[00:00:00] Speaker 03: 23-2373, Murr versus Racini. [00:00:06] Speaker 03: Is it Lori? [00:00:08] Speaker 03: Lorelai? [00:00:09] Speaker 03: How do I say your name? [00:00:11] Speaker 01: Lorelai. [00:00:11] Speaker 03: Lorelai, that's it. [00:00:12] Speaker 03: I didn't have my glasses on. [00:00:13] Speaker 03: Sorry. [00:00:14] Speaker 03: Okay, Mr. Lorelai, please proceed. [00:00:17] Speaker 01: May it please the court. [00:00:18] Speaker 01: Good morning. [00:00:20] Speaker 01: Mark Lorelai on behalf of Appellants, or Appellant, excuse me. [00:00:24] Speaker 01: And there are three things that I'd like to discuss this morning. [00:00:27] Speaker 01: First is the claim construction disconnect, and then the paragraph. [00:00:31] Speaker 01: Second is the paragraph in the final written decision about tensile loading in the installed state. [00:00:36] Speaker 01: And finally, I want to discuss claim 10. [00:00:39] Speaker 01: We enter this claim construction dispute in an awkward situation because we read page 23 of the final written decision, and we agree with it completely. [00:00:53] Speaker 01: where the board said our proposed claim language, specifically our clause, when vertical forces are introduced from a wheel carrier of a vehicle while in its installed state, to a great extent simply reiterates what is already expressly recited in claim one. [00:01:11] Speaker 02: Well, that and but one or two pages later, what they also say is even accepting your claim construction, we still find it obvious. [00:01:21] Speaker 02: So it struck me, the time you get to page 25, it's like, OK, well, let's look at what they said there. [00:01:28] Speaker 02: So I hope you'll have a moment to respond to the board, not just to the claim construction issue, but to what the board said, even using your claim construction. [00:01:36] Speaker 01: I do. [00:01:37] Speaker 01: But I'll address it at least to a certain extent right now. [00:01:41] Speaker 01: On page 25, it says, as we set forth below, they find in the installed state, it's still met, that we go later in the final written decision. [00:01:50] Speaker 01: And there's one paragraph that says that. [00:01:53] Speaker 01: And it cites a paragraph only in the rebuttal declaration. [00:01:57] Speaker 01: And we believe that's superficial and not supported by substantial evidence. [00:02:01] Speaker 01: And that's why the claim construction makes a difference. [00:02:07] Speaker 01: And I will get into that in some detail. [00:02:10] Speaker 01: When we start with the claim construction, and we start with looking at the claim itself, the claim is very specific. [00:02:21] Speaker 01: We're in the leaf spring with an increasing load due to vertical forces introduced from the wheel carrier. [00:02:28] Speaker 01: The leaf spring is increasingly subjected to tensile loading. [00:02:32] Speaker 01: And it's explained earlier in the claim that the leaf spring is configured to accommodate the wheel carrier in the installed state. [00:02:40] Speaker 01: Quite simply, forces from a wheel carrier can only be introduced to a leaf spring when it's in the installed state. [00:02:46] Speaker 01: And I think that's what led to that statement from the board on page 23 of the decision. [00:02:54] Speaker 01: And if we think about it more and we think about what the construction of tensile loading is, that was agreed by the parties, it says when the horizontal components of the reactive force imposed on each leaf spring. [00:03:05] Speaker 01: Well, the reactive force comes from something and it comes from [00:03:09] Speaker 01: what is imposed on that spring in the installed state by the vehicle, by the wheel carrier. [00:03:15] Speaker 01: And that is really the construction that we seek, what the board found was expressly in the claim. [00:03:22] Speaker 01: Now, we don't believe it's an intended use. [00:03:26] Speaker 01: We don't believe it's just capability. [00:03:29] Speaker 01: It's very important that when we read through the final written decision, the board talked about adopting what the petitioner [00:03:39] Speaker 01: brought forth is that if there's sufficient force, if there's sufficient deflection, then this would be experienced. [00:03:50] Speaker 01: Well, those are a lot of ifs and I don't think that the claim when it talks about when the vertical forces are introduced from a wheel carrier is about ifs, it's about actual forces. [00:04:04] Speaker 01: But [00:04:05] Speaker 01: To make sure that we're right, we go to the specification, something that the final written decision didn't do. [00:04:10] Speaker 01: The specification talks about the importance of the leaf spring in tensile loading while installed on the vehicle. [00:04:17] Speaker 01: And it expressly states at column two, line 33 to 38, that it applies for at least a part of the entire spring travel that is possible. [00:04:28] Speaker 