[00:00:00] Speaker 00:
We have five cases before the court, before this panel this morning.

[00:00:06] Speaker 00:
One of the cases is submitted on the briefs, and we've attended to that.

[00:00:13] Speaker 00:
So we'll hear arguments in four cases this morning.

[00:00:16] Speaker 00:
The first case is Lambeth Magnetic Structures LLC versus Seagate Technology, U.S.

[00:00:23] Speaker 00:
Holdings, Inc.

[00:00:25] Speaker 00:
Mr. Lamkin.

[00:00:27] Speaker 00:
You have reserved five minutes of your time for rebuttal, correct?

[00:00:30] Speaker 00:
That's correct.

[00:00:31] Speaker 00:
Mr. Gross, you have reserved a minute of your time.

[00:00:34] Speaker 00:
Are you going to devote a minute of your time for your cross-appeal?

[00:00:36] Speaker 01:
Yes.

[00:00:37] Speaker 01:
Solely on the issue on the cross-appeal, the enablement.

[00:00:40] Speaker 01:
Your honor, if that issue hasn't been resolved by this court, whether we can cross-appeal, I have a minute.

[00:00:45] Speaker 01:
If it was resolved, I would just let it go.

[00:00:49] Speaker 00:
OK.

[00:00:49] Speaker 00:
OK.

[00:00:50] Speaker 00:
Mr. Namkin, I know you're ready.

[00:01:03] Speaker 04:
Thank you, and may it please the court.

[00:01:05] Speaker 04:
I'd like to focus on three issues today.

[00:01:08] Speaker 04:
First, claim construction.

[00:01:10] Speaker 04:
Dr. Lambeth's invention is, as claim one says, a magnetic material structure.

[00:01:16] Speaker 04:
The district court erroneously added a causation requirement that required one recited element, the uniaxial anisotropy, to result from another, the symmetry-broken structure.

[00:01:27] Speaker 04:
Second, the court excluded is hearsay, atomic level photographs of showing the accused products with the recited structure.

[00:01:34] Speaker 00:
Does the causation claim that you say was added, does that change the nature of the claim entirely to where it's no longer found in the specification?

[00:01:44] Speaker 04:
Yeah, I think it does, because the specification is actually very clear when it's explaining what the claim terms mean, because it has definitions of the claim terms.

[00:01:53] Speaker 04:
So it not only has a definition of

[00:01:55] Speaker 04:
Uniaxial anisotropy, I keep stumbling over that one, that's appendix 107, column 1, 56 to 60.

[00:02:03] Speaker 04:
And it never says that has to result from the symmetry broken structure.

[00:02:06] Speaker 04:
And it has a definition of symmetry broken structure.

[00:02:09] Speaker 04:
And that's at 118, column 23, line 38 to 41.

[00:02:13] Speaker 04:
And it never says that has to cause the uniaxial anisotropy.

[00:02:18] Speaker 04:
But the spec actually defines the phrase together.

[00:02:21] Speaker 04:
Uniaxial, symmetry broken.

[00:02:23] Speaker 04:
That phrase, uniaxial, symmetry broken, all three.

[00:02:25] Speaker 04:
And this is at 118, column 23, lines 34 to 48.

[00:02:29] Speaker 04:
And it says it adopts, quote, the phrase uniaxial, symmetry broken to denote the crystallographic characteristics of these uniaxial and nearly uniaxial BCC dematerials.

[00:02:39] Speaker 04:
Crystallographic characteristics are what the structure is, what its properties are.

[00:02:45] Speaker 04:
It's not why it has those properties.

[00:02:48] Speaker 04:
And so the claim itself, if you look right at claim one, it says it's a magnetic structure comprising three layers.

[00:02:55] Speaker 04:
And then it describes what each of those layers consist of.

[00:02:58] Speaker 04:
And then you go to the specification.

[00:02:59] Speaker 04:
The specification has definitions of what those terms mean.

[00:03:02] Speaker 00:
It seems to me that this importation that you argued, it seems to me that it may be harmless.

[00:03:11] Speaker 00:
I don't see how it's prejudicial.

[00:03:14] Speaker 04:
Oh, no.

[00:03:14] Speaker 04:
It's quite prejudicial, Your Honor.

[00:03:16] Speaker 04:
Under network one, this court

[00:03:18] Speaker 04:
can't affirm unless it can say a reasonable jury would have been required to find non-infringement on other grounds.

[00:03:25] Speaker 04:
And this is quite the opposite here.

[00:03:26] Speaker 04:
This was not only a non-infringement ground that was focused on, presented during closing arguments.

[00:03:32] Speaker 04:
So they told the jury, if you're getting anastropy as a result of other things, then you can't infringe.

[00:03:39] Speaker 04:
So they focus it on closing.

[00:03:40] Speaker 04:
In the testimony, Dr. Fullerton says it comes from something else.

[00:03:44] Speaker 04:
Dr. Nturi says it comes from other things.

[00:03:46] Speaker 04:
Dr. Ross says it comes from other things.

[00:03:48] Speaker 04:
And they focus on our proof.

[00:03:50] Speaker 04:
And they say, and Dr. Fullerton has asked, whether plaintiff's data shows whether anastoptery was a result of symmetry-broken structure.

[00:03:58] Speaker 04:
And he says the data doesn't tell you the origin of the uniaxial behavior.

[00:04:01] Speaker 04:
They urge that we have a proved causation.

[00:04:04] Speaker 04:
And most critical, if you think about it, we have a structural claim.

[00:04:07] Speaker 04:
You can show those structures by saying, look at this picture.

[00:04:11] Speaker 04:
You can see this three-layer structure here.

[00:04:14] Speaker 04:
Look at this.

[00:04:14] Speaker 04:
You can see the hexagonal template with the 111 orientation.

[00:04:18] Speaker 04:
Look here, the BCC has a 110 orientation.

