[00:00:00] Speaker 00:
Our last case this morning is NG versus Creative Hair Designs, 2024-1599.

[00:00:08] Speaker 00:
Mr. Quill.

[00:00:12] Speaker 03:
Thank you, Your Honor.

[00:00:14] Speaker 03:
May it please the Court.

[00:00:18] Speaker 03:
This case is about something a little less high-tech than what we've been discussing today, but it's still nonetheless very important to our client.

[00:00:26] Speaker 03:
It really is a straightforward device for

[00:00:30] Speaker 03:
attaching a wig or wearing a wig.

[00:00:32] Speaker 03:
And as is often the case, a simple apparatus sometimes is hard to describe in words.

[00:00:38] Speaker 03:
And what happened here is that through a lot of back and forth with the Patent Office, the patentee and the Patent Office were able to come up with claimed terms to describe that invention.

[00:00:51] Speaker 03:
Now, what the district court did was they were on the right path.

[00:00:56] Speaker 03:
They were almost there.

[00:00:58] Speaker 03:
And then they said, plain and ordinary meaning.

[00:01:03] Speaker 03:
But instead of stopping at plain and ordinary meaning, they said, the plain and ordinary meaning means, and they incorporated an embodiment that's shown, they incorporated a limitation that's shown in the preferred embodiment, where the mesh portion is the forward most portion of the apparatus.

[00:01:25] Speaker 03:
In particular, what the district court added was the language.

[00:01:31] Speaker 03:
I'm sorry, first they said plain and ordinary.

[00:01:33] Speaker 03:
Then they said, i.e., the forward periphery of the mesh element is the most forward portion of the wigged grip at wraps.

[00:01:43] Speaker 03:
So this creates some inconsistencies.

[00:01:48] Speaker 03:
First of all, plain and ordinary should have stopped at plain and ordinary.

[00:01:52] Speaker 03:
Secondly, they've added a limitation that is found only

[00:01:56] Speaker 03:
in the preferred embodiment.

[00:01:57] Speaker 01:
There's no... Well, what do you think the applicant meant by the lax non-transparency beyond the full periphery of the transparency?

[00:02:07] Speaker 01:
Sure.

[00:02:07] Speaker 03:
All that really meant is... And this goes back to... Your Honor, I'm very happy you asked that question because when you think about what's the purpose of this invention, the purpose of this invention is to provide an apparatus to allow you to attach a wig to the wearer's head, that when the wig is on top of the apparatus, you can't see

[00:02:25] Speaker 03:
You can't see the apparatus through it.

[00:02:28] Speaker 03:
And so what the prior art had shown was you had a band that was visible.

[00:02:36] Speaker 03:
It would be visible through the hair part or at the widow's peak.

[00:02:41] Speaker 03:
Unfortunately, I think I might need one of these, but that's an aside.

[00:02:44] Speaker 03:
And so the prior art that was relied upon, the main one was actually a face mask.

[00:02:53] Speaker 03:
And in the face mask, it had a cord around the outside periphery.

[00:02:57] Speaker 03:
And so the mesh, because of that cord, would be visible if you incorporated that into a wig apparatus.

[00:03:07] Speaker 03:
And so when they were talking about non-transparency past the mesh, they just meant that if you had mesh, you wouldn't have that band forward of that mesh.

[00:03:23] Speaker 03:
The mesh portion is separate and the periphery of the mesh portion is separate apart from the periphery of other parts of the wig apparatus, which the district court expressly acknowledges that the overall apparatus has numerous parts of the periphery.

[00:03:44] Speaker 03:
And the only part of the claim that requires that there's

[00:03:51] Speaker 03:
when we started talking about the non-transparency issue, that the non-transparency is forward of that mesh portion.

[00:03:58] Speaker 01:
But when you say something terminates in a particular forward periphery, doesn't that at least suggest that nothing else extends more forward?

[00:04:08] Speaker 03:
No.

[00:04:10] Speaker 01:
You're suggesting that's not at least a reasonable interpretation?

[00:04:13] Speaker 03:
That is what I'm saying.

[00:04:15] Speaker 03:
So if you think, and this analogy

[00:04:18] Speaker 03:
Again, this is one of those situations, hard to describe in words, a pretty simple device.

