[00:00:00] Speaker 03:
Our next case this morning is number 24, 1616, Smart Trim Manufacturing Group versus Optilux, Inc.

[00:00:09] Speaker 03:
Mr. Gerville Rehash.

[00:00:12] Speaker 01:
Good morning, Your Honors.

[00:00:13] Speaker 01:
Gaten Gerville Rehash on behalf of Optilux.

[00:00:16] Speaker 01:
May it please the court.

[00:00:18] Speaker 01:
You have in this case before you two patents that issue one design patent and a related utility patent for illuminated signage and the design patent being specifically for the designs for school bus signs.

[00:00:31] Speaker 01:
I'll address the D930 real quickly first and then the 491 just to boil our arguments down and maybe give you a slightly different color for how to think about this.

[00:00:43] Speaker 01:
On the D930, I think our argument really boils down to the district court fundamentally misunderstood the purpose of the design patent.

[00:00:52] Speaker 01:
The common thread between these two issues on the claim construction and admitting the expert is that

[00:00:59] Speaker 01:
The district court didn't understand that what matters in a design patent is ornamental appearance, not function.

[00:01:05] Speaker 01:
And that's why the district court construed transparency to mean transparency and translucency based solely on the idea that both of these characteristics allow light to pass through, which is a functional characteristic of them, even after the expert basically conceded that visually they are distinct.

[00:01:27] Speaker 01:
On the expert,

[00:01:29] Speaker 01:
The district court deemed expertise as a posita for eliminated signage to be foundationally sufficient to justify having this expert talk about whether an ordinary expert will be deceived, even when the expert admitted having no experience whatsoever with the ordinary observer in this instance.

[00:01:53] Speaker 04:
Can you point to any authority where we've said in any context that someone with extraordinary or expert knowledge and skills can't opine as to the perspective of a, let's say, lesser person, an ordinary person?

[00:02:11] Speaker 01:
Having those extraordinary skills is not a disqualifier, but it's also not a qualifier.

[00:02:17] Speaker 01:
They have to be qualified, and that either means being an ordinary observer

[00:02:21] Speaker 01:
Or it means doing the work or having experience with ordinary observers.

[00:02:26] Speaker 01:
By doing the work, I mean doing a survey of ordinary observers.

[00:02:29] Speaker 04:
I'm not sure you pointed out any authorities where we said you have to do surveys or you have to have served in a position by making purchases as an ordinary observer.

[00:02:39] Speaker 04:
Again, I come back to I didn't see any authority for the suggestion that if I'm one of extraordinary knowledge, then I'm not

[00:02:51] Speaker 04:
almost per se qualified to also comment from the perspective of an ordinary person.

[00:02:57] Speaker 01:
Well, we did cite the authority in our brief.

[00:03:00] Speaker 01:
And the name of the case is escaping me.

[00:03:02] Speaker 01:
But this court basically said it's not enough to be able to testify from the perspective of an expert designer.

[00:03:09] Speaker 01:
That's not the test.

[00:03:10] Speaker 04:
Right, right.

[00:03:11] Speaker 01:
The test is ordinary.

[00:03:12] Speaker 04:
Here, Mr. York very clearly said he was testifying from the perspective on this point.

[00:03:17] Speaker 04:
of an ordinary observer.

[00:03:19] Speaker 01:
Well, then let's assume for the sake of argument, this is the first case.

[00:03:23] Speaker 01:
And the issue may not have come before the court before, but I'm also not aware of a case where the court said that you don't have to have some experience with ordinary observers.

[00:03:32] Speaker 01:
And it would be odd if you didn't.

[00:03:35] Speaker 03:
So you may have a good argument in this respect.

[00:03:38] Speaker 03:
The problem is, it seems to me, that it's forfeited.

[00:03:42] Speaker 03:
Because at the time, they didn't volunteer on the expert.

[00:03:46] Speaker 03:
that he'd submitted his expert report and indicated that he planned to testify about the perspective of an ordinary observer, and you didn't raise that in the Vaudi or in any way object to his qualification, so why isn't it too late?

[00:04:06] Speaker 03:
after having agreed that he was a qualified expert to suddenly, during the trial, suggest that no, he's not qualified to speak about the perspective of an ordinary observer.

[00:04:20] Speaker 01:
Well, all experts have boundaries within which they are entitled to testify.

[00:04:25] Speaker 03:
But you knew what his testimony was going to be on this, right?

[00:04:27] Speaker 03:
Because it was in his expert report.

[00:04:30] Speaker 01:
Well, I don't know that, you know,

[00:04:33] Speaker 01:
The expert report focused so much on the ordinary observer issue as on the utility.

[00:04:38] Speaker 03:
It did.

[00:04:38] Speaker 03:
I've read it.

[00:04:40] Speaker 01:
OK.

[00:04:40] Speaker 01:
Well, I think the argument there was that there was some obligation maybe at that point to bring the motion in limine.

[00:04:48] Speaker 03:
But you're saying now he wasn't qualified to testify about an ordinary observer.

[00:04:54] Speaker 03:
The problem is he told you he was going to testify about what an ordinary observer would review, and you didn't object his qualifications.

[00:05:01] Speaker 03:
That's a problem.