[00:04:21] Speaker 04:
You can point to it.

[00:04:22] Speaker 04:
But on something like causation, you can't point to it and say, look right there.

[00:04:26] Speaker 04:
You can see the symmetry broken structure pushing or punching or pulling or moving in some way in order to cause the uniaxial structure, the uniaxial anastrophe.

[00:04:37] Speaker 04:
So it's really quite difficult to prove it.

[00:04:39] Speaker 04:
And if there's something in our case that was in any way difficult, that would have been the most difficult part.

[00:04:45] Speaker 04:
Our expert was reduced to actually using

[00:04:47] Speaker 04:
a mathematical formula to examine it to try and prove that causal element.

[00:04:50] Speaker 04:
And if there was a weak point, that was it.

[00:04:52] Speaker 04:
This is as prejudicial as prejudicial could be.

[00:04:57] Speaker 04:
If I could turn now to the hearsay issue briefly.

[00:05:00] Speaker 04:
Or actually, maybe I'd back up for just one second.

[00:05:03] Speaker 04:
I want to make one point.

[00:05:04] Speaker 04:
Just grammatically, when you say uniaxial,

[00:05:07] Speaker 04:
and a uni-axial symmetry broken structure.

[00:05:10] Speaker 04:
Those are just adjectives in front of it.

[00:05:12] Speaker 02:
And let me ask you, what are we to make of all of these statements in the specification, and I won't cite to them all, but we all know they're there, to talk so extensively about causation?

[00:05:27] Speaker 04:
Doesn't that suggest something?

[00:05:30] Speaker 04:
Well, first, all those little bullet points that you have on page 51 of their brief, they're actually in a section that says,

[00:05:37] Speaker 04:
detailed description of preferred embodiments, it's not about the meaning of the claim terms.

[00:05:41] Speaker 04:
It's just his explanation of what he observed.

[00:05:43] Speaker 04:
And the expert testified that he explained why he has all that.

[00:05:49] Speaker 04:
And he says that he's an academic.

[00:05:51] Speaker 04:
And he wrote it as an academic paper, because he's trying to teach the audience, page 30,231.

[00:05:59] Speaker 04:
So he's explaining that I just did this to try and explain and increase the knowledge of the art.

[00:06:05] Speaker 04:
But skilled artisans don't actually have to understand why their inventions work.

[00:06:10] Speaker 04:
The inventors don't have to know what the theory underlying it.

[00:06:13] Speaker 04:
They just have to set forth something that's a useful invention that's enabled.

[00:06:16] Speaker 02:
What do you say is the strongest point in the specification that supports your argument that we don't have to think about causation, it's just purely structure?

[00:06:31] Speaker 02:
Can you point to something in the spec that says, here's what shows we're really talking solely about structure here, notwithstanding all of these various citations and discussions about causation?

[00:06:43] Speaker 04:
So I think that there's three things I'd point to that are very specific.

[00:06:47] Speaker 04:
And that is that when we're talking about the meaning of the claims and the specifications talking about the meaning of the words, it defines uniaxial anisotropy.

[00:06:56] Speaker 04:
And it defines it without causation.

[00:06:57] Speaker 04:
It defines symmetry broken.

[00:06:58] Speaker 04:
It defines it without causation.

[00:07:00] Speaker 04:
And then it defines, and this is 108, or excuse me, 118.

[00:07:03] Speaker 04:
I'm sorry, where's this?

[00:07:04] Speaker 04:
118, column 23, lines 34 to 38, right?

[00:07:10] Speaker 04:
And it says that it adopts the phrase uniaxial symmetry broken to denote the crystallographic characteristics of these uniaxial and nearly uniaxial BCC materials.

[00:07:20] Speaker 04:
Crystallographic characteristics.

[00:07:22] Speaker 04:
That's what it is, what it does, its properties.

[00:07:26] Speaker 04:
It's not the scientific theory as to why, what within the claims causes something else.

[00:07:32] Speaker 04:
And you just simply can't get out of the phrase uniaxial symmetry broken structure or causation element.

[00:07:37] Speaker 04:
If I say I have a fast red car,

[00:07:39] Speaker 04:
It's not fast because it's red or red because it's fast.

[00:07:43] Speaker 04:
It's a car that's both fast and red.

[00:07:44] Speaker 04:
It's exactly the same thing we were talking about.

[00:07:46] Speaker 04:
Uniaxial, symmetry, broken structure.

[00:07:48] Speaker 04:
It's a structure that's both.

[00:07:49] Speaker 02:
Are there cases where we've looked at the Chicago elements of style?

[00:07:52] Speaker 02:
I saw that cited in the brief.

[00:07:55] Speaker 02:
Yes.

[00:07:55] Speaker 04:
So I think this quote applies ordinary meaning.

[00:07:58] Speaker 04:
And the ordinary meaning of these two adjectives followed by the noun, where they're both defined adjectives,

[00:08:05] Speaker 04:
The fact that it's uniaxial and symmetry broken, followed by a noun, those ordinarily mean that those two things modify the noun.

[00:08:12] Speaker 04:
It's a fast red car, it's fast and red, but it's not fast because it's red or red because it's fast.

[00:08:17] Speaker 04:
That's the ordinary meaning.

[00:08:18] Speaker 04:
But if you have any doubt, appendix 118, column 23, lines 34 to 38 tell you that it adopts the phrase, this is the whole phrase together, uniaxial, symmetry broken, to denote the crystallographic characteristics.

[00:08:30] Speaker 04:
And I would note that if you go to the abstract, which Seagate cites to say, oh, it has to just be the symmetry broken structure that causes this, it actually starts by identifying this page 91 of the appendix.

[00:08:43] Speaker 04:
It starts by identifying the invention.

[00:08:45] Speaker 04:
91 of the appendix.

