[00:00:00] Speaker 01: The final case for argument this morning is 24-2299, Verradyne v. DBG. [00:00:09] Speaker 01: Good morning. [00:00:10] Speaker 01: Please proceed. [00:00:10] Speaker 04: Good morning. [00:00:11] Speaker 04: May it please the court. [00:00:13] Speaker 04: The finding of prosecution disclaimer should be reversed. [00:00:16] Speaker 04: Summary judgment of non-infringement should be vacated and the case should be remanded. [00:00:20] Speaker 04: No prosecution disclaimer occurred here. [00:00:22] Speaker 04: We've got to look at the prosecution as a whole. [00:00:23] Speaker 04: In this case, the prosecution took place over two and a half years. [00:00:26] Speaker 04: Here we have one allegedly disclaiming statement, A2527. [00:00:30] Speaker 02: Can you focus on any arguments you have for why, if that were the only thing that there was, why that might not be enough as opposed to [00:00:43] Speaker 02: everybody kind of ignored it afterwards, the rest of the prosecution history. [00:00:49] Speaker 04: I'm sorry, Your Honor. [00:00:50] Speaker 04: I'm not sure I follow the question. [00:00:52] Speaker 02: I'd like you to look at, I guess, what is on 2556 and 782. [00:00:58] Speaker 02: It's in here two places. [00:01:00] Speaker 02: There's one paragraph. [00:01:01] Speaker 02: That's the affirmative basis for the [00:01:08] Speaker 02: ruling below a prosecution disclaimer. [00:01:11] Speaker 02: And then the argument or the analysis went on to say, what happened later didn't neutralize that. [00:01:18] Speaker 02: I want you to put aside that second thing, the what happened later didn't neutralize it. [00:01:23] Speaker 02: And tell me, do you have some reason why we should conclude that this paragraph, the 2556, does not amount to a disclaimer, even when considered in isolation? [00:01:40] Speaker 04: Yes, Your Honor. [00:01:42] Speaker 04: With respect to, and I believe the page we're looking at is 2527. [00:01:45] Speaker 04: 2527? [00:01:45] Speaker 04: 2556 was the examiner's rejection of that argument. [00:01:51] Speaker 04: Oh, okay. [00:01:53] Speaker 04: So with respect to that alone now, you do have to look at the prosecution as a whole. [00:01:58] Speaker 04: Let's step aside from that test, which requires us to look for prescriptions. [00:02:01] Speaker 00: Just to put a little more polish on this, it's just that I understand you have argued that what is at 2527 is not alone a clear and unambiguous disclaimer. [00:02:14] Speaker 00: Is that correct? [00:02:16] Speaker 00: Have you argued that? [00:02:17] Speaker 00: This is not a clear and unambiguous disclaimer? [00:02:20] Speaker 04: I believe that has been argued, Your Honor. [00:02:23] Speaker 00: Why not? [00:02:24] Speaker 00: That's the question. [00:02:25] Speaker 00: Just looking at this paragraph alone. [00:02:26] Speaker 04: The paragraph refers to the examiner's rejection and refers to Bigelow 1 as discussing reflectivity. [00:02:37] Speaker 04: Reflectivity is different than whether or not something is a specular reflector. [00:02:42] Speaker 04: Reflectivity, let's take an example, snow versus water. [00:02:46] Speaker 04: Snow, very high reflectivity. [00:02:48] Speaker 04: Approximately 90 percent. [00:02:50] Speaker 04: This isn't a record. [00:02:51] Speaker 04: This is just these are these are just facts. [00:02:55] Speaker 02: Okay. [00:02:55] Speaker 02: Snow and that means that's fine. [00:02:57] Speaker 02: Ounces off versus absorbed. [00:02:59] Speaker 02: Not anything about direction of bouncing off. [00:03:03] Speaker 04: Correct. [00:03:04] Speaker 04: Okay. [00:03:04] Speaker 04: Percentage reflected versus versus whether or not it's reflected in a particular direction. [00:03:09] Speaker 04: Water, very low reflectivity. [00:03:12] Speaker 04: Five to 25 percent, let's say. [00:03:14] Speaker 04: Snow will not be a specular reflector. [00:03:19] Speaker 04: Water can be a specular reflector even though its reflectivity is much lower. [00:03:24] Speaker 00: And the reason why is specular meaning a very directed reflection as opposed to a diffuse reflection? [00:03:32] Speaker 04: Generally that's correct. [00:03:33] Speaker 04: So a specular reflector is something that has a... generally in a particular direction versus non versus diffuse. [00:03:40] Speaker 04: Correct. [00:03:41] Speaker 04: So with respect to that, the discussion at 25-27 is referring to reflectivity rather than whether or not something is a reflector. [00:03:50] Speaker 04: And that's where Bigelow discloses only that certain materials have UV reflectivity is what's being referred