[00:00:00] Speaker 04:
This is U.S.

[00:00:01] Speaker 04:
Wells Services versus Halliburton Energy Services, 2023, 1608.

[00:00:06] Speaker 04:
Mr. Tom.

[00:00:08] Speaker 04:
Good morning, Your Honors.

[00:00:25] Speaker 01:
May it please the Court?

[00:00:29] Speaker 01:
The question in this appeal is a question of claim construction.

[00:00:34] Speaker 01:
And I know the court is aware of the claim limitation at issue.

[00:00:39] Speaker 01:
It primarily comes down to the meaning of frequently performing electric motor diagnostics to prevent damage to the electric motors if they become grounded or shorted.

[00:00:51] Speaker 01:
And as we explained in our brief, our position is that that if phrase that ends that limitation is critical.

[00:00:59] Speaker 01:
And we think that's.

[00:01:00] Speaker 03:
You forfeited that, correct?

[00:01:02] Speaker 03:
You forfeited that argument, the if argument.

[00:01:05] Speaker 01:
No, Judge Rainer, I don't believe so.

[00:01:07] Speaker 01:
I think what we've done on appeal is we've taken a look at the record.

[00:01:12] Speaker 01:
And to be candid, I think some of the arguments on both sides were not the exemplars of clarity.

[00:01:20] Speaker 01:
But throughout the entire proceeding below, there was always this focus on the if phrase.

[00:01:26] Speaker 01:
So for example, at appendix 4418, and this is in the patent owner response,

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So at 4118 Patent Owners' Response, we are presenting arguments in terms of the frequently performing electric motor diagnostics limitation and

[00:02:11] Speaker 01:
You can see where in the middle of the page, electric motor diagnostics is bowled in an underline to prevent damage to the electric motor if they become grounded or shorted.

[00:02:21] Speaker 01:
So the if is bowled.

[00:02:23] Speaker 01:
And that's repeated throughout the proceeding below.

[00:02:27] Speaker 04:
But if is the distinguishing characteristic here.

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That means that performing these diagnostics without they're being grounded or shorted

[00:02:41] Speaker 04:
is in the prior art, and so to do it after the fact makes it patentable.

[00:02:48] Speaker 04:
I mean, that's almost an absurdity.

[00:02:52] Speaker 01:
So I'd push back a little bit on saying it's absurdity.

[00:02:55] Speaker 01:
We're responding to you.

[00:02:57] Speaker 04:
Just a little bit.

[00:02:58] Speaker 01:
A fair bit, Your Honor.

[00:03:00] Speaker 01:
We'll respond to Halliburton's position in the petition.

[00:03:03] Speaker 01:
And this is the case they presented.

[00:03:05] Speaker 01:
And it's primarily based entirely on the Horakoshi reference, providing a VFD that performs diagnostics.

[00:03:13] Speaker 01:
So if you look at the patent itself, our patent itself, and this is at appendix 87,

[00:03:25] Speaker 01:
and column four.

[00:03:27] Speaker 01:
And this part of the disclosure is consistent with the claim construction we're presenting where it says, for example, motor diagnosis can be performed frequently, for example, on the application of power or with each start to prevent damage to a grounded or shorted electric motor.

[00:03:45] Speaker 01:
So that phrase is talking about a grounded or shorted electric motor.

[00:03:50] Speaker 02:
But that's inconsistent with your own theory because it says you can

[00:03:54] Speaker 01:
satisfied the claim limitation by Doing a diagnostic when you start the motor which is not after a short has occurred No, absolutely not judge date a short you can have a motor that has experienced a short and You stopped it, and then you restart it and so when you restart that motor

[00:04:15] Speaker 01:
I understand maybe you're not agreeing with me right now, but that is the theory that Halliburton presented in his position.

[00:04:24] Speaker 02:
You keep misquoting the claim.

[00:04:26] Speaker 02:
It doesn't say do diagnostics if they become grounded or shorted.

[00:04:30] Speaker 02:
It said to prevent damage to the electric motors if they become grounded or shorted.

[00:04:36] Speaker 02:
Those two things are different.

[00:04:40] Speaker 02:
In other words, you can perform a diagnostic before the short to prevent damage in case it becomes shorted.

[00:04:47] Speaker 01:
Correct.

[00:04:49] Speaker 01:
And this was all discussed in the context of the Horikoshi reference, which discloses only detecting a ground or a short.

[00:04:59] Speaker 01:
And our patent with the if is after the motor has been grounded or shorted.

[00:05:05] Speaker 01:
And that's the plain reading of the claim term.

[00:05:09] Speaker 01:
It's consistent with the spec in terms of column 48 on page 87 of the appendix, which I just read.