[00:05:02] Speaker 01:
It's a timeliness argument, and I do not concede it's untimely because the objection was not to him being admitted at trial for the purpose at which he was admitted.

[00:05:12] Speaker 01:
We didn't object that, and I'm not arguing now that that was objectionable.

[00:05:16] Speaker 01:
He was admitted at trial as an expert in illuminated signage.

[00:05:21] Speaker 01:
That in and of itself does not qualify him

[00:05:24] Speaker 01:
to testify as to what the ordinary observer, how the ordinary observer would perceive these signs.

[00:05:29] Speaker 01:
That's our position.

[00:05:30] Speaker 01:
Now, as soon as he started to testify about that, there was a timely objection made that that goes beyond the scope of the expertise for which you were admitted.

[00:05:41] Speaker 01:
And that's timely.

[00:05:42] Speaker 01:
The precedents established that that's timely in the Sixth Circuit.

[00:05:46] Speaker 01:
So I think that, I don't think that objection is well placed by SMG to say that it was forfeited.

[00:05:54] Speaker 01:
It came in before the testimony did.

[00:05:57] Speaker 01:
And that's critical because you don't want the jury to hear the testimony.

[00:06:01] Speaker 01:
You need to object before the testimony comes in.

[00:06:03] Speaker 01:
But there was nothing objectionable about the qualifications as stated at the beginning of his testimony.

[00:06:09] Speaker 01:
It wasn't anything objectionable.

[00:06:10] Speaker 01:
And at no point during that voir dire,

[00:06:13] Speaker 01:
or during that period before he was admitted as an expert in lemonade signage, was there any mention that he's going to testify on the base as to what the ordinary observer would think?

[00:06:26] Speaker 01:
Now, if it was in his expert report, that's one thing, and it probably would have been advisable for him to file a motion in lemonade instead of waiting until trial to do this, but that's a question forfeiture.

[00:06:37] Speaker 04:
If I'm following your argument, you're telling us he's not qualified

[00:06:42] Speaker 04:
to testify from the perspective or the opinion of an ordinary observer.

[00:06:48] Speaker 04:
If that's your position that goes directly to his qualifications and you set on the record to the district judge, you're content with his qualifications.

[00:06:55] Speaker 01:
But that wasn't what he was qualified for in the voir dire.

[00:06:58] Speaker 04:
They did not admit him as a... It was an obligation to point that out, I think, when you said we don't object to his qualifications.

[00:07:04] Speaker 01:
Well, it was SMG's burden to admit him as an expert in that area, which they did not.

[00:07:10] Speaker 03:
Where's the transcript specifying the purpose for which he was admitted as an expert?

[00:07:20] Speaker 01:
This is at appendix 1727 to 28.

[00:07:22] Speaker 01:
That is where the objection was lodged.

[00:07:30] Speaker 01:
So the voir dire would have happened before that.

[00:07:34] Speaker 04:
1697 to 1703 is the voir dire.

[00:07:44] Speaker 03:
Correct.

[00:07:46] Speaker 03:
Now.

[00:07:47] Speaker 03:
Where's the ruling admitting him as an expert?

[00:07:51] Speaker 03:
Sorry, Your Honor.

[00:07:52] Speaker 03:
Where's the ruling admitting him as an expert?

[00:08:07] Speaker 04:
I think 1703 is the end of the blood year.

[00:08:20] Speaker 01:
Correct.

[00:08:20] Speaker 01:
That's where the direct examination begins at the end there.

[00:08:23] Speaker 04:
And I think back at 1697, the other side is offering him 1697, line 20.

[00:08:33] Speaker 04:
Your Honor, at this time, I'd like to request Mr. York be recognized as an expert witness having knowledge regarding LED lighting and illuminated signage.

[00:08:43] Speaker 04:
Why doesn't that encompass, hey,

[00:08:46] Speaker 04:
he's going to testify consistent with the jury instructions from the perspective of an ordinary observer.

[00:08:51] Speaker 04:
That's why we're all here.

[00:08:52] Speaker 01:
Well, are ordinary observers experts in illuminated signage and LEDs in illuminated signage?

[00:08:57] Speaker 01:
They aren't.

[00:08:58] Speaker 01:
It's not the same thing.

[00:09:00] Speaker 01:
I mean, that's not the same thing as saying, I know what ordinary observers would think when they know purchasers of school bus signs are not equivalent.

[00:09:06] Speaker 04:
Do you need us to read the record that you guys are just totally surprised when he started

[00:09:13] Speaker 01:
The argument could have been made earlier, that's for sure.

[00:09:16] Speaker 03:
You couldn't have been surprised, because his expert report said exactly that was what he was going to do.

[00:09:22] Speaker 01:
The argument could have been made earlier.

[00:09:23] Speaker 01:
I'll concede that.

[00:09:24] Speaker 04:
But it doesn't make it on time.

[00:09:26] Speaker 04:
Can I just take it real quick back to the claim construction itself?

[00:09:31] Speaker 04:
It seems to me there may well be a distinction between transparent and translucent.

[00:09:39] Speaker 04:
But I'm not quite sure what transparent means in this field.