[00:08:48] Speaker 04:
And it starts, and it says,

[00:08:50] Speaker 04:
a thin film structure, magnetic devices.

[00:08:53] Speaker 04:
So we're already starting off with structure.

[00:08:55] Speaker 04:
But then it goes on at length to explain everything that's in there.

[00:08:59] Speaker 04:
And it says that the invention provides a body centered cubic symmetry broken structure.

[00:09:04] Speaker 04:
So you've got body centered cubic, BCC, symmetry broken, grown on a hexagonally shaped templates.

[00:09:10] Speaker 04:
So again, now we've got our templates there.

[00:09:12] Speaker 04:
In the presence of a symmetry breaking mechanism, so you've got that deposition on an angle or in a magnetic field,

[00:09:19] Speaker 04:
is provided to promote oriented uniaxial properties.

[00:09:22] Speaker 04:
So all these things are done to promote oriented uniaxial properties.

[00:09:27] Speaker 04:
And then four lines from the bottom, it actually goes on.

[00:09:29] Speaker 04:
It says right after it says the words uniaxial, magnetic properties, it says where they're from.

[00:09:35] Speaker 04:
It says uniaxial magnetic properties are from successively deposited film layers that result in a new magnetic layer structures.

[00:09:43] Speaker 04:
So again, the abstract pointing to a lot of different things that are causal here, a lot of different things.

[00:09:48] Speaker 04:
And you look at the claim.

[00:09:49] Speaker 04:
The claim recites these things because it's a structure.

[00:09:52] Speaker 04:
He didn't claim why the structure works.

[00:09:54] Speaker 04:
He claimed the structure he invented that works.

[00:09:57] Speaker 00:
Could you address some of the evidentiary issues?

[00:10:01] Speaker 04:
Yes.

[00:10:01] Speaker 04:
So I could turn to the hearsay issue in particular.

[00:10:04] Speaker 04:
I think it's well established that hearsay is the statement by a person.

[00:10:08] Speaker 04:
I don't think any disputes that.

[00:10:10] Speaker 04:
And that's common ground.

[00:10:11] Speaker 04:
And that's why photographs, that's why machine measurements aren't hearsay.

[00:10:16] Speaker 04:
The district court here came out with the opposite conclusion.

[00:10:19] Speaker 04:
And I think in the district court basically said photographs are hearsay and excluded our atomic-level detailed photos showing the accused structures.

[00:10:26] Speaker 04:
And I think if the court starts with page 30,392, I hate that volume, too, the appendix.

[00:10:31] Speaker 00:
The problem here is that your expert annotated or manipulated the pictures, right?

[00:10:38] Speaker 04:
No, that actually isn't the problem.

[00:10:39] Speaker 04:
If the court would turn to that page of the transcript, what we're actually talking about are unannotated images.

[00:10:46] Speaker 04:
Line 13.

[00:10:47] Speaker 04:
On page 30,392, we're talking about pictures taken of a Seagate Drive with a microscope.

[00:10:53] Speaker 04:
And the judge asks, well, what you created by the expert, what do you mean, other than taking the picture?

[00:10:58] Speaker 04:
And nobody says, oh, it was annotated.

[00:11:00] Speaker 04:
But if you turn to the next page, Lambeth Council, this is on page 30,393, says, where Seagate's drawn on our materials, or we have drawn on our materials, we are going to put that in as a demonstrative.

[00:11:13] Speaker 04:
So if it's drawn on, it's a demonstrative.

[00:11:15] Speaker 04:
Line 17.

[00:11:17] Speaker 04:
But this is actually just a photograph, which is not hearsay.

[00:11:21] Speaker 04:
Line 25.

[00:11:22] Speaker 04:
This is evidence, photographs, pictures of the actual microscope the expert used.

[00:11:26] Speaker 04:
Line 8 on page 30394.

[00:11:28] Speaker 04:
A sample taken from the Seagate Drive.

[00:11:30] Speaker 04:
This is the actual thing that was analyzed by the experts.

[00:11:33] Speaker 04:
And there are pictures of it.

[00:11:34] Speaker 04:
That's what was at issue when the district court ruled.

[00:11:37] Speaker 04:
But it gets even clearer if you turn to where we filed a motion before the next day of testimony.

[00:11:41] Speaker 04:
We filed something called a motion to admit addressing the issue.

[00:11:44] Speaker 04:
page 21,666.

[00:11:45] Speaker 04:
Take the picture there.

[00:11:48] Speaker 04:
It's an atomic level picture of the drive, just the photo.

[00:11:52] Speaker 04:
And we say, well, that's admissible, because this is what the experts saw when you looked through the microscope.

[00:11:58] Speaker 04:
And then we contrast on page 21,667.

[00:12:00] Speaker 04:
There's a picture of this annotator.

[00:12:02] Speaker 04:
And we say, look, this one has been annotated with the words no match.

[00:12:06] Speaker 04:
That one is hearsay, because it has an out-of-court statement in it.

[00:12:09] Speaker 04:
It's not a mirror picture.

[00:12:12] Speaker 04:
And so when the motions argue the next day,

[00:12:14] Speaker 04:
We get up before the court, 30904.

[00:12:16] Speaker 04:
So there's three different parts here, unfortunately, where this comes up.

[00:12:19] Speaker 04:
And we'd say the counsel says, we're talking about images Dr. Clark took.

[00:12:24] Speaker 04:
Pictures of TK drives he took using a standard methodology.

[00:12:28] Speaker 04:
No mention of annotations in that colloquy.

[00:12:29] Speaker 04:
It's not brought up at all.

[00:12:31] Speaker 04:
The court says pictures prepared by an expert in anticipation of litigation are in fact hearsay.

[00:12:36] Speaker 04:
Not because of annotations.

[00:12:37] Speaker 04:
The reason is they do speak to the truth of the matter asserted.

[00:12:39] Speaker 04:
the whole notion of annotations doesn't come up until post-trial motions.