01: Well, it's possible if it's installed on a vehicle. [00:04:31] Speaker 01: Otherwise, anything would be possible. [00:04:34] Speaker 01: And of course, the summary of the invention talks about the benefits of the claimed invention as advantageous on driving comfort and driving stability. [00:04:43] Speaker 01: Again, the claim would not mean anything if it wasn't in the installed state on a vehicle. [00:04:50] Speaker 01: And of course, this court instructs that we should construe claim terms so that we have the patents express purpose of the invention in mind. [00:05:02] Speaker 01: I think there's been some confusion of elements. [00:05:06] Speaker 01: Because on the one hand, the board says, we agree, in the sentence after I read it to begin this argument, claim one expressly recites a leaf spring and that tensile loading would occur due to load, due to vertical forces introduced from the wheel carrier when the leaf spring is in an installed state. [00:05:28] Speaker 01: And then on the next page, the board says, we're not going [00:05:32] Speaker 01: have that as part of our claim construction because they believe that that's superfluous and alters the plain meaning of the claims. [00:05:42] Speaker 01: I can't grapple and understand what what happened. [00:05:46] Speaker 01: So when I go through and think about it and think about what the appellee put in their response brief and they make a big statement about [00:05:56] Speaker 01: Well, that means one leaf spring could infringe if it's used in the installed state in one vehicle and not infringe if it's used in the installed state in another vehicle. [00:06:06] Speaker 01: And they don't cite anything to the court because in my view, that's fine. [00:06:12] Speaker 01: We have a lot of case law and we've cited some of it in our case. [00:06:15] Speaker 01: You can determine how a device operates and whether the device infringes. [00:06:19] Speaker 01: based on how it operates. [00:06:22] Speaker 01: And in this instance, how it has reactive forces when impacted with vertical forces from a wheel carrier in the installed state. [00:06:34] Speaker 01: And we cited some other cases to the court about this, as I think the claim language is the same. [00:06:42] Speaker 01: You evaluate the claim language when certain things happen. [00:06:46] Speaker 01: We talked about forced labs, which is about when something is in a drive form. [00:06:50] Speaker 01: It doesn't have to be in a drive form to infringe. [00:06:52] Speaker 01: But you evaluate the claim term when something is in drive form. [00:06:56] Speaker 01: Jack Frost talked about when it's exposed to a microwave. [00:07:02] Speaker 01: And then, of course, there's the Bell aerosol case. [00:07:05] Speaker 01: that talked about when a lid is removed. [00:07:08] Speaker 02: Well, what you haven't talked about yet is what I construed the board is heavily relying on, which was the competing expert testimony. [00:07:16] Speaker 02: And it's heavy reliance on Dr. Wagner, the other side's expert, right? [00:07:20] Speaker 02: So do you have anything to say about that? [00:07:23] Speaker 01: I do. [00:07:23] Speaker 01: When the board went through its decision on the claims, it repeatedly said, our expert [00:07:32] Speaker 01: what he put forward didn't matter because of the clamp construction. [00:07:34] Speaker 01: I think he said numerous times, it's irrelevant whether the spring would break. [00:07:39] Speaker 01: It's irrelevant whether the spring had enough travel in the installed state. [00:07:44] Speaker 01: It was irrelevant whether the spring went through, snapped through, because as the court, I'm sorry, as the board construed, it is just capability in the abstract. [00:07:55] Speaker 01: So that's the first instance. [00:07:57] Speaker 01: Now I would like to directly address your earlier question about [00:08:01] Speaker 01: the board saying it didn't matter whether it was in the installed or uninstalled state. [00:08:06] Speaker 01: If we go through the entire final written decision and we go to what's found at APX 65, before it said as discussed below, we have to go all the way to APX 65 to find the paragraph that the board addressed the installed state. [00:08:25] Speaker 01: And we can talk about that in some detail. [00:08:34] Speaker 01: It said that they credit Dr. Wagner's response that the Enmoto leaf spring is capable of transitioning given the appropriate structural dimensions, material characteristics, and vehicle displacement upon which he relies. [00:08:54] Speaker 01: Well, he relies on not the installed state, but in the abstract, whether a spring [00:09:00] Speaker 01: is going to get to tensile loading, not whether it breaks, not whether it has the right travel range, not whether it goes through a snap-through. [00:09:07] Speaker 01: But what they cited on that page, see exhibit 1033 paragraph 66, Dr. Wagner