[00:09:45] Speaker 04:
So my question to you is, if you prevail and we remand and say the claim is limited to transparent, does the district court still have discretion to have further proceedings on, well, what does transparent itself mean in this field?

[00:10:03] Speaker 01:
We would be happy to, if the court's going to reverse, engage in those proceedings.

[00:10:07] Speaker 01:
I don't think it's necessary because their expert admitted what it means.

[00:10:11] Speaker 01:
He said that if they had intended for this to be transparent, they would have shown the structures behind the panel.

[00:10:19] Speaker 02:
But the patent doesn't say that the front of the sign is transparent.

[00:10:25] Speaker 02:
The patent says that the lining designates transparency.

[00:10:33] Speaker 02:
True.

[00:10:36] Speaker 02:
in my mind, implies a range that you can be fully transparent, partially transparent, mostly transparent, that there is no claim that I see in the patent that it's transparent or not transparent.

[00:10:54] Speaker 02:
It's lined for transparency.

[00:10:58] Speaker 02:
The degree to which it's transparent is not clear.

[00:11:02] Speaker 02:
So to me, that sort of justifies the district court's claim construction and leaves that to the jury.

[00:11:12] Speaker 01:
Well, there is a world in which a sign can be, a panel like that can be translucent and not transparent at all.

[00:11:20] Speaker 01:
And that would have been our position at trial was our sign has no transparency to it.

[00:11:25] Speaker 01:
You cannot see the structures behind it in any respect whatsoever.

[00:11:28] Speaker 01:
I agree with you that it's a matter of degree.

[00:11:30] Speaker 01:
And frankly, they're not mutually exclusive.

[00:11:33] Speaker 02:
If you look at the patent as a whole, are there attributes, for example, that you can't see the LED lights behind the front panel?

[00:11:45] Speaker 02:
That suggests that it's not perfectly clear.

[00:11:50] Speaker 02:
That would be consistent, would it not, with the district court's claim construction?

[00:11:56] Speaker 01:
I don't, first of all there's no rule that requires the patent drafter to show the structures behind a transparent panel.

[00:12:06] Speaker 02:
I understand, but we're trying to interpret what is meant by the lining.

[00:12:11] Speaker 02:
designating transparency.

[00:12:13] Speaker 01:
And there may be, because you have a frame and you have letters, you have opaque areas of the sign where those structures could be hid.

[00:12:21] Speaker 01:
I don't think that it's necessary to show those.

[00:12:26] Speaker 01:
Certainly if you put them in, that would be a strong implication that it's transparent.

[00:12:31] Speaker 01:
But you don't need that because they said right in black and white words that these oblique shading lines know transparency.

[00:12:38] Speaker 01:
Think about it from this perspective, okay?

[00:12:40] Speaker 02:
Well, why don't you move on to the utility patent since you're running out of time?

[00:12:44] Speaker 03:
Well, before you do that, what the court instructed the jury, and this was at 648 of the trial transcript, I don't think it's in the joint appendix,

[00:12:56] Speaker 03:
the court has found that the word transparency can mean both transparent and translucent.

[00:13:01] Speaker 03:
So she's instructing the jury that transparent means something other than transparent.

[00:13:07] Speaker 03:
And that's the basic problem.

[00:13:08] Speaker 01:
That is the problem.

[00:13:09] Speaker 01:
I mean, you just said it means something more, but you're using the same word to describe only half of it.

[00:13:14] Speaker 04:
But it seems if you're agreeing that transparent is a matter of degree and that transparent and translucent are not mutually exclusive, these are two things I've heard you say today.

[00:13:24] Speaker 04:
Sure.

[00:13:24] Speaker 04:
then why isn't the resolution here that we construe the claim is limited to transparent, but you have a dispute either in claim construction or maybe at trial about what does transparent actually mean and where to point is your thing transparent or not?

[00:13:42] Speaker 04:
Is that the way this should work out?

[00:13:44] Speaker 01:
I think the intrinsic evidence points to only one conclusion there, so I think the court could resolve that, but if the court wants to remand it for proceedings and from the district court,

[00:13:54] Speaker 01:
have to accept that resolution as well.

[00:13:55] Speaker 01:
And I think the reason it points to one answer is because consider what if they had not put transparency in the description.

[00:14:04] Speaker 01:
A person looking at this would see oblique shading lines.

[00:14:09] Speaker 01:
They know that the MPDP says that those can mean three things, reflectivity, transparency, translucency.

[00:14:17] Speaker 01:
And all the expert says was, well, for illuminated signage, it has to be transparent or translucent because you need to let the light through.

[00:14:24] Speaker 01:
And then they know transparency on the page is what they mean.

[00:14:29] Speaker 01:
So they're basically saying, this means the same thing it would mean if we didn't put transparency on the page.

[00:14:36] Speaker 01:
It can't possibly be right.

[00:14:39] Speaker 01:
On the utility pattern.

[00:14:44] Speaker 02:
Basically, our position here is that's the function for purposes of the Doctrine of Equivalence Function-Way Result Test.

[00:14:53] Speaker 02:
Correct.

[00:14:58] Speaker 02:
Does that require something more than what the claim specifies or suggests is the function of the element in question?

[00:15:07] Speaker 01:
Well, functions don't have to be claimed, first of all.

