Well, Your Honor, I think it falls back on the public notice issue.

[00:25:54] Speaker 02:
I think you would have to say,

[00:25:56] Speaker 02:
Even if it's sloppy, they might know it's sloppy, and maybe a person of ordinary skill might come to that conclusion if they do a deep dive.

[00:26:03] Speaker 02:
But to Judge Pro's point, when you first read it, you have people diligently, and maybe they don't see it as they claim we didn't.

[00:26:11] Speaker 03:
Right, but that certainly means there has to be a very, very demanding standard.

[00:26:17] Speaker 03:
But at least since what is the Supreme Court case, ITS rubber, which Essex is.

[00:26:23] Speaker 03:
Essex.

[00:26:24] Speaker 03:
Yes, sir.

[00:26:26] Speaker 03:
Public notice is either modified a little bit, or because of the very high standard, one concludes to the relevant public, there's no notice problem.

[00:26:37] Speaker 03:
The relevant public would understand.

[00:26:39] Speaker 03:
So assuming the standard is that high, what's the legitimate role of the fact that this mistake was made repeatedly?

[00:26:52] Speaker 02:
Well, according to the person of ordinary skill in the art,

[00:26:56] Speaker 02:
a reader of the patent could say wasn't necessarily a mistake, because it does appear like it could have been intended language.

[00:27:03] Speaker 02:
And so if it was intended, then you read the claim as it's drafted, just like in the Chef America case.

[00:27:10] Speaker 00:
Okay, just moving, just, I mean, the tension, and I agree with Judge Toronto and his observations earlier that the two proceedings and the judicial correction is different, markedly different, different than the PTO correction.

[00:27:23] Speaker 00:
But in this case, as it happens, when they went to the PTO after the district court,

[00:27:30] Speaker 00:
What would happen if they had prevailed before the patent office and they had gotten a correction?

[00:27:36] Speaker 00:
Because as we know, the ramifications of what's done is significant.

[00:27:41] Speaker 00:
Because when the PTO makes this correction, it only applies prospectively, whereas the district court's judicial correction applies retroactively.

[00:27:50] Speaker 00:
So what would we do hypothetically in an instance if the PTO had granted their correction

[00:27:56] Speaker 00:
Where would that leave you?

[00:27:58] Speaker 00:
Would you still be bound by the judicial correction here?

[00:28:02] Speaker 02:
So when you ask, where would that leave us?

[00:28:05] Speaker 00:
In terms of when the effect, what is the effect of the?

[00:28:10] Speaker 02:
So the effect on the lawsuit would be the certificate of correction would be prospective in the claim that happened before their lawsuit as it stood.

[00:28:17] Speaker 02:
wouldn't have the benefit of that claim.

[00:28:19] Speaker 02:
That's what the case law thinks Superior Fireplace says that.

[00:28:22] Speaker 02:
So they would have to.

[00:28:23] Speaker 00:
But wouldn't the judicial correction here, if we were to reverse it and say there should have been judicial correction, wouldn't that override that in terms of just the temporal question on that?

[00:28:32] Speaker 02:
I believe in the temporal question, if you decide that judicial correction applies, and that's the difference between the two.

[00:28:38] Speaker 02:
One is prospective, and one is retroactive for purposes of damages and harm.

[00:28:41] Speaker 01:
I have a dumb question, but when you have a reissue, which is I think what we're talking about in terms of PTO correction, it would be a reissue, wouldn't it?

[00:28:47] Speaker 03:
No, you're right.

[00:28:48] Speaker 03:
It's not a reissue.

[00:28:49] Speaker 03:
With reissue, you could actually turn in the old patent.

[00:28:53] Speaker 02:
Correct.

[00:28:54] Speaker 02:
That's why it's prospective and retrospective.

[00:28:56] Speaker 02:
OK, thank you, counsel.

[00:29:13] Speaker 04:
There are a couple of points that I wanted to raise.

[00:29:15] Speaker 04:
First of all, on the second part, the tubing connector 22.

[00:29:19] Speaker 04:
That's the one way up by the string.

[00:29:22] Speaker 04:
Yes, the one that's connected to the wire line.