testifying that one skill in the art would know that routine design and dimensions and materials would be performed for each specification application to match the intended displacement and loads for that vehicle. [00:09:28] Speaker 01: We don't think that's sufficient. [00:09:29] Speaker 01: That's not substantial evidence. [00:09:31] Speaker 01: The citation to that one paragraph that actually doesn't discuss Enmoto discusses a different prior art reference. [00:09:38] Speaker 01: But that's all the board relied upon, is that routine design and dimensions rendered this claim obvious in the installed state. [00:09:48] Speaker 01: We believe that's against the law. [00:09:49] Speaker 01: And we also believe it was improperly decided based on the rules of the IPR. [00:09:57] Speaker 03: law is it against? [00:10:00] Speaker 01: Personal web services, talking about routine design and dimensions doesn't make something, if somebody could through routine and design create something, doesn't make creating that thing obvious or doesn't provide a motivation to make that thing. [00:10:16] Speaker 01: There needs to be more. [00:10:18] Speaker 01: There needs to be some teaching motivation suggestion [00:10:22] Speaker 01: in the art, why would they do that other than to meet the limitations of the claim? [00:10:29] Speaker 01: And this came about, it's interesting that it's one single paragraph that the board said at the end of the claim construction argument, we're going to get to this later. [00:10:42] Speaker 01: And then when they get to it later, it's one single paragraph. [00:10:45] Speaker 01: Because if you go to the petition, [00:10:47] Speaker 01: The petition doesn't talk about adjusting through routine design and dimensions the factors of Emoto. [00:10:55] Speaker 01: It doesn't discuss it one bit. [00:10:58] Speaker 01: In the reply, there is that statement in paragraph 66. [00:11:03] Speaker 01: My client moved to strike that reply declaration, specifically that paragraph. [00:11:10] Speaker 01: The motion to strike was not granted. [00:11:13] Speaker 01: In fact, the petitioner [00:11:17] Speaker 01: didn't even address that paragraph and why it should be in there. [00:11:20] Speaker 01: And that's in the record. [00:11:23] Speaker 01: But the fact of the matter is we never had the opportunity to address such an obviousness position, this routine design and dimensions position. [00:11:32] Speaker 01: And in Renuvasive talks about if it's not in the petition and it's not something that is expected to be responded to through the course of the [00:11:44] Speaker 01: IPR, but is instead a new position, which this is because it's all the board relied upon. [00:11:52] Speaker 03: But it's responsive to Mr. Dilling's assertions, right? [00:11:56] Speaker 03: The board seemed to understand that this statement from Dr. Wagner was responding, as a rebuttal properly can, to the presentation of evidence by Mr. Dilling's about what the initial inputs and assumptions were. [00:12:15] Speaker 03: It seems OK. [00:12:17] Speaker 01: I understand the case law that you're making that comment from. [00:12:20] Speaker 01: I say this is different. [00:12:22] Speaker 01: And this is different because it's not responding in that paragraph in the final written decision. [00:12:28] Speaker 01: It's not responding to what we said. [00:12:30] Speaker 01: It's creating a obviousness position based on routine design and dimensions for this installed state claim construction, something that was not in the petition. [00:12:42] Speaker 01: So that's why I think it's different, Your Honor. [00:12:45] Speaker 01: And I think it's inappropriate for us not to have an opportunity to respond. [00:12:50] Speaker 01: But I also think globally, it's legally insufficient. [00:12:57] Speaker 03: Did you want to save any time for rebuttal? [00:13:00] Speaker 01: I do. [00:13:00] Speaker 01: And I will address just claim 10 quickly. [00:13:06] Speaker 01: And that is claim 10 states that the leaf spring is subjected to certain things. [00:13:12] Speaker 01: or design such that it's subjected to certain things. [00:13:16] Speaker 01: The board just simply said capability is sufficient to meet that claim language, and we believe that's a clear error. [00:13:23] Speaker 01: Thank you, Your Honor. [00:13:25] Speaker 03: OK. [00:13:26] Speaker 03: Mr. Arts. [00:13:35] Speaker 00: Good morning, Your Honors. [00:13:35] Speaker 00: May I please the Court? [00:13:37] Speaker 00: John Arts on behalf of Appellee Racini. [00:13:41] Speaker 00: I think it's appropriate to start with a quote from the Parker Vision case that says, apparatus claims cover what a device is, not what a device does. [00:13:51] Speaker 00: Because it seems to me that the principal dispute we have here involves whether or not the claims of the 330 patent, which relate to a leaf spring assembly, a structure, [00:14:02] Speaker 