[00:15:10] Speaker 01:
And secondly, there's also the way and result.

[00:15:12] Speaker 01:
They have to show all three of those are substantially the same.

[00:15:15] Speaker 01:
And they didn't meet that burden.

[00:15:16] Speaker 01:
I mean, the results are clearly different.

[00:15:18] Speaker 01:
I see that I'm out of time.

[00:15:19] Speaker 03:
Well, we want to continue.

[00:15:23] Speaker ?:
OK.

[00:15:23] Speaker 01:
Those are clearly three different things, and the expert, you know, we can get into kind of tying our tongue and nose over the linguistics of this, but the expert ultimately at the end of the day said, yes, there is this difference, okay, and it has benefits to the end user, to the manufacturer, to the distributor, and those are spelled out in the patent.

[00:15:45] Speaker 01:
I mean, frankly, personally, this should never even made it to the jury in the first place.

[00:15:49] Speaker 01:
because all the admissions are right there in the patent as to what this significance is.

[00:15:56] Speaker 01:
Is it intrinsic evidence?

[00:15:58] Speaker 01:
Correct.

[00:15:59] Speaker 01:
Correct.

[00:16:01] Speaker 01:
Yeah, I don't think, but it did.

[00:16:04] Speaker 01:
And so then you consider, okay, well, what came in a trial?

[00:16:07] Speaker 01:
Well, the expert admitted at trial that these differences were substantial, that they had a substantial benefit to having the frame separate from the self-contained sign.

[00:16:20] Speaker 02:
Do the differences matter if the claim doesn't implicate those differences?

[00:16:27] Speaker 02:
I mean the claim here just says the frame what surrounds the sign and is used to mount the sign on the bus and it doesn't say well it should also be disassemblable so you can take apart the sign or this that and the other.

[00:16:45] Speaker 02:
All of these other benefits are not

[00:16:48] Speaker 01:
recited anywhere in the claim does that make a difference no i don't think that makes a difference of being able to you know it's it's often the case that you realize what the benefits are by reviewing the description of the invention that is presented you know in the specifications it's not necessarily always obvious exactly how uh... the claim limitations are going to result so that benefits specified in the specification even if they may not be articulated in the claim

[00:17:18] Speaker 02:
Nonetheless, the benefits articulated in the specification are things that should be considered in the jury's determination of the factual question of what the function is for the function-way result test.

[00:17:33] Speaker 01:
Well, the function or the result, I mean, I think the benefits are the result.

[00:17:37] Speaker 01:
You get that result because of the way in which the frame functions in relationship to the self-contained sign.

[00:17:46] Speaker 02:
So how all this kind of... If that question is a fact question, wasn't that question then presented to the jury in this case?

[00:17:55] Speaker 02:
The jury obviously came down against you, but if they had that question before them, and if that's a fact question, what are we to do with that?

[00:18:07] Speaker 01:
Well, we always have to look.

[00:18:08] Speaker 01:
I mean, the test is whether there were substantial evidence at the end of the day.

[00:18:12] Speaker 03:
The jury's function is not to interpret the patent.

[00:18:16] Speaker 03:
Well, it's true.

[00:18:18] Speaker 01:
The claim constructions already happen.

[00:18:19] Speaker 03:
No, but we're talking about what the specification, what the patent describes the function is.

[00:18:25] Speaker 03:
If the patent says the function is x, the jury, it's not up to the jury to decide that the function is something different.

[00:18:34] Speaker 01:
Well, the patent's read as a whole, though.

[00:18:37] Speaker 01:
I mean, the jury's entitled to look at the patent in terms of, you know, that's why you have an expert at trial.

[00:18:44] Speaker 01:
OK.

[00:18:44] Speaker 01:
And when you have an expert at trial that then admits that there is a way that this functions together.

[00:18:52] Speaker 03:
I'm not saying what role an expert should play in interpreting the patent.

[00:18:57] Speaker 03:
And constantly and continuously, we've said that the interpretation of the patent, except in unusual circumstances,

[00:19:04] Speaker 03:
is a matter for the court based on expensive evidence and so it would seem as though the interpretation of the patent as to what the function is if the patent addresses the function is going to be dispositive and that's what we've said in our cases yes and this was a DOE claim because the court said there are differences there had to be a difference in the function where the court said there are differences and the court left that to the jury to determine as a matter of fact whether they are substantial

[00:19:34] Speaker 02:
But they're substantial as to the function, way, and result.

[00:19:39] Speaker 01:
So I think the reconciliation here, Judge Dock, is yes, the judge decided this was a DOE situation, not a literal infringement.

[00:19:47] Speaker 01:
That was the judge's role.

[00:19:49] Speaker 01:
The jury winds up deciding, are those substantial differences or not?

[00:19:54] Speaker 01:
Well, at least it did in this case.

[00:19:58] Speaker 01:
if the court wanted to decide that you can never send a DOE claim to the jury.

[00:20:03] Speaker 03:
No, no, no, no.

[00:20:04] Speaker 03:
That's not the point at all.

[00:20:05] Speaker 03:
The point is, if the patent says what the function is, it's not up to the jury to determine what the patent says.