[00:12:44] Speaker 04:
But even then, when we filed our motion to admit, we said, quote, to the extent Dr. Clark's images include annotations that Dr. Clark added after taking the images, LMS is agreeable to removing those annotated images.

[00:12:57] Speaker 04:
So if someone has a problem with the annotated images, and this is on page 21667,

[00:13:04] Speaker 04:
If anybody had a problem with those images, we said, any annotations, we'll take them out.

[00:13:09] Speaker 04:
But the district court in rejecting the new trial motion says, she adopted footnote six and Seagate's brief, says, you never offered to remove them.

[00:13:18] Speaker 04:
That's just a clear error.

[00:13:20] Speaker 04:
And even if we hadn't offered to remove them,

[00:13:21] Speaker 04:
The annotations issue just didn't arise during the trial.

[00:13:25] Speaker 04:
You can't fault us for not removing annotations that nobody had objected to.

[00:13:29] Speaker 00:
We were very clear that we had objected to.

[00:13:30] Speaker 00:
You're into your rebuttal.

[00:13:31] Speaker 04:
Oh, I apologize.

[00:13:32] Speaker 04:
If the court has no further questions now, I'll reserve whatever remains of my time for rebuttal.

[00:13:35] Speaker 00:
Thank you.

[00:13:36] Speaker 00:
Thank you, counsel.

[00:13:50] Speaker 01:
Oh my god, I'm just gonna grab my other stack.

[00:14:04] Speaker 01:
May it please the court, David Gross on behalf of Seagate.

[00:14:07] Speaker 01:
And with the court's permission, I'm going to jump right into your honor's question at the beginning of the oral argument, as well as your honor's question focusing on the specification.

[00:14:16] Speaker 01:
And I want to be very clear that the invention that is claimed based on the specification, the fundamental feature what's claimed is the causal relationship.

[00:14:27] Speaker 01:
In other words, it's not there's an invention and then somewhere in the spec they kind of mention in passing something about causation to expand scientific knowledge.

[00:14:35] Speaker 01:
The invention is I have discovered that there's this set of variants that are unequal and

[00:14:43] Speaker 01:
They don't all yield uniaxial behavior.

[00:14:45] Speaker 01:
Some do, some don't.

[00:14:47] Speaker 01:
But I found some that yield uniaxial behavior.

[00:14:50] Speaker 01:
And that's my invention that I'm so excited about.

[00:14:52] Speaker 01:
And Your Honor mentioned it.

[00:14:53] Speaker 03:
Why isn't this just an articulation of a structure that has both uniaxial and broken symmetry?

[00:14:59] Speaker 01:
Your Honor, there could have been a claim, it would not have been allowed, that said my invention is limitation number one, any uniaxial behavior.

[00:15:06] Speaker 01:
And then down at the bottom, by the way, if it's also symmetry broken, that's the invention.

[00:15:11] Speaker 01:
It didn't do that, Your Honor.

[00:15:13] Speaker 01:
It said uniaxial symmetry broken structure.

[00:15:16] Speaker 01:
So the question for Your Honor is, well, why was that coined phrase put there?

[00:15:22] Speaker 01:
Why have a phrase uniaxial symmetry broken structure?

[00:15:26] Speaker 01:
And to come back to where we were at the beginning, they said in the specification, the patentee, we adopt the phrase uniaxial symmetry broken.

[00:15:34] Speaker 01:
So, Your Honor, we're bringing these together.

[00:15:35] Speaker 01:
We're not separately claiming them.

[00:15:37] Speaker 01:
Special quoted phrase was clearly a coined phrase under federal circuit law to denote the crystallographic characteristics of these uniaxial materials.

[00:15:46] Speaker 03:
Sure, characteristics.

[00:15:47] Speaker 03:
I don't understand your argument.

[00:15:49] Speaker 03:
Because the whole point of this is uniaxial was known to be preferred for some of this anyway.

[00:15:55] Speaker 03:
And what they were looking for was something that had, and I'm going to mess up the science, so go with me.

[00:15:59] Speaker 03:
If I've got it completely wrong, correct me.

[00:16:01] Speaker 03:
But if I'm in the ballpark,

[00:16:03] Speaker 03:
try to go with my question.

[00:16:04] Speaker 03:
They were looking for something that would have greater magnetization force or something like that so they could go from horizontal to vertical coating.

[00:16:11] Speaker 03:
Is that right?

[00:16:13] Speaker 01:
Yeah, the record is Seagate was doing that.

[00:16:16] Speaker 03:
And the discovery was that broken symmetry structures would do it, but they still needed it to be uniaxial.

[00:16:23] Speaker 03:
So the discovery is that this broken symmetry structure has better magnetization, but you only want to use the ones that have uniaxial

[00:16:35] Speaker 03:
behavior as well.

[00:16:36] Speaker 03:
It's not that the structure of the broken symmetry causes it.

[00:16:40] Speaker 03:
As I understand it, the whole point of the symmetry structure is it provides greater magnetization.

[00:16:45] Speaker 03:
You still just need it to be uniaxial for the way the head flips around.

[00:16:51] Speaker 01:
Your Honor, respectfully, if you look at the specification and we look at this, if I may, Your Honor, I appreciate the court's question.

[00:17:00] Speaker 01:
But I want to go to the point of counsel kept referring to this phrase.

[00:17:04] Speaker 01:
these materials.

[00:17:06] Speaker 01:
So uniaxial symmetry broken refers to these materials.

[00:17:09] Speaker 01:
And I want to make the point to your honor, these materials are discussed in the columns preceding that.

[00:17:16] Speaker 01:
And over and over again, they say there are materials that are symmetry broken that yield uniaxial behavior, and there are materials that don't.

[00:17:25] Speaker 01:
Meaning, what I'm claiming when I say uniaxial symmetry broken are materials that result in uniaxial behavior, not

[00:17:34] Speaker 01:
Generally speaking, uniaxial.