to there. [00:03:57] Speaker 00: And what about this 90% language? [00:04:03] Speaker 00: in the paragraph. [00:04:05] Speaker 00: Does that relate at all to the specular nature of the reflector? [00:04:11] Speaker 04: I would say that relates to reflectivity as well. [00:04:14] Speaker 04: With respect to 90% if we're talking about snow, snow can have high reflectivity, water has very low reflectivity, snow will not be a specular reflector, water can be a specular reflector. [00:04:28] Speaker 04: And there's a discussion in the record with respect to reflectivity versus whether or not something is a reflector, and that's with respect to appellants expert Dr. Milster. [00:04:38] Speaker 00: Well, can I get back to this just before you get to that? [00:04:41] Speaker 04: Sure. [00:04:41] Speaker 00: What about the last sentence in this paragraph that's being relied on, which seems to me to be the most difficult sentence for you. [00:04:50] Speaker 00: It says, nowhere in Bigelow is anything regarding a specular reflector disclosed, either expressly or inherently. [00:04:58] Speaker 00: And it's the or inherently that could be a problem for you. [00:05:04] Speaker 04: If the statement is taken alone without the respect? [00:05:06] Speaker 00: Well, if it's taken in the context of knowing that Bigelow teaches a polished aluminum baffle. [00:05:15] Speaker 00: Right? [00:05:15] Speaker 04: Yes, right. [00:05:16] Speaker 00: And so if then you're saying that nowhere in Bigelow does it inherently disclose a specular reflector, is that saying that there's no aluminum, that an aluminum, polished aluminum baffle cannot be specular? [00:05:32] Speaker 04: I don't think it's saying that. [00:05:33] Speaker 04: I think what it's saying is that with respect to Bigelow, there's not a discussion of whether or not this is a specular reflector. [00:05:39] Speaker 00: What? [00:05:40] Speaker 00: What about inherently? [00:05:42] Speaker 04: Inherently does go one step further than expressly. [00:05:45] Speaker 04: For sure, and that's where I think you need to take a look at the prosecution history as a whole. [00:05:48] Speaker 01: You don't think that sentence means that you disclaimed anything in Bigelow that could arguably act as the specular UV reflector? [00:05:57] Speaker 04: No, because I think you have to take a look at the statement as a whole in light of the prosecution history. [00:06:01] Speaker 04: You can't just take the statement in isolation. [00:06:06] Speaker 04: You've got to take a look at it. [00:06:08] Speaker 00: Is this sentence or the whole paragraph a clear and unambiguous disclaimer? [00:06:13] Speaker 04: That's not the test. [00:06:14] Speaker 04: The test is whether the prosecution history as a whole reflects the prosecution history. [00:06:18] Speaker 00: I wanted to hear what you thought of this paragraph alone. [00:06:22] Speaker 00: I thought you were saying that this paragraph on its own wasn't enough, that it was ambiguous. [00:06:27] Speaker 00: And then, when you look at the whole history, it makes it even more clear that it's not a disclaimer. [00:06:33] Speaker 00: But that's why we were focusing on this paragraph first. [00:06:37] Speaker 04: Sure. [00:06:37] Speaker 04: I mean, I think the statement as a whole is ambiguous. [00:06:41] Speaker 04: And I think that's because in part it refers to reflectivity as opposed to whether something is a specular reflector. [00:06:47] Speaker 04: But I do think the test requires you to take a look at the prosecution history as a whole and to take a look at what happened in the back and forth process between the patent office. [00:06:54] Speaker 01: Let's assume we disagree with you that it's an ambiguous statement. [00:06:59] Speaker 01: Then our case law requires that you have just sort of disclaimed it, right? [00:07:06] Speaker 01: I mean, your briefing sort of indicated that you were saying you disclaimed it afterwards. [00:07:11] Speaker 04: The prosecution has disclaimed the statement or disclaimed? [00:07:15] Speaker 01: No, I'm sorry. [00:07:16] Speaker 01: Maybe disclaimed is the wrong word to use in this context. [00:07:19] Speaker 01: that you undid it, retreated it, whatever. [00:07:22] Speaker 04: Yeah, I think the back and forth with the Patent Office shows that there was a negotiation going on and that this statement was retreated from, for sure. [00:07:31] Speaker 04: And I think it was expressly rejected by the examiner at one spot. [00:07:34] Speaker 04: And that's the point where Judge Toronto pointed to, A2556. [00:07:38] Speaker 04: The Patent Office rejected that