00: whether or not the claims relate to capability, as the board found, or whether it relates to actual use. [00:14:11] Speaker 00: And maybe putting a finer point on it, the issue is whether or not the claims of the 330 PAT and encompass a leaf spring assembly, where the leaf spring is capable of tensile loading based solely on its structure and the way the ends are retained, as the board found, or as Muir asserts, [00:14:30] Speaker 00: measuring compliance with the claim based on the leaf spring being installed in a vehicle suspension and being actually subjected to actual use and then based on that the board found that under either construction whether it adopted the capability or whether it adopted the installed state the board found that Enomoto rendered the claims obvious. [00:14:57] Speaker 00: I just want to briefly talk about the [00:15:00] Speaker 00: claim construction issue. [00:15:04] Speaker 00: The claim construction issue was consistent, as the board found, with the intrinsic evidence, with the claims, with the specification, with the file history. [00:15:14] Speaker 00: And I'm going to start with the file history. [00:15:16] Speaker 00: I mean, the file history that went through the first rejection, the examiner rejected based on a land reference. [00:15:25] Speaker 00: And in doing that, he found that land or submitted that land taught all the elements of the claim, including [00:15:32] Speaker 00: except for FRP, which he found to be obvious, but said that land, because its ends were fixed, was inherently believed to be subject to increased tensile loading. [00:15:42] Speaker 00: And then after they overcame the land rejection, he cited the Greco reference, and the examiner said the same thing, that the spring of [00:15:49] Speaker 00: Greco is inherently believed to be subject to increased tensile loading as the vertical load on the vehicle is increased. [00:15:57] Speaker 00: And he went further and said in the same office action that with an increasing load due to vertical forces introduced from the wheel carrier, [00:16:07] Speaker 00: Was increasingly subjected to tensile loading which the examiner found to be capable and that's appendix 759 we submit that the board's construction is consistent with the intrinsic evidence and I didn't hear counsel point to anything that was Seemed to indicate that there was any inconsistency pointed to the specification Obviously the claims are to be interpreted based on the claims and not limited or narrowed based on the specifications [00:16:40] Speaker 00: Talk about the evidence that the board looked at to render the claims obvious, whether it be under a capability or whether an installed state. [00:16:52] Speaker 00: We don't agree that there was just a paragraph that the board referenced. [00:16:57] Speaker 00: What Dr. Wagner opined and what was presented in the petition is that a leaf spring that has the structure set forth in the claim that is retained to prevent lateral movement at both ends is going to inherently [00:17:12] Speaker 00: pencil load. [00:17:13] Speaker 00: That's what the claim is. [00:17:14] Speaker 00: That's the result. [00:17:15] Speaker 00: This is like the Texas instrument case where it's in the whereby clause that tells you what the result of the structure of the claim is, and Enomoto meets that structure. [00:17:25] Speaker 00: As Dr. Wagner set forth and as the board found, Enomoto includes the same structure as the leaf spring set forth in the claim. [00:17:32] Speaker 00: It has the ends retained to prevent lateral displacement. [00:17:36] Speaker 00: But he didn't just base it on that. [00:17:38] Speaker 00: He looked at the figure of Enomoto within the suspension disclosed in Enomoto and said, looking at it, based on what the patent teaches of where it would go from compression to tension, it appears based on Enomoto itself, a visual inspection, that Enomoto would go into tensile loading and thus meet the claim in the installed state, which Enomoto is. [00:18:00] Speaker 00: Then he went further and he did an FEA analysis and confirmed his visual inspection that within the suspension of Enomoto, it would actually go into tensile loading. [00:18:11] Speaker 00: And that's what the board credited. [00:18:14] Speaker 00: It also looked at the competing analysis of the FEA of Mr. Dilling and it credited [00:18:19] Speaker 00: Dr. Wagner's as rendering Enomoto obvious and said while Dillings may be correct based on the assumptions Dr. Wagner's evidence in his rebuttal testimony overcame that. [00:18:33] Speaker 00: So regardless of the claim construction we believe that there's substantial evidence that supports the obviousness finding. [00:18:42] Speaker 00: And I'm just going to address claim 10 briefly because claim 10 is not an issue, at least the issue that the presenting now was not anything that was raised before. [00:18:54] Speaker 00: in their patent