[00:17:35] Speaker 03:
I don't see that it says, where it directly says that the symmetry broken causes uniaxial.

[00:17:43] Speaker 03:
What they need is a symmetry broken structure that has a uniaxial characteristic.

[00:17:49] Speaker 01:
Sure, I hear you, Your Honor.

[00:17:50] Speaker 03:
You agree a structure can have two different, you know, characteristics, right?

[00:17:56] Speaker 01:
Any structure can have different characteristics, Your Honor.

[00:17:58] Speaker 03:
And they don't have to be caused by each other.

[00:17:59] Speaker 01:
Right, but Your Honor, to be clear, over,

[00:18:02] Speaker 01:
and over, and over again, leading up to this definition that Your Honor was discussing and Your Honor asked about.

[00:18:08] Speaker 01:
They were emphasizing the causal relationship between variance.

[00:18:13] Speaker 01:
The variance are literally, when you see variance, that's a symmetry-broken structure, a set of variance.

[00:18:20] Speaker 01:
And they're saying there are variants that cause, yield, result in uniaxial behavior, Your Honor, and there are variants that don't.

[00:18:26] Speaker 01:
So they are emphasizing the exact causation question Your Honor is raising.

[00:18:33] Speaker 03:
And that says they cause?

[00:18:35] Speaker 01:
The variance?

[00:18:35] Speaker 01:
Yeah, it has, Your Honor.

[00:18:36] Speaker 01:
It's result in, yield, cause.

[00:18:41] Speaker 01:
We have it in our brief.

[00:18:42] Speaker 01:
Each of these paired variance not only results in uniaxial energy function.

[00:18:46] Speaker 01:
But what page are you looking at?

[00:18:48] Speaker 01:
Page 30, and I have a brief.

[00:18:49] Speaker 03:
And we have four.

[00:18:50] Speaker 03:
Can you point to it in the specification?

[00:18:51] Speaker 01:
Yes.

[00:18:52] Speaker 01:
Yes, Your Honor.

[00:18:52] Speaker 01:
It is in 1928-29.

[00:18:55] Speaker 01:
And then it's 1956-58.

[00:18:57] Speaker 01:
That's results in, yield, and then

[00:19:02] Speaker 01:
1960-63, cannot yield.

[00:19:04] Speaker 01:
24-23, others yield.

[00:19:09] Speaker 01:
I'm sorry, Your Honor.

[00:19:09] Speaker 01:
I'll go slow.

[00:19:10] Speaker 01:
We'll start with 1928-29, results in variance, results in uniaxial energy.

[00:19:16] Speaker 01:
1928-29.

[00:19:18] Speaker 01:
And then they do it again and again, Your Honor.

[00:19:22] Speaker 01:
And they are very clear that that's the invention.

[00:19:25] Speaker 01:
I do want to get to one quick thing, Your Honor, if I may.

[00:19:27] Speaker 01:
And that is, in the court below,

[00:19:31] Speaker 01:
Joint Appendix 12587.

[00:19:32] Speaker 01:
So I'm turning to 12587 of the Joint Appendix.

[00:19:38] Speaker 01:
This is what their experts said.

[00:19:41] Speaker 01:
Judge Hughes, this gets to your question.

[00:19:42] Speaker 01:
Their expert went over this dissertation and effectively addressed Judge Rainer's initial question, is causation in this invention?

[00:19:49] Speaker 01:
And Judge Shaw's question, what does this get to?

[00:19:52] Speaker 01:
I want to read you what their experts said on Joint Appendix page 12587.

[00:19:56] Speaker 01:
This is before trial.

[00:19:59] Speaker 01:
In the overview of the patent,

[00:20:01] Speaker 01:
their expert went through the specification line by line, discussed the specification, and in the overview of the patent at page Joint Appendix 12587, their expert said,

[00:20:14] Speaker 01:
First of all, if you go to the middle, about five lines down, this symmetry breaking can result in uniaxial anisotropy.

[00:20:21] Speaker 01:
In jet shoes, there's four sites there.

[00:20:23] Speaker 01:
And in those sites, you'll see the same phrase you and I are talking about, uniaxial symmetry broken.

[00:20:28] Speaker 01:
In fact, two of the sites have uniaxial symmetry broken structure.

[00:20:31] Speaker 01:
So this is their expert going over the specification, literally talking about specification.

[00:20:38] Speaker 01:
The expert then says external sources of anisotropy

[00:20:43] Speaker 01:
are distinct from the focus of the 988 patent.

[00:20:46] Speaker 01:
And then look at what their expert says at the end, which concentrates on and claims the invention, and this goes right to your question, Judge Arena, of uniaxial, anisotropic, BCC thin-realm materials as a result of symmetry breaking, literally saying the invention is the causation.

[00:21:06] Speaker 01:
And Your Honor, this is the overview of the patent.

[00:21:08] Speaker 01:
citing the specification.

[00:21:10] Speaker 01:
So there's a huge waiver issue.

[00:21:11] Speaker 00:
Why then is the causation not written within the claim?

[00:21:14] Speaker 01:
Well, what they decided to do here is say there's symmetry broken structures.

[00:21:20] Speaker 01:
We're not claiming all of them.

[00:21:22] Speaker 01:
So we're not claiming all symmetry broken structures.

[00:21:24] Speaker 01:
Because remember, some yield uniaxial and some don't.

[00:21:28] Speaker 01:
These variants yield uniaxial, some don't.

[00:21:31] Speaker 01:
What we're going to claim is uniaxial symmetrical constructors.

[00:21:36] Speaker 03:
How would you write it if you were just claiming the structure and not the one resulting in the other?

[00:21:40] Speaker 01:
Well, you could certainly have uniaxial up here.

[00:21:43] Speaker 01:
And you could have symmetry-broken structures some other place.