[00:04:23] Speaker 03:
I used the analogy in the briefing of the United States border.

[00:04:28] Speaker 03:
And we have there the southernmost border is how far it extends south.

[00:04:34] Speaker 03:
So if you think about extension south, and so if you look at Arizona, for example, that border is still north of the southernmost border of Texas.

[00:04:47] Speaker 03:
But the United States does terminate at that border.

[00:04:51] Speaker 03:
So the fact that the one portion terminates, and we're talking about just the mesh portion, just because a mesh portion terminates the overall apparatus at the mesh portion doesn't mean that there can't be other parts that extend.

[00:05:08] Speaker 02:
I have a concern with what you're saying, which is that I think to myself, you know, why doesn't the claim language, if that's what was meant, why wasn't what was written in element C, the mesh element terminates at the forward periphery?

[00:05:26] Speaker 02:
Instead, it says the weak grip-out or apparatus terminates at the forward periphery.

[00:05:32] Speaker 03:
I can't speak to why they did what they did.

[00:05:35] Speaker 03:
All I can say is that the wig grip apparatus does terminate where the mesh ends.

[00:05:43] Speaker 03:
It also terminates at other portions of periphery that can be forward of the mesh portion.

[00:05:53] Speaker 02:
And this claim limitation, do I remember correctly that the board said with its construction, it's not saying

[00:06:00] Speaker 02:
that the nine mesh portions can't terminate at the same point as the mesh element.

[00:06:07] Speaker 02:
It's just saying that the mesh element has to be at the forward-most point, right?

[00:06:12] Speaker 03:
That's correct, Your Honor.

[00:06:13] Speaker 03:
But when you raise that point, there is something from the patent.

[00:06:19] Speaker 03:
The patent talks about how that periphery of the mesh portion can be arcuate.

[00:06:28] Speaker 03:
Certainly, what's shown in the preferred bottom end is a outwardly bending arcuate section.

[00:06:36] Speaker 03:
And so that's, I think, where they're saying that's the most forward portion.

[00:06:39] Speaker 03:
But it doesn't say that the arcuate portion is outwardly bending.

[00:06:43] Speaker 03:
It just says arcuate of some sort or angles of some sort.

[00:06:48] Speaker 03:
And if I could point you to specifically, this is in,

[00:06:58] Speaker 03:
APPX 60, column three, and it's the, basically it's the first, it's the last sentence starting, insert an embodiment of the forward periphery 132 and the forward edges 126 may collectively follow a nonlinear forward path.

[00:07:16] Speaker 03:
The nonlinear forward path may be arcuate or angled in some fashion.

[00:07:21] Speaker 03:
So the arcuate can be in either direction.

[00:07:28] Speaker 03:
At the end of the day, what we are doing here is reading in a limitation from the preferred embodiment, which is this court's precedence has well established that unless there is a clear disclaimer or disavowal or some language in the specification that makes that clear, that the patentee is entitled to the full scope of the invention.

[00:07:57] Speaker 03:
The district court did not point at any clear language.

[00:08:00] Speaker 03:
In fact, the best that district court could say was there's an inference.

[00:08:05] Speaker 03:
And the appellee in their briefing, at best, they can do is say that it's consistent.

[00:08:12] Speaker 03:
And it is consistent.

[00:08:13] Speaker 03:
Of course, it's consistent with the preferred embodiment, because the preferred embodiment is covered within scope of the claim.

[00:08:19] Speaker 03:
But you can't limit the patent to that preferred embodiment.

[00:08:27] Speaker 03:
unless you have some other questions regarding the claim construction.

[00:08:32] Speaker 03:
No?

[00:08:32] Speaker 03:
OK.

[00:08:33] Speaker 03:
So really briefly on doctrine of equivalence and prosecution history estoppel.

[00:08:42] Speaker 03:
This really is tied to the claim construction argument, but separate and apart from that is whether or not the doctrine of equivalence kicks in the prosecution history estoppel doctrine.

[00:08:54] Speaker 03:
And obviously, we submit that it does not.

[00:08:56] Speaker 03:
The amendments that were made related to, you know, whether, as we discussed, whether it be a visible portion past the mesh.