statement. [00:07:43] Speaker 04: The statement was made in response to rejection. [00:07:45] Speaker 01: And what did, I don't know where it is in my notes now, [00:07:48] Speaker 01: But later on, you said affirmatively something like, I'm not agreeing or disagreeing with what the examiner said, right? [00:07:57] Speaker 04: There were statements of. [00:08:00] Speaker 01: So you didn't say, yes, we agree with the examiner. [00:08:03] Speaker 04: Which is almost never going to appear in any prosecution history. [00:08:06] Speaker 01: Almost never. [00:08:07] Speaker 01: So you're relying on what the examiner said, but not what you said in relationship to what you had said earlier that Judge Stoll was pointing out. [00:08:15] Speaker 04: relying on everything that was in the prosecution history. [00:08:18] Speaker 04: The back and forth, the original statement of the case, the rejection of that statement, and then the additional three rejections over Bigelow 1 in view of the fact that the examiner said Bigelow 1 does in fact disclose a specular UV reflector. [00:08:30] Speaker 00: Did you ever argue anywhere after this argument on page 2527 that Bigelow discloses, does not disclose a specular reflector? [00:08:40] Speaker 00: No. [00:08:41] Speaker 04: No, but the applicant accepted the examiner's position that it did. [00:08:44] Speaker 04: And the examiner took that position four times, once in expressly rejecting the argument and three more times in stating that Bigelow 1 does disclose a specular UV reflector, referring to the same evidence, and even going so far as to saying it continues to disclose a specular UV reflector. [00:09:00] Speaker 04: So there's no question, there's no doubt the examiner very clearly took the position Bigelow 1 does disclose a specular UV reflector. [00:09:14] Speaker 00: Never once... Is it correct that the existence of prosecution history disclaimer is a question of law? [00:09:20] Speaker 04: I believe it is a question of law. [00:09:22] Speaker 04: Yes, Your Honor. [00:09:24] Speaker 04: The burden, however, is on the party asserting disclaimer, the accused infringer to assert to identify the disclaiming statement and also to show why it is clear and unmistakable that was a disclaiming statement. [00:09:36] Speaker 04: Never once after A2527 did applicant ever repeat the allegedly disclaiming statement, not in response to rejection two, rejection three, or rejection four. [00:09:45] Speaker 01: Can you cite a case? [00:09:46] Speaker 01: I mean, if you say something once, and let's assume we think it's clear, the fact that you don't repeat it several times means that you didn't mean it, and we can ignore it, and the public can ignore it for purposes of notice. [00:09:59] Speaker 04: The public doesn't have to ignore it. [00:10:00] Speaker 04: The public can look at the prosecution as a whole. [00:10:03] Speaker 04: And yes, there are three cases. [00:10:05] Speaker 04: The three cases are Eagle Lab, Malvern, and Gilderma. [00:10:11] Speaker 04: And with respect to Malvern, for example, Malvern 85F4 at 1376, there was no clear and unmistakable disclaimer where the allegedly defaming statement was made just once. [00:10:25] Speaker 04: The examiner rejected the argument several times. [00:10:27] Speaker 04: The argument was abandoned, and the claims were allowed on other grounds, namely that the reference in question was not prior art. [00:10:34] Speaker 04: The court said, in these circumstances where an applicant abandons its unsuccessful argument, we conclude that the prosecution history lacks the clarity necessary to establish prosecution disclaimer. [00:10:44] Speaker 01: And where is the abandonment here? [00:10:46] Speaker 04: The abandonment was in the failure to, one failure to contest the examiner's expressed rejection of the argument, and then the examiner's subsequent three rejections without traverse. [00:10:57] Speaker 02: The word abandonment, sometimes one might use that word to mean affirmatively repudiate, and sometimes one might use it to mean stopped pressing. [00:11:16] Speaker 02: Which is important? [00:11:18] Speaker 04: I think the case law here looks at whether there was a stigma protest or not. [00:11:23] Speaker 00: Did Malvern affirmatively, in the Malvern case, did the patent owner prosecutor affirmatively say, I abandon this argument, or I'm giving up this argument, or did they just discontinue making it? [00:11:36] Speaker 04: Just discontinued. [00:11:38] Speaker 04: And that's the same case in Ecolab, 569 F3rd at 1343. [00:11:42] Speaker 04: There was no clear and unmistakable disclaimer where the