[00:20:13] Speaker 03:
And it's not up to the jury to find a different function than what's said in the patent.

[00:20:18] Speaker 03:
And we've said that.

[00:20:21] Speaker 03:
in various cases after crown packaging, that if the specification talks about the function, then that can be dispositive.

[00:20:32] Speaker 04:
Can I just add, I don't know if you had anything to add to that.

[00:20:37] Speaker 01:
I don't really need to disagree with it.

[00:20:42] Speaker 01:
I think the question really for the jury was are the substantial differences or not.

[00:20:47] Speaker 01:
And that is what the expert conceded that they were substantial.

[00:20:51] Speaker 01:
Because if it's a benefit to the end user and the manufacturer and distributor, it's substantial.

[00:20:56] Speaker 04:
In this case, as you have argued it to us, do you need us to find that no reasonable juror could have found doctrine of equivalence infringement as the case was presented?

[00:21:09] Speaker 01:
That is what I believe the court would need to find unless it's going to conclude that this never should have gone to a jury in the first place.

[00:21:21] Speaker 01:
OK.

[00:21:21] Speaker 03:
Thank you, Your Honors.

[00:21:34] Speaker 05:
Mr. Cunningham.

[00:21:34] Speaker 05:
Thank you, Your Honors.

[00:21:36] Speaker 05:
May it please the court, Tom Cunningham,

[00:21:39] Speaker 05:
on behalf of SmartTrend Manufacturing.

[00:21:43] Speaker 05:
While we're on the utility patent, I think let's just go there.

[00:21:47] Speaker 05:
They talk about these admissions he made about various advantages that they're trying to import into the claim.

[00:21:55] Speaker 05:
He was asked about specific embodiments in the specification and the advantages of those.

[00:22:02] Speaker 05:
And after each one, he specifically said, but that's not part of the claim.

[00:22:05] Speaker 05:
That's not one of the embodiments that's claimed.

[00:22:07] Speaker 03:
OK, but interpreting the patent and what's an embodiment and whether the frame embodiment requires those functions is a matter for the court.

[00:22:17] Speaker 03:
And we've said that a patent's disclosure is relevant and can be dispositive of the function.

[00:22:25] Speaker 03:
And so the argument here is that the patent discloses what the function is.

[00:22:30] Speaker 03:
And it's not up to the expert to interpret the patent.

[00:22:33] Speaker 03:
It's up to the court.

[00:22:35] Speaker 05:
Well, he certainly applied in the function wave result test, he applied the functions of the claim and analyzed those in light of the experience device.

[00:22:44] Speaker 03:
But what I'm saying is, interpreting what's the function, you have to look at the patent, right, if the patent deals with that question.

[00:22:50] Speaker 03:
If it doesn't deal with it, that's another matter.

[00:22:53] Speaker 03:
But if the patent tells you what the function is, if the patent here is set explicitly, the function of the frame is to allow easy replacement in case you want a different signage to be included within the frame.

[00:23:10] Speaker 03:
If the patent had been explicit as to what the function was, that would be binding, right?

[00:23:16] Speaker 05:
But I don't think it was.

[00:23:18] Speaker 03:
No, no.

[00:23:18] Speaker 03:
I understand.

[00:23:19] Speaker 03:
But answer my question.

[00:23:22] Speaker 03:
If the patent said what the function was, and their argument is that it did, but just assume for the moment, if the patent said what the function is, that's binding, right?

[00:23:31] Speaker 05:
I would think so, yes, Your Honor.

[00:23:32] Speaker 03:
Yeah.

[00:23:33] Speaker 04:
Well, and here, didn't the board construe a frame and construe it as having to be separate and distinct?

[00:23:43] Speaker 05:
Yes, a separate and distinct component as opposed to being an integral component.

[00:23:49] Speaker 04:
And so that is the scope of the claim as the case comes to us, is that it's separate and distinct.

[00:23:56] Speaker 04:
Yes.

[00:23:56] Speaker 04:
And doesn't the record, including the intrinsic evidence of the patent but also your own expert, indicate perhaps as the only reasonable conclusion that there are benefits that follow from the frame being separate and distinct?

[00:24:13] Speaker 05:
Those benefits are from the frame being separable.

[00:24:17] Speaker 04:
And they're separate.

[00:24:19] Speaker 05:
Well, because the embodiments that were in the specification are directed to a sign which has a separate self-contained sign and a separate frame.

[00:24:31] Speaker 05:
Whereas you can take that sign and remove and put in another one.

[00:24:35] Speaker 05:
This claim is not written to that.

[00:24:37] Speaker 05:
The claim language itself says it's a sign comprising a frame

[00:24:43] Speaker 04:
The claim as construed by the district court requires the frame to be separate and distinct, does it not?

[00:24:49] Speaker 05:
It does.

[00:24:50] Speaker 04:
And then the judge gave some- And so aren't there benefits?

[00:24:53] Speaker 04:
Doesn't this record indisputably show that there are benefits from the frame being separate and distinct?

[00:25:00] Speaker 05:
I don't believe so, Your Honor.

[00:25:02] Speaker 05:
I think that those benefits are directed to embodiments where it's separable.

[00:25:08] Speaker 04:
All right.