[00:09:05] Speaker 03:
And the prior art had cords at the edges.

[00:09:09] Speaker 03:
The amendments did not speak to positionality, relative positions of the mesh portion and the securement portions.

[00:09:19] Speaker 03:
There's nothing about

[00:09:22] Speaker 03:
the amendment that relates to the relative positioning of it.

[00:09:26] Speaker 03:
So for that reason, it's tangential to it.

[00:09:29] Speaker 03:
Yes, it is for patentability, but it's tangential to the question of whether there can be something that's still not visible, but extends forward of the positionally forward of the mesh.

[00:09:44] Speaker 03:
And then lastly, with the doctrinal equivalence,

[00:09:51] Speaker 03:
The court relied on prosecution history to stop.

[00:09:56] Speaker 03:
If we get past that, then there's at least a question of fact regarding whether or not, even if you don't accept our client destruction argument, there's still a question of fact as to whether or not it performs the same function in substantial the same way to have substantial the same result.

[00:10:14] Speaker 03:
The only thing that

[00:10:17] Speaker 03:
Appellees have cited, it's just a conclusory statement that, no, it's substantially different because it's recessed.

[00:10:25] Speaker 03:
At best, there's an open question of fact there.

[00:10:31] Speaker 03:
Your Honor, do you have anything further?

[00:10:34] Speaker 00:
We will save you time for a bottle if you need it.

[00:10:40] Speaker 00:
Thank you.

[00:10:40] Speaker 00:
Mr. Johnson.

[00:10:42] Speaker 04:
May it please the court.

[00:10:44] Speaker 04:
I'm Lance Johnson for Appellees.

[00:10:48] Speaker 04:
Appellant has covered a number of issues.

[00:10:51] Speaker 04:
But in this case, he's right.

[00:10:53] Speaker 04:
I see it as a simple case where we have an O2 micro controlling decision about whether a claim construction should occur, with a textbook Phillips analysis looking at the three sources to discern a meeting of the disputed phrase, and a final determination about whether the reason for the amendment rebuts the festo presumption of a prosecution history estoppel.

[00:11:22] Speaker 04:
Now, APOLI has suggested that the plain and ordinary meaning either doesn't require construction or incorporated a preferred embodiment.

[00:11:34] Speaker 04:
O2 microdisposes of the first.

[00:11:37] Speaker 04:
O2 micro in its progeny, made it clear that a court is obligated to construe a term that the parties have determined to be in dispute in a jury case.

[00:11:48] Speaker 04:
Otherwise, it would leave a jury deciding the question of what the proper claim construction is, thereby encroaching on the judicial authority.

[00:11:57] Speaker 04:
So the court had to ascribe a meaningful meaning to the disputed phrase, which it did.

[00:12:06] Speaker 04:
Before the district court,

[00:12:09] Speaker 04:
Appellant did not provide a claim construction proposed.

[00:12:14] Speaker 04:
As the district court held, it was a context-based discussion of what they thought it would mean.

[00:12:20] Speaker 04:
It's not a proposed construction.

[00:12:22] Speaker 04:
In a request for reconsideration, they provided a handful of proposed constructions, but those were ruled to be inadmissible as too late.

[00:12:33] Speaker 04:
So they've been waived.

[00:12:34] Speaker 04:
They have not been appealed in this case.

[00:12:38] Speaker 04:
In connection with the issue of incorporation of a preferred embodiment, the court went to Great Plains to make sure that it was not doing that.

[00:12:49] Speaker 04:
Expressly, it said that while we had proposed an alignment language, the court said we can't do that because that's a preferred embodiment.

[00:12:58] Speaker 04:
Now part of the construction problem in this case is because there is no written description of the language that appears in the final claims.

[00:13:08] Speaker 04:
that was crafted at a final amendment with the examiner, and apparently based only on the two embodiments shown in the figures.

[00:13:17] Speaker 04:
And that's permissible.

[00:13:18] Speaker 04:
This court has ruled that that is permissible language to do that.

[00:13:22] Speaker 04:
However, when it's unclear, the court's got to construe it.

[00:13:25] Speaker 04:
And in so doing, the court looked at the prosecution history, the disclosure, the figures,

[00:13:30] Speaker 04:
And most importantly, the back and forth between the discussion with the examiner over the reasons for that final amendment and what happened at that final interview.