[00:05:14] Speaker 01:
And it's also consistent with the prosecution history with respect to the related 410 patent, which a similar argument was raised.

[00:05:23] Speaker 01:
And we also identify the extrinsic evidence, our expert testimony.

[00:05:29] Speaker 01:
All of this is consistent.

[00:05:31] Speaker 01:
And there's no doubt that the Horikoshi reference is able to detect a ground or a short.

[00:05:38] Speaker 01:
And we don't dispute that.

[00:05:39] Speaker 04:
But doesn't if-modify prevent damage if rather than modifying frequently performing?

[00:05:51] Speaker 04:
which I think was what Judge Teich was suggesting.

[00:05:55] Speaker 01:
Well, that's Halliburton's argument in response to our position.

[00:05:57] Speaker 04:
Yes, but isn't that a fair rating of the language?

[00:06:00] Speaker 01:
I disagree with that because that phrase, right, so when you read the claim term, it's that subsequent clause, if they become grounded or assorted, if they, references back to the electric motors.

[00:06:15] Speaker 04:
Motors.

[00:06:16] Speaker 01:
And it becomes superfluous if you just read out that if phrase as not requiring a predicate act of the engine, the motors becoming grounded or shorter.

[00:06:27] Speaker 04:
But interpreting if to modify frequently makes no sense because it says it doesn't cover performing diagnostics unless

[00:06:45] Speaker 04:
the word has become grander or shorter, which makes no sense.

[00:06:50] Speaker 01:
Sorry, do you want to say it again?

[00:06:55] Speaker 04:
The if has to modify preventing.

[00:06:59] Speaker 04:
If it modified frequently performing, it would mean that language doesn't cover

[00:07:08] Speaker 04:
performing in the absence of the engine being grounded or shorted.

[00:07:15] Speaker 04:
That makes no sense.

[00:07:17] Speaker 04:
The diagnostic method is intended to be performed at any time.

[00:07:24] Speaker 01:
right but that view of it then makes that if they become grounded or shorted completely superfluous the point of this is there's a distinction and that's what we've always argued below to the board is that there's a distinction between electric motor diagnostics

[00:07:40] Speaker 01:
and then identifying a short or a ground.

[00:07:43] Speaker 01:
And Halliburton presented their obviousness position on the premise that Horikoshi is able to detect a short or a ground.

[00:07:51] Speaker 01:
We don't dispute that.

[00:07:53] Speaker 01:
But then when you look at our specification in context with this phrase limitation, with the if, the if is a temporal indicator in that claim limitation, then it necessarily requires that that to have occurred

[00:08:09] Speaker 01:
before the electric motor diagnostics is performed.

[00:08:14] Speaker 04:
Doesn't the specification show that diagnostics can be performed with each start?

[00:08:21] Speaker 01:
Correct, Judge Lorry.

[00:08:22] Speaker 01:
And then again, that's entirely consistent with our interpretation of the claim, because under that situation or scenario, you have an electric motor that has already experienced a short air ground

[00:08:37] Speaker 01:
And then when you start it up, you are performing electric motor diagnostics to ensure that however that motor.

[00:08:45] Speaker 02:
Do you have a suggestion of that in that part of the specification, that there's already been a short when it starts up?

[00:08:50] Speaker 02:
It talks about any time it starts up, you can do a diagnostic.

[00:08:54] Speaker 02:
It's not conditioned on a short having occurred before then.

[00:08:58] Speaker 01:
No, Judge, I disagree strongly on that.

[00:09:01] Speaker 01:
Because again, going back to the sentence that I just read, it says that diagnostics can be performed frequently to prevent damage to a grounded or shorted electric motor.

[00:09:14] Speaker 01:
And that phrase, when you're saying a grounded or shorted electric motor,

[00:09:19] Speaker 01:
that necessarily indicates that the motor is already grounded or shorted.

[00:09:24] Speaker 04:
You left out the parenthetical.

[00:09:27] Speaker 04:
For example, in the application of power, are we each stuck?

[00:09:32] Speaker 01:
It's still consistent, Judge Laurie.

[00:09:33] Speaker 01:
I left it out because I read it before.

[00:09:35] Speaker 01:
But that is consistent because, again, if you have an electric motor that has experienced a ground or a short in the past, Horikoshi would teach that you could detect that.

[00:09:48] Speaker 01:
But that doesn't prevent you from running the electric motor in the future.

[00:09:52] Speaker 01:
And what the claim that we have is directed to is performing the diagnostics once that ground or short has occurred in the electric motor.

[00:10:02] Speaker 01:
And then that future diagnostics, that is what prevents damage to the electric motor.