[00:25:08] Speaker 04:
Then help me.

[00:25:08] Speaker 04:
I'm not following your distinction between separable and separate.

[00:25:12] Speaker 05:
OK.

[00:25:14] Speaker 05:
Separable is like here the Optilux sign is a tub where the frame and the rear panel are injection molded.

[00:25:25] Speaker 05:
Injection molded, so they're a single piece.

[00:25:30] Speaker 05:
The claim covers a sign that's going to have a frame with a rear panel that's either glued, screwed, whatever.

[00:25:39] Speaker 05:
Both of them have the components in and the lens on top.

[00:25:43] Speaker 05:
And the experts said, listen, those are the same.

[00:25:46] Speaker 05:
Those operate the same way.

[00:25:47] Speaker 05:
They hold the components, which is what the claim says, function surrounding the components is one, and then allowing it to be mounted.

[00:25:55] Speaker 05:
And the frame allows it, and both, allows it to be mounted.

[00:25:58] Speaker 05:
And he said, that's an insubstantial change.

[00:26:00] Speaker 05:
They're interchangeable.

[00:26:03] Speaker 05:
And what they're saying is, well,

[00:26:05] Speaker 05:
Because when you take apart the opulence sign, you have to rip off the lens, and it breaks from the frame.

[00:26:13] Speaker 05:
That is separable.

[00:26:15] Speaker 05:
That's not separate and distinct.

[00:26:16] Speaker 05:
The lens and the frame may be separate components, but the claim doesn't require that they're separate.

[00:26:23] Speaker 04:
The district court agrees with that by taking literal infringement away from you, right?

[00:26:27] Speaker 05:
Well, the district court also framed the issue for everyone when it gave its opinion.

[00:26:35] Speaker 05:
For the jury, it said, the primary difference then appears to be the integrality of the frame to the remainder of the sign.

[00:26:44] Speaker 05:
And whether this difference is substantial is a question for the jury.

[00:26:47] Speaker 05:
So it's integrality.

[00:26:50] Speaker 05:
Tough word to say.

[00:26:51] Speaker 04:
I guess what evidence did the jury have that that was not a substantial difference?

[00:26:56] Speaker 04:
How could any reasonable fact finder have found on this record that that was not a substantial difference?

[00:27:06] Speaker 05:
the expert testimony.

[00:27:09] Speaker 04:
Your expert repeatedly said there's benefits that follow from it being separate or separable.

[00:27:14] Speaker 05:
He said separable and I believe there's a distinction there, Your Honor.

[00:27:23] Speaker 02:
A lot of discussion in the briefs about

[00:27:26] Speaker 02:
function way result test talk about the frame being super surrounds the sign and mounts the sign to the bus.

[00:27:35] Speaker 02:
That's correct.

[00:27:36] Speaker 02:
Those are the only attributes to be considered in a function way result test.

[00:27:41] Speaker 02:
Yes.

[00:27:42] Speaker 02:
But it's not misplaced given the fact that the district court construed the claim

[00:27:48] Speaker 02:
that frame as being separate and distinct.

[00:27:52] Speaker 02:
And isn't that the functionality in question that the jury must consider?

[00:28:00] Speaker 05:
Again, Your Honor, I come back.

[00:28:01] Speaker 05:
I think that there's a difference between separate and distinct and separability.

[00:28:07] Speaker 02:
We have to look at what the district court interpreted, or how the district court interpreted the claim.

[00:28:17] Speaker 05:
And I think her guidance in regards to what the jury should look at is the integrity of the two, is what she expected from an equivalence analysis given her construction.

[00:28:37] Speaker 05:
I'd like to move to the design patent.

[00:28:40] Speaker 05:
There's obviously two issues.

[00:28:44] Speaker 05:
I'll just spend a little bit of issue on the foundation, what they call the foundation issue.

[00:28:48] Speaker 05:
I think it really is a qualifications issue.

[00:28:51] Speaker 05:
I think you all alluded to this, that it was waived.

[00:28:55] Speaker 05:
And we believe so.

[00:28:56] Speaker 05:
If you look at their below, it was always about qualifications.

[00:29:01] Speaker 05:
Even in their opening brief, it was about qualifications.

[00:29:03] Speaker 05:
Only when you got to their reply brief did they say, well, Mr. York didn't have the proper foundation laid so he could testify from the perspective of an ordinary user.

[00:29:14] Speaker 05:
I think he did, clearly.

[00:29:17] Speaker 04:
Where do you see the foundation being laid that he could opine?

[00:29:24] Speaker 05:
Sure.

[00:29:25] Speaker 05:
I think it's substantial.

[00:29:28] Speaker 05:
Throughout his testimony, we all know he's an unaccomplished designer of illuminated signage and an expert in illuminated signage.

[00:29:38] Speaker 05:
In the appendix at 1691 and 92, he talked about how he's done

[00:29:43] Speaker 05:
uh... signage for automotive applications including planes and ships at uh...

[00:29:53] Speaker 05:
Well, he did say that, at appendix 1761 and 62, that he's designed them for very similar type of vehicles in the transportation, like police cars and ambulances, where the conspicuousness is very important.

[00:30:10] Speaker 05:
And he says those had the same challenges as buses.