[00:13:41] Speaker 04:
At that final interview, the examiner was very clear when she said that in connection with that, that's the second interview summary.

[00:14:00] Speaker 04:
She said that the reason for the amendment.

[00:14:06] Speaker 03:
What page are you looking at?

[00:14:07] Speaker 04:
I'm at appendix page 171.

[00:14:09] Speaker 04:
It's the examiner's summary of the second interview in the last four lines.

[00:14:18] Speaker 04:
Beyond the forward periphery period, both examiner and applicant's representative agreed to change the limitation to state, quote, the wig grip apparatus terminates at the forward periphery, close quotes.

[00:14:30] Speaker 04:
to overcome the 112 rejection and to overcome the prior art of record and put the application in condition for allowance.

[00:14:39] Speaker 04:
That's pretty clearly a central reason for the amendment that is not tangential.

[00:14:46] Speaker 04:
It means it applies.

[00:14:49] Speaker 04:
This report went through a very detailed analysis of the language used in the interplay about the examiner's suggestion that they should specify the relative position of the mesh as a point of patentability, which in response to that first interview, they didn't do.

[00:15:09] Speaker 04:
Then they had the second interview, and they arrived at this language, which made it allowable, leading to the conclusion that

[00:15:16] Speaker 04:
The examiner finally won, and they specified a position for the mesh.

[00:15:22] Speaker 04:
Now, in connection with that language, I think the district court did a yeoman's job of finding language that would cover both of the disclosed embodiments, yet distinguish from the prior art.

[00:15:36] Speaker 04:
As Appellant said, they focus on Walsh in their briefing.

[00:15:40] Speaker 04:
That was anticipation and rejection.

[00:15:43] Speaker 04:
They mention but don't really discuss the rejection for obviousness based on Becker, Kim, and Lee.

[00:15:51] Speaker 04:
In that rejection, dig back in the prosecution history, the rejection for obviousness said that Becker had, that was the mesh band that had a little edging to it.

[00:16:03] Speaker 04:
And the examiner cited Kim for the proposition that you should have a transparent portion all the way to the edge.

[00:16:09] Speaker 04:
That was an obviousness issue.

[00:16:11] Speaker 04:
While there were other arguments about obviousness, that was central in the case.

[00:16:15] Speaker 02:
Do you have a view on what lax non-transparency beyond the board periphery means?

[00:16:22] Speaker 04:
I can speculate about what it might meant.

[00:16:24] Speaker 04:
But the important point is that the examiner thought it was unclear.

[00:16:28] Speaker 04:
And they could have appealed that.

[00:16:30] Speaker 04:
They could have stood on that language and taken appeal to the board if they determined that the language was both supported and clear.

[00:16:37] Speaker 04:
But they didn't.

[00:16:38] Speaker 04:
So they gave up that position before the examiner.

[00:16:42] Speaker 04:
And they agreed to the other language.

[00:16:44] Speaker 04:
So I believe that, for whatever reason, they waived the argument that that's an applicable limitation.

[00:16:52] Speaker 04:
And importantly, the final claim language doesn't refer to just the mesh area being the termination point.

[00:17:00] Speaker 04:
It refers to the wig rip apparatus.

[00:17:03] Speaker 04:
And that's a defined term within the claim, because it has to have two sidebands and the mesh element.

[00:17:08] Speaker 04:
So somehow, those three things have to terminate at the forward periphery.

[00:17:14] Speaker 04:
We proposed one claim construction, which the district court did not adopt, but it came up with its own.

[00:17:20] Speaker 04:
And I believe it was clear and important.

[00:17:27] Speaker 04:
In fact, the district court also clarified what it meant by most forward portion.

[00:17:36] Speaker 04:
And I'm looking at appendix page nine, top of the first paragraph.

[00:17:41] Speaker 04:
The forward ends of the adjacent securement members cannot extend beyond the forward periphery of the mesh element, thus explaining what it meant by most forward portion.

[00:17:51] Speaker 04:
I think it's pretty clear from the record, the district court certainly found it was, and I think it's a fair reading across chief in history, both that the claim language is what the district court said it is, that it was entered for a purpose related to patentability and forms an estoppel that precludes consideration of the doctrine of equivalence.