[00:10:10] Speaker 01:
Are there any further questions?

[00:10:12] Speaker 01:
I'll reserve the remainder of my time.

[00:10:15] Speaker 04:
We will serve it for you.

[00:10:15] Speaker 01:
Thank you, Your Honor.

[00:10:17] Speaker 04:
Mr. Bova.

[00:10:32] Speaker 00:
Good morning, Your Honors, and may it please the Court.

[00:10:34] Speaker 00:
Justin Bova for the USPTO.

[00:10:36] Speaker 00:
I'd like to jump right into where Mr. Daub pointed to the construction that they presented to the Board.

[00:10:42] Speaker 00:
He cited to Appendix 4418,

[00:10:45] Speaker 00:
But at 4411 and 4413 is where they presented their position for the claim construction here.

[00:10:51] Speaker 00:
So at 4411, what they said was this means test performed on an electric motor to detect problems.

[00:11:00] Speaker 00:
And then on 4413, in the top paragraph there, it says, this phrase, the phrase electric motor diagnostics, means that the motor diagnostics can be performed

[00:11:11] Speaker 00:
to prevent damage to a grounded or shorted electric motor, not that the VFD specifically detects a grounding or short.

[00:11:18] Speaker 00:
Nowhere in there is there any explanation that this only occurs after a grounding or short.

[00:11:23] Speaker 00:
And consistent with this court's decisions in Google and in Interactive Gift Express, that's forfeited.

[00:11:32] Speaker 00:
There's no reason that the court even need to consider this new construction appeal.

[00:11:36] Speaker 00:
But even if it did,

[00:11:37] Speaker 00:
As your honors have pointed out, the flame language of this makes clear that that if clause is modifying the to prevent clause.

[00:11:47] Speaker 00:
So the question is, why are these diagnostics being performed to prevent damage to the motors?

[00:11:54] Speaker 00:
And what causes that damage if there is a short or a grounding?

[00:12:00] Speaker 00:
That's also consistent with the specification that Mr. Dowd pointed to in column four where it's talking about this.

[00:12:07] Speaker 00:
Judge Dyke and Judge Laurie both pointed out that this can happen on each start, which means, of course, there's no grounding because there's no power to the motor yet.

[00:12:16] Speaker 00:
So you then are running this diagnostic to prevent any potential damage on the start or on the application of power to the motor.

[00:12:28] Speaker 00:
Unless the court has any questions, I'll see you the rest of my time.

[00:12:31] Speaker 04:
My question is, what is the patent office issue claims of this nature?

[00:12:37] Speaker 00:
I don't have a great answer for that, Your Honor, except for that this is a, this is a, there is guidance in the MPEP 2111 about conditional phrases, treats it as limiting.

[00:12:49] Speaker 00:
If we get into the merits here with Horikoshi, the Board did find, made these findings in Appendix 23 to 29, that Horikoshi discloses it even if considered a limitation.

[00:13:01] Speaker 00:
But that's all I have for you.

[00:13:03] Speaker 04:
Thank you, Mr. Clover.

[00:13:04] Speaker 04:
Thank you, Your Honor.

[00:13:05] Speaker 04:
Mr. Dowd has some time.

[00:13:15] Speaker 01:
Judge, I wanted to answer your question.

[00:13:19] Speaker 01:
The Patent Office issued these claims because they were presumed they were patentable at the time.

[00:13:26] Speaker 01:
And they're novel claims.

[00:13:28] Speaker 01:
There's no question about their novelty.

[00:13:31] Speaker 01:
And the only question is whether these two references, Coley and Horikoshi, teach that if limitation.

[00:13:39] Speaker 01:
But they don't, because Horikoshi only teaches the detecting of a short or a ground.

[00:13:46] Speaker 01:
And if you agree with either the board's interpretation of the claim or Halliburton's interpretation of the claim, I agree with you.

[00:13:55] Speaker 01:
But I submit your honor under the correct interpretation.

[00:13:59] Speaker 01:
And when you read paragraph 87, there's no way to read paragraph, sorry, appendix 87 on column 4 to not understand that the diagnostics

[00:14:13] Speaker 01:
is performed on an electric motor that already is grounded or shorted.

[00:14:19] Speaker 01:
And that's the distinction, because the claim structure is grounding or shorting is one event, and then electric motor diagnostics is a subsequent event.

[00:14:30] Speaker 01:
Horikoshi teaches only the first part.

[00:14:33] Speaker 01:
And there's no reference that teaches the continued electric motor diagnostics when you have a ground or a short.

[00:14:41] Speaker 01:
And unless the court has further questions, I'll ask that the court reverse.

[00:14:47] Speaker 04:
Thank you.