disclaimer statement was made only once and never repeated. [00:11:48] Speaker 04: Examiner rejected the allegedly disclaiming statement and an applicant overcame the prior art references based on alternative reasons without changing the relevant claim language. [00:11:58] Speaker 04: DBG appellee attempts to erase Malvern and Ecolab or somehow imply that they're bad law by contending that if there's any tension between those two cases and Springs window, Springs window came first and therefore controls. [00:12:11] Speaker 04: DBG is wrong. [00:12:12] Speaker 04: Springs window applies an outdated test when it required only reasonable clarity to find a disclaimer. [00:12:19] Speaker 04: not the test that requires clarity and unmistakability as was clarified and set forth in Omega Engineering just five months after Spring's window. [00:12:27] Speaker 04: 323 F3rd at 994 versus 334 F3rd at 1326 through 28. [00:12:33] Speaker 04: Those cases were decided in February and July 2003. [00:12:38] Speaker 04: What's the difference? [00:12:39] Speaker 04: The old inapplicable test applied by Spring's window allowed room for ambiguity. [00:12:45] Speaker 04: The new test requires a disclaimer to be clear and unmistakable. [00:12:49] Speaker 04: So the Malvern and Ecolab cases, decided in 2023 and 2009, are very much good law. [00:12:56] Speaker 04: As is Galderma, which was decided in 2020. [00:12:59] Speaker 04: There, a patentee's claim construction argument was expressly rejected by the PTAB. [00:13:05] Speaker 04: There was no clear and unmistakable disclaimer because that claim was rejected by the PTAB. [00:13:11] Speaker 04: Regardless, even Spring's window itself does not compile a contrary result. [00:13:15] Speaker 04: There, the statements distinguishing the prior were consistent and repeated. [00:13:19] Speaker 04: Even when Spring's window moved on to new arguments to swear behind a reference, it still maintained substantive arguments over the prior, the ones that were allegedly disclaiming. [00:13:28] Speaker 04: 323F3 at 996. [00:13:31] Speaker 01: You're into your rebuttal. [00:13:33] Speaker 01: Shall we save it in here for the other side? [00:13:36] Speaker 04: I'll reserve the rest of my time for rebuttal. [00:13:37] Speaker 04: Thank you. [00:13:47] Speaker 03: Good morning, may it please the court. [00:13:49] Speaker 03: I believe it's clear that the statement in the prosecution history is a clear and unambiguous disclaimer. [00:13:59] Speaker 03: It states, quote, nowhere in Bigelow 1. [00:14:01] Speaker 01: We know what it states. [00:14:02] Speaker 01: We've been through this before. [00:14:03] Speaker 01: But what do you say to your friend's response that it was not pressed further and that the examiner rejected it and they moved on? [00:14:13] Speaker 01: So does that displace a reliance on clear and unambiguous statements? [00:14:17] Speaker 03: Thank you, Your Honor. [00:14:18] Speaker 03: I appreciate the question. [00:14:19] Speaker 03: This goes to Judge Tarento's comment that there's a- By the way, we're moving beyond that paragraph. [00:14:25] Speaker 02: Don't think that I'm not going to ask you to go back to that paragraph and explain why that's a starting point. [00:14:31] Speaker 03: I'm happy to, Your Honor. [00:14:32] Speaker 02: No, no, no, don't. [00:14:34] Speaker 03: So there's a difference between moving on and acquiescing. [00:14:40] Speaker 03: So the applicant, when a- [00:14:44] Speaker 03: An argument is rejected. [00:14:45] Speaker 03: The applicant has a decision. [00:14:47] Speaker 03: I can continue to press this or there may be an alternative, faster way to allowance for the application. [00:14:54] Speaker 03: And that's what happened in this case. [00:14:56] Speaker 03: In this case, the applicant apparently saw that it was not going to convince the examiner of its position. [00:15:02] Speaker 03: So instead, it took an alternative path toward allowance and that was to amend the claim. [00:15:07] Speaker 03: But this is the critical distinction between this case and the others that they rely on. [00:15:13] Speaker 03: Here, the applicant expressly states that it is reserving the right to go back and revisit its prior arguments should the need arise. [00:15:23] Speaker 00: It's all arguments that they've made, right? [00:15:26] Speaker 00: Exactly. [00:15:27] Speaker 00: They're not conceding. [00:15:28] Speaker 00: I wanted to make sure it was clear. [00:15:30] Speaker 00: It's a general statement, right? [00:15:32] Speaker 00: I hear what you're saying. [00:15:37] Speaker 00: I do think the fact that it's a general statement