[00:30:13] Speaker 03:
OK, but the ordinary observer here is a purchaser of school buses, right?

[00:30:17] Speaker 05:
Yes.

[00:30:18] Speaker 05:
So he doesn't have that experience.

[00:30:22] Speaker 05:
He's not been a purchaser of school buses.

[00:30:25] Speaker 03:
Or familiar with purchasers.

[00:30:27] Speaker 05:
Well, he's familiar.

[00:30:29] Speaker 05:
He talked about Appendix 1765, how he has dealt with the purchasers who outfit the vehicles like police cars and ambulances.

[00:30:39] Speaker 05:
So he knows what's important to them.

[00:30:41] Speaker 05:
He also talked about, in 1764,

[00:30:47] Speaker 05:
that he researched all the DOT bus regulations.

[00:30:50] Speaker 05:
He talked to all the smart-trend employees about what's important to customers to understand the needs of the industry.

[00:30:57] Speaker 05:
So he did work before this.

[00:30:59] Speaker 05:
And I think that they're narrowing what his qualifications need to be to be able to testify at this.

[00:31:09] Speaker 05:
The bar in the Sixth Circuit is pretty low on this.

[00:31:13] Speaker 05:
We cite the cases.

[00:31:17] Speaker 05:
in our brief, you don't have to be an expert across the board on everything.

[00:31:21] Speaker 05:
I think it's the first Tennessee case and the Morales case.

[00:31:25] Speaker 05:
If the jury is instructed that they can determine the credibility of the witness and the other side had the opportunity to cross-examine, then that's enough for the jury.

[00:31:39] Speaker 05:
And I think that that's, if not waived, I think clearly he

[00:31:44] Speaker 05:
had enough to create foundation.

[00:31:46] Speaker 04:
If we were to remand for further proceeding on the design patent, should the district court entertain another challenge to whether Mr. York can testify from the perspective of an ordinary observer, or in your view, is it too late forever?

[00:32:08] Speaker 05:
I guess it depends on what it's remanded for.

[00:32:11] Speaker 05:
I think that would affect that.

[00:32:17] Speaker 03:
Suppose they were remanded for a new trial.

[00:32:22] Speaker 05:
I don't know.

[00:32:22] Speaker 05:
I don't know, Your Honor.

[00:32:23] Speaker 05:
I think that they had the opportunity to object to them before.

[00:32:27] Speaker 05:
I think that giving them another bite at the apple

[00:32:33] Speaker 05:
at this point, would be fair.

[00:32:35] Speaker 02:
I think they waived it.

[00:32:36] Speaker 02:
What would foreclose them from objecting in a new trial?

[00:32:43] Speaker 05:
I don't know, Your Honor.

[00:32:45] Speaker 05:
I don't know.

[00:32:46] Speaker 05:
I mean, they probably could object.

[00:32:48] Speaker 05:
But frankly, they should have made the objection.

[00:32:51] Speaker 05:
They never made a foundation objection at the district court.

[00:32:55] Speaker 05:
Had they, we would have had the opportunity to try and fill in the gaps.

[00:33:00] Speaker 05:
But they didn't do that.

[00:33:01] Speaker 05:
Foundation objections have to be clear.

[00:33:03] Speaker 03:
Well, I guess if there were an objection at a new trial, you could fill in the gaps, right?

[00:33:06] Speaker 05:
Yes, exactly, Your Honor.

[00:33:09] Speaker 04:
I can ask you on the claims instruction.

[00:33:11] Speaker 04:
I think you argue that the court construed transparent based solely on extrinsic evidence.

[00:33:18] Speaker 04:
I think that's what you say in your brief.

[00:33:20] Speaker 04:
I think that may be true, but wouldn't that be an improper approach to claim construction?

[00:33:25] Speaker 05:
Well, when I say that, I say there's nothing in the intrinsic evidence to suggest what transparency means, or very little, if any.

[00:33:35] Speaker 04:
To me, what transparency means and whether these claims are limited to transparent are two different things.

[00:33:44] Speaker 04:
I understood you to be

[00:33:46] Speaker 04:
in part arguing that the claims are not even limited to just transparent, whatever transparent means.

[00:33:53] Speaker 04:
Are you conceding that the claims are limited to transparent?

[00:33:58] Speaker 05:
No, Your Honor.

[00:34:00] Speaker 05:
There's a difference between, as Judge Lind pointed out, there's a difference between the word transparent and the word transparency.

[00:34:06] Speaker 05:
The word transparency imparts a degree.

[00:34:10] Speaker 05:
And that's where the issue is.

[00:34:12] Speaker 05:
And they're the ones who raise this.

[00:34:13] Speaker 05:
Summary judgment, they came in and said,

[00:34:15] Speaker 05:
This requires that it be completely transparent, and ours is not.

[00:34:19] Speaker 05:
Therefore, we win.

[00:34:21] Speaker 05:
And the judge, we came in and said, well, no, Your Honor, there's an issue here.

[00:34:26] Speaker 04:
And she construed Transparent C. And I guess why should we not send it back saying these claims are limited to transparent, but go ahead and figure out what transparent means in this art?

[00:34:43] Speaker 05:
Where would the word transparent come in that could limit the claims?