[00:18:10] Speaker 04:
Are there any questions?

[00:18:14] Speaker 04:
Mr. Smith.

[00:18:14] Speaker 00:
Thank you, counsel.

[00:18:23] Speaker 03:
So thank you, Your Honor, just a few points.

[00:18:29] Speaker 03:
Judge Stoll, you had asked a question about how they could have drafted a claim, and counsel spoke to that as well about appealing this, that, or any other.

[00:18:36] Speaker 03:
That's not really pertinent here.

[00:18:39] Speaker 03:
The claim is what it is, and that's what we're addressing.

[00:18:42] Speaker 03:
And so on that point, the claim says that the APRAS terminates at the forward periphery

[00:18:50] Speaker 03:
And the Ford periphery is defined as the Ford part of the mesh.

[00:18:56] Speaker 03:
What the district court also recognized, and I'm looking at APPX 9, the actual claim construction order, he said that as plaintiffs observe, this is in the second paragraph, or first full paragraph, as plaintiff observes,

[00:19:15] Speaker 03:
the wig grip apparatus as a whole terminates about its entire periphery.

[00:19:21] Speaker 03:
The forward periphery of the mesh element, referenced in the disputed claim limitation, is one such location.

[00:19:28] Speaker 03:
So what we have here is that, yes, the apparatus terminates at the forward periphery of the mesh.

[00:19:36] Speaker 03:
That does not exclude the possibility of the overall apparatus terminating at other points.

[00:19:44] Speaker 03:
And that's the key point here.

[00:19:48] Speaker 02:
So your interpretation of this is just that at the point where the mesh is, it terminates at the part which was already described in the prior limitation as being the foremost part of that element?

[00:19:59] Speaker 02:
Correct.

[00:20:00] Speaker 02:
OK.

[00:20:00] Speaker 03:
Correct.

[00:20:05] Speaker 02:
The only other thing I want to talk about briefly is... Why doesn't that render that limitation superfluous then?

[00:20:10] Speaker 03:
I'm sorry?

[00:20:11] Speaker 02:
Why doesn't that render that limitation superfluous?

[00:20:15] Speaker 03:
I don't truly understand your question.

[00:20:18] Speaker 03:
I will answer it.

[00:20:19] Speaker 02:
It seems to me that the last claim element has no meaning if all it is is saying that the mesh element terminates at the forward most position of the mesh element.

[00:20:32] Speaker 03:
So the element before element B says the mesh element includes a forward periphery extending from the first inboard portion to the second inboard portion.

[00:20:41] Speaker 03:
So that's saying the inboard portions are the part of the securement numbers.

[00:20:44] Speaker 03:
And so the mesh extends laterally across.

[00:20:49] Speaker 03:
And then it's saying that the apparatus terminates at the forward periphery.

[00:20:52] Speaker 03:
So all that's saying is that there's nothing visible past

[00:21:01] Speaker 03:
There's not something visible.

[00:21:04] Speaker 03:
It actually ends.

[00:21:04] Speaker 03:
It just ends.

[00:21:07] Speaker 03:
But it doesn't preclude the possibility that other portions of the periphery, which the district court recognizes as this, could terminate elsewhere.

[00:21:20] Speaker 03:
The only other thing I wanted to talk about, and this is only because counsel raised it, that he said something about there being two embodiments

[00:21:30] Speaker 03:
in the patent.

[00:21:32] Speaker 03:
That's not actually correct.

[00:21:34] Speaker 03:
There's only one embodiment of the WIG GRIP apparatus itself.

[00:21:38] Speaker 03:
I think Council is referring to what's shown in Figure 9.

[00:21:42] Speaker 03:
But if you look at Figures 8 and Figure 9, and I'm looking at APPS 57 and 58, if you look at Figure 8 and Figure 9, what's shown in Figure 9 with the kind of scalloped edge, that's actually the WIG itself, the underlying

[00:21:59] Speaker 03:
base structure for the wig itself that's being shown in Figure 9.

[00:22:03] Speaker 00:
So unless you have any other questions.

[00:22:08] Speaker 00:
Thank you.