at the end of every paper they've submitted suggests that it might not have an import that is as strong as what you're suggesting. [00:15:49] Speaker 03: That's what they would like to argue. [00:15:52] Speaker 03: That's the problem here. [00:15:54] Speaker 03: In Microsoft, this court held that we take the patentee at its word. [00:15:59] Speaker 03: And in C-Change, this court held that we don't look to the applicant's intent of what it says. [00:16:08] Speaker 03: What it says is going into a public record that it knows the audience is not just the examiners at the office, but also the public. [00:16:17] Speaker 03: And so if an applicant can go and make its arguments and then at the end, say, we reserve all of our rights to go and revisit any arguments or any statements not addressed. [00:16:30] Speaker 03: Well, even today, you saw what happened. [00:16:32] Speaker 03: Today, my friend got up and he argued that the examiner was wrong to cite to the reflectivity in Bigelow as a basis for finding that it's a specular reflective. [00:16:43] Speaker 03: Even now, they're arguing. [00:16:44] Speaker 00: I think they're arguing that. [00:16:46] Speaker 00: to show that what reflectivity is, what specular reflectivity is versus just reflectivity, to understand the nature of the language that is at page A2527 and the context in which they were saying these things, right? [00:17:04] Speaker 00: That's what they were talking about. [00:17:06] Speaker 00: I don't know that he was affirmatively saying, you know, let me prove on appeal here the examiner was wrong. [00:17:13] Speaker 00: He was trying to explain what this language meant and how they were talking about specular as opposed to a percentage of reflectance. [00:17:20] Speaker 00: That's what I heard. [00:17:22] Speaker 03: That's the purpose for which they're making the argument. [00:17:24] Speaker 03: But in the event, they're still arguing that the examiner's reliance on that as being relevant to specular reflectivity was wrong. [00:17:33] Speaker 03: And if we were standing now in front of a PTAB panel and they were arguing for validity over prior art that was made of aluminum baffles, they would be pointing to that very statement in the prosecution history saying, we reserve the right to argue that aluminum is not a specular reflector. [00:17:55] Speaker 00: Do you agree with them, by the way, getting into the language of this? [00:18:00] Speaker 00: What is your view of specular here? [00:18:02] Speaker 00: I know the district court said that they, in here, in this language, they have disclaimed anything that has a UV reflectivity or 90% or higher and is made of aluminum. [00:18:14] Speaker 00: I think that's what she said. [00:18:15] Speaker 00: She was focusing on the 90% or higher when she was talking about their disclaimer, what this paragraph was talking about as a technical matter. [00:18:24] Speaker 00: What do you think this paragraph is talking about as a secular matter when it's talking about specular reflectance? [00:18:31] Speaker 00: When you say this paragraph, are you referring to the... I'm talking about the paragraph that is the main one that we've been talking about today in the past. [00:18:37] Speaker 00: The examiner's statement? [00:18:39] Speaker 00: Page 2527. [00:18:40] Speaker 03: Okay, so the examiner's statement. [00:18:42] Speaker 00: No, what the applicant said. [00:18:44] Speaker 03: Oh, the applicant's response to the examiner's statement. [00:18:46] Speaker 03: I think that they are talking about the fact that reflectivity is different than specular reflection. [00:18:53] Speaker 03: Reflectivity is the amount of light reflected. [00:18:55] Speaker 03: Specular goes to the angle that the light is reflected. [00:18:59] Speaker 03: I believe that's what they're talking about. [00:19:02] Speaker 03: But I also believe that they are stating that, so they're pointing out that the examiner is wrong. [00:19:09] Speaker 03: And they're pointing out that aluminum does not have, while it may have 90% reflectivity, it's not a specular reflector. [00:19:20] Speaker 03: And so they're arguing that the aluminum doesn't meet the claim language because it's not specular, even if it does have 90% reflectivity. [00:19:28] Speaker 03: That's what they're arguing, and that's the clear and unambiguous disclaimer. [00:19:35] Speaker 03: Judge Taranto, you said you wanted to return to a question. [00:19:38] Speaker 02: You just did. [00:19:40] Speaker 03: OK. [00:19:41] Speaker 03: OK, thank you. [00:19:42] Speaker 03: Now, my friend has talked about three cases. [00:19:46] Speaker 03: I'd like to address those. [00:19:48] Speaker 03: The first is Ecolab, and this case is different in Ecolab. [00:19:53] Speaker 02: In Ecolab... I'm sorry, I'm going to retreat, I think was the word before about being done. [00:20:01] Speaker 02: The word inherently. [00:20:04] Speaker 02: So nowhere in Bigelow does the non-diffusiveness of the reflection, I'm just going to use that expression instead of specular, because that's what I think you just agreed it means. [00:20:18] Speaker 02: It's not discussed expressly. [00:20:20] Speaker 02: And it's not inherent. [00:20:23] Speaker 02: So what would you take the word inherent? [00:20:28] Speaker 02: It clearly is not discussed expressly. [00:20:32] Speaker 02: But how do you get to the conclusion that what's being said is no aluminum, including no unpolished aluminum, could have this highly directed non-diffuse reflection? [00:20:57] Speaker 02: Well, that's what goes to it doesn't always have that. [00:21:03] Speaker 03: That's what, as I read the applicant's position, they're stating that polished aluminum cannot be a specular reflector. [00:21:18] Speaker 03: It's not according to the language of the patent. [00:21:23] Speaker 02: Usually the word inherently in this business means that something, a property, is always present. [00:21:32] Speaker 02: Not that it can never be present. [00:21:35] Speaker 02: So when you say, when this says, bigelow, [00:21:40] Speaker 02: didn't say it was present, and what it described, what Bigelow described, doesn't always have that property. [00:21:50] Speaker 02: Isn't there a gap to get to the next stage, the next step of saying that the applicant here was saying even polished aluminum, let alone aluminum, [00:22:08] Speaker 02: polished or unpolished can never have this property. [00:22:13] Speaker 03: Well, I think that's exactly what the applicant is driving at, because polished aluminum, it's either going to be specular or it's not. [00:22:20] Speaker 03: It's an up-down question, right? [00:22:23] Speaker 03: It's binary. [00:22:25] Speaker 03: Either it's a specular reflector or it's not. [00:22:28] Speaker 03: And so that's why they, I believe, and that's what I understand is the reason for why they include it inherently, because the [00:22:35] Speaker 03: the words in Bigelow, the description in Bigelow, does not address whether it's a speculative reflector or not. [00:22:45] Speaker 02: So this argument relies on the idea, and I don't remember how much this is discussed here, that as you say, there's this binary property of polished aluminum, and either it [00:23:01] Speaker 02: reflects in a highly directed, non-diffuse way with respect to the UV rays, not anything else. [00:23:10] Speaker 02: Or it doesn't. [00:23:12] Speaker 02: And is that a clear? [00:23:15] Speaker 02: I mean, it seems to me that's the premise of the disclaimer argument here, of the reading of this. [00:23:22] Speaker 02: Is that premise in dispute? [00:23:24] Speaker 02: And why should it be so clear? [00:23:30] Speaker 03: Well, because that's what the applicant argued. [00:23:32] Speaker 03: He argued that it doesn't inherently... Go ahead. [00:23:36] Speaker 00: I'm sorry. [00:23:36] Speaker 00: Answer that question. [00:23:37] Speaker 00: I have another question for you. [00:23:41] Speaker 03: Because the examiner could have come back and said, look, the words of this description don't say it's specular, but polished aluminum by its nature is specular. [00:23:51] Speaker 03: it's inherent because that's a nature or a quality of polished aluminum. [00:23:57] Speaker 03: And that's why the applicant is doubling down and saying not only is it not discussed in the words expressly, it's not inherent because polished aluminum by its nature is not a specular reflector. [00:24:10] Speaker 03: And I don't know how they could have made the disclaimer any more clear and ambiguous. [00:24:15] Speaker 00: OK. [00:24:15] Speaker 00: So I think that I'm trying to ask you the question about is there some sort of scientific understanding here, I guess, between the parties about whether polished aluminum is specular or not. [00:24:29] Speaker 00: And you're saying it's not. [00:24:31] Speaker 00: What about unpolished aluminum? [00:24:33] Speaker 00: I mean, I understand as a person sitting here just generally that probably something that's more polished has a higher reflectance than something that's unpolished. [00:24:44] Speaker 00: But what I don't know is whether something that's polished versus unpolished, how that changes the diffuseness of the reflection. [00:24:53] Speaker 03: So there's no