[00:34:48] Speaker 05:
It's not anywhere in the patent.

[00:34:50] Speaker 04:
What's in the patent is Transparent C. The patent says the oblique shading lines are to indicate transparent.

[00:34:57] Speaker 04:
The patent says the oblique shading lines denote Transparency.

[00:35:14] Speaker 05:
Transparency is, as Judge Lin alluded to, denotes a degree of something.

[00:35:21] Speaker 05:
And that's what Mr. York said.

[00:35:23] Speaker 05:
Mr. York said you have completely transparent

[00:35:26] Speaker 05:
surfaces and you have opaque.

[00:35:29] Speaker 03:
Okay.

[00:35:30] Speaker 03:
So she could have instructed the jury that way, but she did.

[00:35:33] Speaker 03:
What she instructed the jury was that transparent means translucent.

[00:35:39] Speaker 03:
That seems a hard sell.

[00:35:41] Speaker 03:
Transparency means translucent.

[00:35:44] Speaker 03:
That can't be right.

[00:35:46] Speaker 05:
I think it was that they're based on his opinion that they're interchangeable because you have, um,

[00:35:55] Speaker 05:
this continuum, right?

[00:35:57] Speaker 05:
You have this continuum where you go across.

[00:36:00] Speaker 05:
And as something goes from completely transparent, it gains a measure of translucency, but it still has a measure of transparency.

[00:36:07] Speaker 05:
And that's what Mr. York's opinion was.

[00:36:12] Speaker 05:
His opinion was based on

[00:36:16] Speaker 05:
Her opinion was based on those facts before her.

[00:36:19] Speaker 05:
She also considered the MPEP, which is also extrinsic evidence, and she found that this was the meaning.

[00:36:28] Speaker 03:
Well the problem is the MPEP treats transparent and translucent as different.

[00:36:37] Speaker 05:
But she considered that in her analysis.

[00:36:39] Speaker 05:
And that's just more extrinsic evidence that she considered and came to her opinion.

[00:36:44] Speaker 05:
And she's entitled to deference on that opinion under TEVA.

[00:36:55] Speaker 05:
I wasn't going to address claim construction unless you guys have any questions on the alternative grounds for affirmance.

[00:37:06] Speaker 05:
I will note one thing in regards to that in that the defendants say that that should be remanded if you decide to change the claim construction.

[00:37:19] Speaker 05:
I don't think that's necessary here.

[00:37:23] Speaker 05:
As we point out in our brief, they basically admitted that if our construction, at summary judgment, if our constructions were accepted, there was infringement.

[00:37:32] Speaker 03:
Okay, I think we're out of time.

[00:37:36] Speaker 05:
Okay.

[00:37:36] Speaker 05:
Thank you.

[00:37:46] Speaker 03:
Okay.

[00:37:48] Speaker 01:
Your Honor, thank you for the two minutes of rebuttal time.

[00:37:52] Speaker 01:
I want to first point out that

[00:37:56] Speaker 01:
At some of those appendix sites where he was talking about York's qualifications, what he was talking about was York testifying about what an ordinary observer would do, and there's really nothing in those specific sites that I looked at that says anything about his qualifications.

[00:38:10] Speaker 01:
Those were actually set forth in four specific points, Appendix 1681, Appendix 1693,

[00:38:17] Speaker 01:
appendix 1753 and appendix 1754.

[00:38:19] Speaker 01:
Those are the ones that really drilled down on whether he's qualified or not.

[00:38:24] Speaker 01:
And at 1754, you can see that I've not worked in the school bus industry specifically.

[00:38:28] Speaker 01:
I worked in the automotive industry.

[00:38:32] Speaker 01:
I worked where these signs would function.

[00:38:34] Speaker 01:
And he's never said that he worked with any ordinary purchasers in either of those industries.

[00:38:40] Speaker 01:
The objection to an expert's

[00:38:46] Speaker 01:
Qualifications to provide testimony that is about to be elicited by the attorney is an objection to foundation.

[00:38:54] Speaker 01:
That's what that is.

[00:38:56] Speaker 01:
It's a very specific objection to foundation that when you have an expert in front of you, and the testimony is about to go beyond the expertise that the expert has been admitted for.

[00:39:08] Speaker 01:
And that is what happened in this case, and that is timely.

[00:39:11] Speaker 01:
I agree with you, Judge Stark, that there is a distinction, the distinction you draw between what transparency means

[00:39:22] Speaker 01:
and whether there's a distinction between transparency and translucency.

[00:39:26] Speaker 01:
I believe that's how you said it.

[00:39:28] Speaker 01:
Or whether it's limited to transparency are two different things you said.

[00:39:33] Speaker 01:
I completely agree with that.

[00:39:35] Speaker 01:
And I don't think it would be inappropriate for the court to send it back to have the district court have further proceedings to construe transparency.

[00:39:44] Speaker 01:
I think we're going to wind up with a plain and ordinary meaning that any

[00:39:51] Speaker 01:
seventh or eighth grader would understand based on their science classes what transparency means, but certainly there is room for development on that point.

[00:40:01] Speaker 01:
Okay, I think we're out of time.

[00:40:03] Speaker 01:
Thank you.