[00:21:46] Speaker 01:
But they put this phrase together to capture their invention, that it's not all symmetry-broken structures.

[00:21:51] Speaker 01:
It's only uniaxial symmetry-broken structures.

[00:21:54] Speaker 01:
And those are the variants that result in.

[00:21:56] Speaker 03:
That doesn't tell me anything about whether it's caused by it.

[00:21:59] Speaker 03:
That's the problem.

[00:22:00] Speaker 03:
I can show it in some of the specification language.

[00:22:02] Speaker 03:
But to me, if we're just looking at the quantum language, you read it as uniaxial and broken symmetry.

[00:22:08] Speaker 01:
Well, Your Honor, I would say this, is that when you take a coin phrase that's literally never been used before, never been used since, and you say there's these symmetry-broken structures that I'm coining, by the way, they need to be uniaxial, and then you explain that over and over again as having a causal relationship.

[00:22:24] Speaker 03:
I mean, the problem is, in the context of the invention, it makes sense that it's a structure that has to, he invented the broken structures, but it only works for its purpose if it's uniaxial.

[00:22:40] Speaker 01:
Your Honor, what the specification does not do is say, I mean something else.

[00:22:46] Speaker 01:
The causal relationship is the invention.

[00:22:49] Speaker 01:
That is the fundamental feature of the invention and that's why it's claimed the way it is.

[00:22:54] Speaker 01:
That's what they're trying to do.

[00:22:55] Speaker 01:
So it's a coin term.

[00:22:57] Speaker 01:
And if you look at the specification, their expert is right.

[00:22:59] Speaker 01:
And by the way, on appeal, they're just ignoring what their expert said.

[00:23:03] Speaker 01:
But if their expert is right, they lose.

[00:23:05] Speaker 01:
I want to turn to the foreign prosecution history as well, because remember, it's a coin term.

[00:23:09] Speaker 01:
So I think it's important to look at what they said.

[00:23:11] Speaker 00:
Is it a problem that the coin term is a term of function that describes function as opposed to structure?

[00:23:20] Speaker 00:
And the rest of the claim, I mean, it just seems rather odd to have

[00:23:25] Speaker 00:
One claim term that goes to the function of the claim is stuck right in between what's really 100% a structural claim.

[00:23:36] Speaker 01:
I hear you, Your Honor.

[00:23:38] Speaker 01:
When we constructed the hexagonal 1-1 template, you saw the phrase directs the growth.

[00:23:43] Speaker 01:
So you're going to see some language about what's happening.

[00:23:46] Speaker 01:
in the specification and also in the claim.

[00:23:49] Speaker 01:
Here, there is different ways to claim it, but they had a coined phrase.

[00:23:54] Speaker 01:
And when you look at how the coined phrase is used in the specification, it is referring to this fundamental feature of causation.

[00:24:00] Speaker 01:
Their expert literally agreed and said it explicitly.

[00:24:04] Speaker 01:
And I want to go to the foreign prosecution for one minute, which is on Joint Appendix 02100.

[00:24:11] Speaker 01:
The Joint Appendix 02100.

[00:24:17] Speaker 01:
And this is where they're talking to the foreign patent office.

[00:24:19] Speaker 01:
And in a coined term, this is literally the only other time anyone has ever talked about this term.

[00:24:25] Speaker 01:
There's no literature after.

[00:24:26] Speaker 01:
There's no literature before.

[00:24:28] Speaker 01:
And on 02100, they're talking about the application.

[00:24:32] Speaker 01:
It's the same specification as what's before this court.

[00:24:37] Speaker 01:
So it's a foreign patent application, same specification.

[00:24:42] Speaker 01:
And it says, hence, the application not only describes that there are specific subsets that could be used to yield good uniaxial properties, which is what I was talking to you about, Judge Hughes, it clearly emphasizes that there are these variants that yield uniaxial behavior.

[00:24:56] Speaker 01:
But then it goes down and talks about a variant subset.

[00:24:59] Speaker 01:
And this is the one that results in, results in uniaxial behavior.

[00:25:04] Speaker 01:
So just like their expert used result in, in their expert's discussion of the patent and the specification, they're using results in in their discussion.

[00:25:14] Speaker 01:
And they go on to say, results in uniaxial magnetic behavior, as this is the lowest energy function, this subset is referred to as a uniaxial symmetry-broken structure.

[00:25:26] Speaker 01:
So once again, they're saying the invention is there's these variants that result in uniaxed behavior.

[00:25:32] Speaker 01:
I appreciate the point that there's many different ways to draft it.

[00:25:35] Speaker 01:
But we believe when you have a point term where you say, I'm not just inventing all variants.

[00:25:39] Speaker 01:
I'm inventing only uniaxial variants.

[00:25:41] Speaker 01:
And the way you use that term and specification emphasizes the causal relationship.

[00:25:46] Speaker 01:
And then the expert emphasizes the causal relationship.

[00:25:49] Speaker 01:
And then they go to foreign prosecution.

[00:25:51] Speaker 01:
They emphasize the causal relationship.

[00:25:53] Speaker 01:
the time that the expert was doing it, literally mentioning uni-axial symmetry broken structure.

[00:25:58] Speaker 01:
Those are the sites that the expert puts in his declaration in that paragraph.

[00:26:02] Speaker 01:
And here, they're using the exact same phrase.

[00:26:04] Speaker 01:
We think there's a fundamental relationship.

[00:26:07] Speaker 01:
Two other points, if I may, and that is on the pictures, I'll just make the point that

[00:26:13] Speaker 01:
At trial below, they held up a thumb drive, and they had all of these pictures that had been created by their expert, many of which had annotations, and they said that they'd drawn on them and the judge didn't allow them in.

[00:26:30] Speaker 01:
Then they continued to try to get the annotations in, and a motion for reconsideration effectively.