[00:29:25] Speaker 04:
That one is never to be released.

[00:29:28] Speaker 04:
And I believe that if the court looks at the tutorials, both the appellants' and the appellee's tutorials, which are found in the joint appendix, and I'm happy to give the court a reference to that,

[00:29:39] Speaker 04:
Those tutorials are found in the appendix at 1226 and 1253.

[00:29:44] Speaker 04:
The appellants at 1226 and the appellees at 1253.

[00:29:50] Speaker 04:
The operation of the two is consistent, and that is that the goal is to release the stock two down hold and retrieve the wire line, and in this case, the second part.

[00:30:02] Speaker 04:
There's no dispute about how this tool operates.

[00:30:05] Speaker 04:
among the appellee and the appellant, and certainly among a person of ordinary or stony art.

[00:30:10] Speaker 04:
Importantly here, the tubing connector is never referred to as a connection profile.

[00:30:16] Speaker 04:
And in fact, if you look at the claim and you look at the Red Book, I believe that the appellees introduced a certain amount of error at Red Book 12.

[00:30:33] Speaker 04:
by showing the profiles of 22 and 16.

[00:30:36] Speaker 04:
That is the connection profile and the tubing connector.

[00:30:42] Speaker 04:
They look similar because they both have an electrical connector.

[00:30:47] Speaker 04:
You'll notice that there's a slight difference in the physical configuration of the tubing connector and the connections profile.

[00:30:56] Speaker 04:
But what is clear in the tutorials and what is clear in the patent is that

[00:31:03] Speaker 04:
The second part is never released.

[00:31:06] Speaker 04:
And the tubing connector 22 is consistently referred to as a tubing connector and never referred to as a connection profile.

[00:31:14] Speaker 04:
And we believe that the court committed reversible error by finding that the tubing connector 22 was a connection profile.

[00:31:22] Speaker 04:
If you looked at the second part of the tube found in figure one, it would be physically impossible.

[00:31:32] Speaker 04:
physically and mechanically impossible for the tubing connector to be released from the releaseable engagement profile, because it's on the same physical element.

[00:31:44] Speaker 00:
One quick question I want to take your time.

[00:31:46] Speaker 00:
Is this patent previous?

[00:31:47] Speaker 00:
I know it's a pretty new patent.

[00:31:49] Speaker 00:
Has it previously been asserted in other litigation?

[00:31:53] Speaker 04:
No, Your Honor.

[00:31:55] Speaker 04:
Our client built this tool and opened up the market for what's called a ballistic, they call it the BRT ballistic

[00:32:00] Speaker 04:
Releasable to they use a an igniter to create a gas source to release the two and we contend that GRE will Maddox develop their to by copying ours and therefore the operation is somewhat similar Mechanically, there's a couple of differences, but there is the first part of the second part The second part is retrieved with wireline.

[00:32:21] Speaker 04:
The first part is left out with the stock, too

[00:32:25] Speaker 01:
Just out of curiosity, is the prosecuting counsel paying your bills for this?

[00:32:29] Speaker 01:
I mean, why has your client got to pay for this?

[00:32:32] Speaker 04:
My client's sitting right back there, you know, and I'm sure he's taking notes and will approach the prosecuting counsel about paying for this issue.

[00:32:39] Speaker 04:
It is a real problem, Your Honor.

[00:32:41] Speaker 04:
And the court asked why we didn't go back to the patent office.

[00:32:45] Speaker 04:
We think it's going to take a lot of time.

[00:32:47] Speaker 01:
But the court will certainly hit on the issue, and that is... They don't seem very sympathetic to you.

[00:32:51] Speaker 04:
They don't.

[00:32:52] Speaker 04:
But it's also the issue of

[00:32:54] Speaker 04:
retroactive damages, recognizing that there is, we would not be entitled to any retroactive damages if the PTO corrupts it, and certainly entitled to it if this court corrupts it.

[00:33:05] Speaker 01:
All right.

[00:33:05] Speaker 01:
Thank you, counsel.

[00:33:06] Speaker 01:
I thank both counsels.

[00:33:07] Speaker 01:
The case is taken under submission.

[00:33:08] Speaker 04:
Thank you.