contention as I understand it that if polished aluminum does not qualify as a specular reflector, unpolished aluminum [00:25:04] Speaker 03: would also not qualify, as the district court found, because unpolished aluminum is less specular as a reflector than polished aluminum. [00:25:14] Speaker 03: Unpolished aluminum. [00:25:15] Speaker 00: I'm saying that's undisputed. [00:25:16] Speaker 03: That's undisputed. [00:25:17] Speaker 00: I mean, because you say that, and I don't know. [00:25:20] Speaker 00: So I have to take it in as an undisputed fact. [00:25:22] Speaker 00: Because I don't, of course, it's a summary judgment. [00:25:24] Speaker 00: So it can't be something where there is a dispute. [00:25:27] Speaker 03: Certainly, Your Honor. [00:25:28] Speaker 03: They did not. [00:25:30] Speaker 03: I'm not aware of anywhere where they've argued that even if the polished aluminum were found to be not specular, unpolished would qualify where polished is. [00:25:42] Speaker 03: Exactly, exactly. [00:25:43] Speaker 03: Everybody agrees that unpolished aluminum is less specular than of a reflector than polished aluminum. [00:25:51] Speaker 00: Can I ask you something else where it says nowhere in Bigelow is anything regarding a specular reflector disclosed either expressly or inherently? [00:25:59] Speaker 00: Why can't I understand that inherently part to mean it's not necessarily so that Bigelow's polished aluminum baffle is specular? [00:26:12] Speaker 03: Well, again, this goes back to the discussion I had with Judge Taranto that either specular reflectivity is a nature of quality of polished aluminum or it's not. [00:26:25] Speaker 00: We're trying to figure out what this person said and what sort of import it has as barring them from being able to argue that aluminum can be specular. [00:26:42] Speaker 00: And so we have to understand what this sentence says. [00:26:44] Speaker 00: And you're saying that this sentence, I'm supposed to read from it, it's binary. [00:26:48] Speaker 00: And it's not necessarily specular. [00:26:53] Speaker 00: That means that they said it's not [00:26:55] Speaker 00: Specular. [00:26:57] Speaker 03: Yes, I think that that's the correct reading. [00:26:59] Speaker 03: And especially whereas they use this to argue around the prior art, which clearly had a polished aluminum reflector in it, that's disclaimer. [00:27:11] Speaker 03: You look at what a reasonable competitor would read from this language, [00:27:17] Speaker 03: that the applicant chose to put into the prosecution history and the notice function of the prosecution history is to allow competitors to make reasonable business decisions this is in the court's case law and a reasonable competitor reading that paragraph is going to understand that the applicant has said my invention does not cover aluminum reflectors and then the [00:27:41] Speaker 03: The competitor, my client, DGB has gone out, they make aluminum reflectors and now they're being sued for having made the aluminum reflectors. [00:27:50] Speaker 03: I mean, this falls squarely within Spring's window. [00:27:54] Speaker 03: Spring's window, it's amazing how [00:27:59] Speaker 03: Similar it is. [00:28:00] Speaker 03: Springwindow says, a patentee may not state during prosecution that the claims do not cover a particular device, then change position and later sue a party who makes that same device for infringement. [00:28:10] Speaker 03: That is exactly what has happened here. [00:28:12] Speaker 03: They said, we don't cover aluminum. [00:28:14] Speaker 03: Then they've turned around and sued DBG for using aluminum. [00:28:18] Speaker 03: And they say, well, when you read the prosecution history as a whole, we acquiesced. [00:28:23] Speaker 03: But as the district court correctly found, [00:28:26] Speaker 03: They didn't acquiesce. [00:28:27] Speaker 03: They reserved the argument. [00:28:28] Speaker 03: They moved on to a secondary argument, reserving the first argument to go back to it in the case they needed to. [00:28:35] Speaker 03: For example, in an IPR, if they were arguing invalidity before a PTAB panel, they would be arguing that the polished aluminum is not specular. [00:28:48] Speaker 03: They would be going back to that argument. [00:28:52] Speaker 03: We tried to say, well, no, you acquiesced. [00:28:55] Speaker 03: They would say, no, we reserved our rights. [00:28:56] Speaker 02: I'm never really sure what to make of those arguments that recognizes the kind of mirror image-like quality of infringement and... [00:29:11] Speaker 02: of invalidity in terms of, well, the other side would be arguing