owner statement, claim 10, they just simply said, for all the reasons set forth in claim one. [00:19:00] Speaker 00: They're now trying to raise a new argument that's designed to somehow or another has some different meaning that was never presented in its patent owner statement and was never raised until it presented it in its blue brief. [00:19:13] Speaker 00: So it's not proper, but it's also incorrect. [00:19:17] Speaker 00: Unless your honors have any questions, I will defer the rest of my time. [00:19:21] Speaker 03: Thank you, Mr. Art. [00:19:22] Speaker 00: Thank you. [00:19:23] Speaker 03: Mr. Larelli, you have a few minutes for bottle time. [00:19:37] Speaker 01: Just a few points, and I'll start with claim 10. [00:19:43] Speaker 01: Claim 10 designed such that the spring travel has one reaction in one spring range and has another reaction in another spring range. [00:19:53] Speaker 01: All the argument all along was that it has to be, the spring has to be created so that in the installed state it does these things. [00:20:02] Speaker 01: That is the argument that was raised. [00:20:04] Speaker 01: The board, instead of applying the claim as written, just said, this claim is met by capability. [00:20:12] Speaker 01: If you followed the initial claim construction, that's one thing. [00:20:16] Speaker 01: You can't then look at claim 10 that has different language and say that you should follow the claim construction of claim 1 when claim 10 says design such that. [00:20:26] Speaker 01: We believe that's clear error. [00:20:29] Speaker 01: The language of claim 10 was never applied. [00:20:32] Speaker 01: I believe they tried to raise forfeiture, but those forfeiture cases were about when a party [00:20:41] Speaker 01: fails to raise a claim construction position that I think one example was a specific definition from the specification. [00:20:50] Speaker 01: We're not making those types of arguments. [00:20:51] Speaker 01: All we're saying is that the board never applied the plain language of claim 10. [00:20:55] Speaker 03: Well, can you tell me where you made that argument in your patent owner response? [00:21:01] Speaker 01: In the patent owner response, the only place I see is [00:21:07] Speaker 01: 1818 I'm gonna try and help you cuz you little little bit of time On 1818 It was argued that the potential loading for the same reasons Set forth above if I'm remembering it correctly right for the same reason set forth above because above we were [00:21:32] Speaker 01: We were arguing that when something happens in the installed state, it's got to be intentional. [00:21:39] Speaker 01: It's not something that's inherent that would happen in the abstract. [00:21:41] Speaker 01: It's got to be intentional. [00:21:42] Speaker 03: Well, for the reasons above, which were the reasons to pertain to claim one? [00:21:47] Speaker 03: So I guess now I see your argument having shifted to the claim 10 has language that distinguishes it from claim one, so that even if claim one were obvious, claim 10 should not be. [00:22:01] Speaker 03: But I don't see you having made that separate argument at all in the Patent Honor Response. [00:22:06] Speaker 01: I believe the argument is made in the context of the facts of Claim 1, where we were arguing that Claim 1 should have the requirements of the installed state and an actual operation. [00:22:20] Speaker 03: So does that mean I have to? [00:22:22] Speaker 03: You can only win on Claim 10 if I definitely adopt your claim construction for Claim 1. [00:22:29] Speaker 01: No. [00:22:29] Speaker 03: Admitting that your claim 10 argument is not distinct from your claim one argument. [00:22:33] Speaker 01: No, actually it's, I think it's the opposite. [00:22:35] Speaker 01: Your honor, I think claim 10 bolsters. [00:22:38] Speaker 01: our argument for time. [00:22:39] Speaker 02: But I understood your claim 10 thing. [00:22:41] Speaker 02: I think you started here, maybe I'm confused, is that they didn't look at the words. [00:22:45] Speaker 02: They didn't work towards design such that. [00:22:48] Speaker 02: And I think the chief was trying to see whether you made that argument in your patented response. [00:22:54] Speaker 02: And I don't think I heard that in terms of what you described. [00:22:58] Speaker 01: We did not make it as a claim construction position because the ordinary language or the ordinary construction of design such that [00:23:06] Speaker 01: as this court has in other decisions, designed such debt as much different than capable of. [00:23:12] Speaker 01: And we don't need a claim construction position to basically present that the claim itself should not be met for the same reasons. [00:23:22] Speaker 01: Factually, that claim one was not met. [00:23:25] Speaker 03: Thank you very much. [00:23:26] Speaker 03: I thank all counsel. [00:23:27] Speaker 03: This case is taken under submission.