[00:26:36] Speaker 01:
The judge said no.

[00:26:38] Speaker 01:
The idea that somewhere in a brief during a big trial they mentioned in passing that they'd be willing to take away the annotations is not something for this court, I think, to rule, to try to determine if the judge was wrong when

[00:26:50] Speaker 01:
The judge didn't pick them up on their possible offer to remove annotations.

[00:26:55] Speaker 01:
That's not an appropriate appeal issue.

[00:26:58] Speaker 01:
The judge was exercising her discretion.

[00:27:00] Speaker 00:
Was there any testimony on the photographs?

[00:27:03] Speaker 01:
Oh, there's extensive.

[00:27:04] Speaker 01:
Their experts went through every single photograph, every single annotation.

[00:27:07] Speaker 00:
On the annotations?

[00:27:08] Speaker 01:
All of them.

[00:27:09] Speaker 01:
Everything.

[00:27:10] Speaker 01:
And they went through everything.

[00:27:11] Speaker 01:
They did it in closing.

[00:27:12] Speaker 01:
The judge said you can use them as much as you want, and they did.

[00:27:16] Speaker 01:
The annotations, which, by the way, are in their brief.

[00:27:18] Speaker 01:
If you look at their brief, the brief has annotated photographs.

[00:27:21] Speaker 01:
And that's clear hearsay.

[00:27:23] Speaker 01:
And the judges, in their discretion, when someone holds up a thumb drive and talks about what we wrote on exhibits,

[00:27:27] Speaker 01:
The idea that this judge made some sort of clear error is just, we don't think, reasonable.

[00:27:31] Speaker 01:
I want to finish.

[00:27:32] Speaker 03:
You mentioned cross-appeal.

[00:27:33] Speaker 01:
Yes, I've been.

[00:27:34] Speaker 03:
Do you have a counterclaim or a declaratory judgment action?

[00:27:37] Speaker 01:
We do not.

[00:27:38] Speaker 03:
Then why is it a proper cross-appeal?

[00:27:40] Speaker 01:
Well, there is a sentence in a Federal Circuit case.

[00:27:43] Speaker 03:
I know.

[00:27:43] Speaker 03:
But you're not asking to change the judgment.

[00:27:46] Speaker 03:
It's a defense to infringement.

[00:27:48] Speaker 03:
And so it's just an alternative grounds for affirmance.

[00:27:50] Speaker 01:
Well, it is an alternative grounds for affirmance.

[00:27:52] Speaker 03:
And you don't get a cross-appeal on an alternative grounds for affirmance.

[00:27:56] Speaker 01:
And Your Honor.

[00:27:57] Speaker 01:
The reason we raised it is because there was a sentence that suggested if we didn't raise it and we were trying to argue in good faith why the law is unclear, that's where we are.

[00:28:09] Speaker 01:
Had this court ruled before, I would not have saved a minute.

[00:28:12] Speaker 01:
And I certainly don't want to show any disrespect.

[00:28:14] Speaker 01:
But if I may go to enablement for just a minute.

[00:28:17] Speaker 03:
No, I don't want to hear it unless they do.

[00:28:19] Speaker 03:
I don't think it's a problem.

[00:28:19] Speaker 03:
I mean, it's a defense if you want to argue it.

[00:28:24] Speaker 01:
What if may I may I use my time then and not have I'll just won't say I would use your time on the merits.

[00:28:28] Speaker 01:
That's what I'm going to do.

[00:28:29] Speaker 01:
So I'm going to I'm here by dropping any bottle because we can assume the cross appeals been dismissed and I'm just drawing your counterclaim.

[00:28:37] Speaker 00:
I'm sorry.

[00:28:38] Speaker 00:
You were drawing your counterclaim.

[00:28:39] Speaker 00:
We just want to argue.

[00:28:40] Speaker 01:
No, we haven't had our claim right.

[00:28:42] Speaker 01:
Correct, Your Honor.

[00:28:43] Speaker 01:
We have an affirmative defense.

[00:28:44] Speaker 01:
And we are absolutely allowed to argue that as an alternative grounds for removal.

[00:28:47] Speaker 01:
And I'm going to do that now.

[00:28:48] Speaker 01:
And I'm not going to come back because, Judge Hughes, I'm assuming we've effectively ruled in this court that that's gone.

[00:28:55] Speaker 01:
And so what I want to make the point is they have these broad materials.

[00:28:59] Speaker 01:
They identify all these materials.

[00:29:01] Speaker 01:
that you can mix together.

[00:29:03] Speaker 01:
Many of them won't work.

[00:29:05] Speaker 01:
They say you've got to get the processing conditions just right.

[00:29:08] Speaker 01:
And the way they solve it, after we show that it's lack of enablement, is they have an expert says that there's a handbook, doesn't identify what it is, and then says, you know, there's this thing you can do involving sizing, pairing up the sizing.

[00:29:21] Speaker 01:
And they add a limitation to the claim that suggests that the claim really is about the size of atoms.

[00:29:27] Speaker 03:
So let me ask you this.

[00:29:35] Speaker 03:
right, because we would affirm a non-infringement because the jury found no infringement based on the claim construction.

[00:29:42] Speaker 01:
Yes, and we're assuming the cross-affield has been dismissed.

[00:29:44] Speaker 03:
So yes.

[00:29:44] Speaker 03:
So if we disagree with you on claim construction and send it back for a new trial, you would then have different arguments on enablement because it would be a different claim construction.

[00:29:54] Speaker 01:
100%, Your Honor.

[00:29:55] Speaker 01:
100%.

[00:29:55] Speaker 01:
And I will say that in Denix,

[00:29:59] Speaker 01:
is clear that you can't just kind of make up some ordinary spill in the art claim limitation that you then use.

[00:30:06] Speaker 01:
to fight off enablement, their expert literally just said, there's something about sizing atoms.