the following if we had an invalidity case. [00:29:19] Speaker 02: I don't see that that advances the ball. [00:29:21] Speaker 02: It's just stating exactly the same thing in a counterfactual way, which doesn't feel like it helps much. [00:29:30] Speaker 03: Either this meets the standard for disclaimer or it doesn't. [00:29:37] Speaker 03: Well, exactly. [00:29:37] Speaker 03: And it does. [00:29:40] Speaker 03: They can't rely on acquiescence here, where they didn't concede the point. [00:29:47] Speaker 03: They reserved the argument to be able to make it later. [00:29:49] Speaker 03: That's not acquiescence. [00:29:51] Speaker 03: As the district court found, that's the antithesis of acquiescence. [00:29:55] Speaker 01: Thank you. [00:29:56] Speaker 03: Thank you. [00:30:07] Speaker 01: Increase it to two minutes. [00:30:13] Speaker 04: Thank you. [00:30:14] Speaker 04: With respect to whether there's any evidence in the record that the unpolished aluminum of the accused device is a specular reflector, the answer is yes. [00:30:23] Speaker 04: There is testimony from appellants expert A2917 through 2920. [00:30:30] Speaker 00: Is this something that was at issue during the summary judgment hearing? [00:30:36] Speaker 04: Yes, evidence that was to show that the accused device, unpolished aluminum, was a specular UV reflector. [00:30:45] Speaker 04: That's correct. [00:30:46] Speaker 00: So your view is that you didn't concede anything on this factual dispute? [00:30:51] Speaker 04: Did not concede anything on that dispute. [00:30:52] Speaker 04: That's correct. [00:30:54] Speaker 04: There was no contrary evidence provided by the EPILEE. [00:30:58] Speaker 04: The evidence that was provided was in the visible spectrum, not the UV spectrum. [00:31:04] Speaker 04: With respect to case law and disclaimer, acquiescence, while not necessary to rebut disclaimer. [00:31:10] Speaker 02: Can I ask you this question? [00:31:12] Speaker 02: Yes. [00:31:13] Speaker 02: I know your time is running out. [00:31:16] Speaker 02: The 90%, if you had a surface that reflected only [00:31:25] Speaker 02: in any direction at all, 10% of the UV rays. [00:31:30] Speaker 02: But it reflected it in a perfect V. Is that a specular reflector? [00:31:38] Speaker 02: Could still be a specular reflector, yes. [00:31:41] Speaker 02: So the percentage of the UV rays going out [00:31:47] Speaker 02: divided by the number going in is not particularly relevant to whether it's specular. [00:31:57] Speaker 04: My understanding is that's reflectivity, not whether or not something is a specular reflector. [00:32:01] Speaker 04: And that goes to the snow versus water example that I used earlier. [00:32:06] Speaker 04: You do have to look at the prosecution history as a whole. [00:32:09] Speaker 04: They've isolated the one statement. [00:32:10] Speaker 04: But whether or not something is clear and unmistakable, [00:32:14] Speaker 04: to look at whether acquiescence occurred, their only argument is the reservation of rights statement. [00:32:19] Speaker 04: But those rights are inherent, the rights that were reserved are inherent to all applicants. [00:32:23] Speaker 04: And that's because the back and forth negotiation process of patent prosecution doesn't create residue to conduct, collateral estoppel, or even solidify any rights until a patent issues. [00:32:32] Speaker 04: The statement by DBG is correct, that all that's required is some form of acceptance. [00:32:37] Speaker 04: And what the case law said about the district court here, it was some count IP, it said that acceptance without protest. [00:32:43] Speaker 04: That means that acquiescence can be implicit. [00:32:46] Speaker 04: So here, African accepted the expressed rejection of the argument plus three more claim rejections and moved on to other arguments as to why the claims were allowable without once repeating the argument that was rejected. [00:32:59] Speaker 00: Do you remember that some of the language that you added at the end to get the allowance was making sure there was a direct [00:33:05] Speaker 00: communication or path from the reflector to the target in your claim. [00:33:12] Speaker 00: That's the language you added. [00:33:13] Speaker 00: Something about having a direct, it doesn't matter. [00:33:16] Speaker 04: The direct is part of it, there's ionization is part of it, and then there's also a range on the top and bottom sidewall that was the claim language that was added as well to overcome Bigelow-1 as well as other prior art in the case. [00:33:31] Speaker 01: Thank you. [00:33:32] Speaker 01: Thank you Your Honor.