[00:30:13] Speaker 01:
Just kind of mentioned it.

[00:30:14] Speaker 01:
Didn't even talk about the specification.

[00:30:16] Speaker 01:
And then said, because of that, you'd look at handbooks.

[00:30:18] Speaker 01:
And that's how they got out of it.

[00:30:19] Speaker 01:
We think as a matter of law under this court's precedent, this court could also affirm.

[00:30:23] Speaker 01:
And we also think, for reasons in our briefs, that these errors, there is four reasons that we didn't infringe.

[00:30:29] Speaker 01:
And that rises to harmless error under either standard.

[00:30:31] Speaker 01:
Thank you.

[00:30:32] Speaker 01:
Appreciate it.

[00:30:32] Speaker 00:
Thank you, Tom.

[00:30:39] Speaker 00:
You have a couple of minutes.

[00:30:41] Speaker 00:
We'll restore you back to three minutes.

[00:30:44] Speaker 04:
Thank you, Your Honor.

[00:30:45] Speaker 04:
I'd like to emphasize from the beginning, causation isn't in the claims.

[00:30:51] Speaker 04:
Especially because it's a coin phrase, one would look to the definitions in the specification of what the coin phrases mean.

[00:30:58] Speaker 04:
And uniaxial anisotropy is right there defined.

[00:31:03] Speaker 04:
symmetry broken is defined.

[00:31:05] Speaker 04:
Neither says it's caused by the other.

[00:31:08] Speaker 04:
In fact, the phrase uniaxial symmetry broken is defined and used to denote the crystallographic characteristics.

[00:31:14] Speaker 04:
It's not a causal thing.

[00:31:16] Speaker 04:
It's not the theory underlying it.

[00:31:18] Speaker 04:
It's a structure.

[00:31:18] Speaker 03:
The claim itself is a structure.

[00:31:20] Speaker 03:
What did he do?

[00:31:22] Speaker 03:
I mean, he just puts a lot of references to the broken symmetry result yields.

[00:31:28] Speaker 03:
I don't think there's a ton of causes, but I think he pointed me to at least one.

[00:31:32] Speaker 03:
How do we get around?

[00:31:34] Speaker 03:
I understand your argument that this structure has to have two characteristics to work better.

[00:31:40] Speaker 03:
It has to be broken symmetry and it has to be uniaxial.

[00:31:43] Speaker 03:
But throughout the specification, it's talking about broken symmetry through results in a uniaxial.

[00:31:50] Speaker 04:
And those are all the inventors

[00:31:52] Speaker 04:
observations, the results of his experiments, his decisions as to what happened, and almost every one of them, except for the abstract, which actually points to lots of causes, is under a heading that says detailed description of preferred embodiments.

[00:32:05] Speaker 04:
It's not saying the meaning of the claims.

[00:32:08] Speaker 04:
When you get to the meaning of the claims, what he claimed was a structure that yields the result.

[00:32:13] Speaker 04:
He doesn't have to know why, and it would be odd to punish him for speculating or giving his scientific theories as to why, and saying, now that you've tried to explain why,

[00:32:21] Speaker 04:
We're going to actually narrow your claims.

[00:32:23] Speaker 04:
That would undermine the purpose of advancing the arts by saying, if you think you know why, don't say it, because it's going to get read into your claims, and you end up with narrower claims or invalid claims entirely.

[00:32:40] Speaker 03:
under the new court?

[00:32:42] Speaker 04:
Actually, I do not.

[00:32:43] Speaker 04:
And there's a specific reason why.

[00:32:45] Speaker 04:
The causation element doesn't in any way hurt them on enablement.

[00:32:49] Speaker 04:
As a matter of fact, their own expert testified the causation adds an extra step.

[00:32:54] Speaker 03:
That makes it harder.

[00:32:55] Speaker 03:
Do we have the discretion to order?

[00:32:58] Speaker 04:
This court has the discretion.

[00:33:00] Speaker 04:
I don't think they've explained why it would help.

[00:33:01] Speaker 04:
In fact, their own expert said causation makes it harder on enablement.

[00:33:06] Speaker 04:
You take it out, enablement's easier.

[00:33:07] Speaker 04:
It's hard to see how it would make causation easier.

[00:33:09] Speaker 04:
But the court would have that discretion.

[00:33:11] Speaker 04:
Turning quickly to the expert, this was an expert report that was produced after the claim construction.

[00:33:16] Speaker 04:
And experts are allowed to conform their reports to the claim construction.

[00:33:19] Speaker 04:
You don't waive it by doing that.

[00:33:21] Speaker 04:
And then finally, if I could just point what I think the fundamental invention is.

[00:33:25] Speaker 04:
And this is actually really critical.

[00:33:26] Speaker 04:
What was invented here was a structure.

[00:33:29] Speaker 04:
And the structure has three key pieces, right?

[00:33:31] Speaker 04:
One is the BCC layer.

[00:33:33] Speaker 04:
And that BCC layer, and this is on page 30,000, 766, and 767, is really important because it's powerfully magnetic.

[00:33:40] Speaker 04:
Then it has to have the hexagonal template.

[00:33:46] Speaker 04:
And that orients your crystals so that you get your desired magnetism in the right direction.

[00:33:51] Speaker 04:
And then on top of that, it has to be symmetry broken.

[00:33:55] Speaker 04:
Now what's key about this is BCC was known.

[00:33:58] Speaker 04:
But the huge part is if you look at 30,000, 766, 767, it wasn't used before, even though it's powerfully magnetic, because it wasn't uniaxial.

[00:34:09] Speaker 04:
It says high PCC alloys were undesirable the expert planes because they weren't uni-axial what dr. Lambeth invented was how to make them uni-axial thank you Dr. Lambeth invented how to make them uni-axial he invented a claim the structure is entitled to that structure.

[00:34:23] Speaker 00:
Thank you Thank you We'll take this case under