The U.S. Court of Appeals for the Federal Circuit (CAFC) handles patent appeals through specific procedural mechanisms including Rule 54(b) for final judgments and Rule 1292(b) for interlocutory appeals, with jurisdiction determined by factors such as finality, just reason for delay, and whether issues are inextricably intertwined. In patent claim construction, courts apply the Phillips standard, considering intrinsic evidence (claims, specification, prosecution history) and extrinsic evidence, while recognizing that claim differentiation and dependent claims can inform the scope of independent claims. The court applies the Williams factors to determine when jurisdiction should be exercised over veterans' benefits appeals, balancing the danger of mootness during remand against the need for timely resolution.
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Yes.
I got The end.
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All right.
I mean All rise.
The United States Court of Appeals for the Federal Circuit is now open and in session. God seeing the United States and this honorable court.
>> Good morning. Please be seated.
Before we begin our regular proceeding for this morning, uh, I ask Judge Chen to recognize me for a motion.
>> Yes, let's hear it.
>> I move the admission of Alexandra Milin Schosberger who is a member of the bar and is in good standing with the highest courts of New York and Washington DC. I have knowledge of her credentials and I'm satisfied that she possesses the necessary qualifications.
And I just say that as delighted as I am to have the honor of moving Al's admission to our bar, I'm even sadder that it coincides with her departure from our chambers. Indeed, I've not shared this with her, but I haven't yet quite given up, praying that the stars will align and she'll stay a bit longer.
It's a test of my judicial power, but judicial restraint is perhaps the better course. After all, the rest of the legal world should have the good fortune that I've had to benefit from her intellect, her talent, and her unbounded love and enthusiasm for the law. We've had a great run, I think, for many reasons. We share a passion for and a love of learning new things and taking a deep dive into sometimes obscure legal doctrines and will carry with us always the shared experience of the Trump tariff case, an experience the likes of which we hope we will never be repeated.
I trust that she will remain open to new opportunities as her illustrious career develops because she has so very much to contribute. Finally, I'm so pleased that members of her family are here today.
Happy birthday, Mom. And by the way, um Al's getting married next year. Uh it's been an honor and a delight.
>> I fully endorse the motion.
I don't think in my 13 years here I've ever seen a judge write a brief in support of motion to have a clerk become a member of the bar. But >> it's a good brief.
>> I've Yes, it's a very compelling brief and I've gotten to know Alan myself and everything you said is very well merited. The court is happy to grant your motion. Thank you.
>> Please raise your right hand.
Do you solemnly swear or confirm that you will comport yourself as an attorney and counselor of this court uprightly and according to law and that you will support the Constitution of the United States of America?
>> I do.
>> Thank you and welcome to the Bar of United States Court of Appeals for the Federal Circuit.
>> All right. Now, back to the work. Uh, our first case this morning is 24-2345 Amstead Rail Company versus Squires. Mr. Miller, whenever you're ready. Thank you.
>> I'll go reserve uh minutes.
>> Yeah. For rebuttal. Sure.
>> Please proceed.
>> Thank you. You may please the court. Uh this case is a consolidated case involving two uh IPRs before the um the patent trial and appeal board. Uh I would like to start by addressing some issues in relation to the 673 patent which is the underlying 539 case. Um >> can I just ask you before you dive into it, there's at least I think by my count at least 10 issues here.
>> Yes.
>> Um I assume you'll focus on the stronger ones, but just give me a preview. What what are the strongest issues among the ones that you agree?
>> Sure, your honor. Um the the the first I'm going to address is motivation to combine the um the embodiment of LEAB.
Um >> that's on the 673.
>> That's on the Yes, that's correct.
>> Limitation 5K or 5G. Maybe >> that is the 223 patent. Sorry. Okay.
Thank you.
>> That Yeah. So I'll get to that in a second. Um uh I'm also going to address claim construction issue with relation to nominal operating conditions and uh severity level uh in relation to the 673 patent. For the 223 patent, I will address claim five um uh with regard to um an assumption that the board made that we believe is unsupported by the record.
>> Thank you.
>> That that would be the focus of our argument.
So I I'll start with the motivation to combine issue. There's no dispute below that the petition uh is is based on a combination of embodiment, separate embodiment in the FEV. The petition states that >> we know that I mean it's it could be easily read that the petition said Lefiva 102 or in the alternative 103 and the board adopted the petition.
And why? What is it in that reference?
I'm just going to call it lef fever.
Uh that shows you and shows us that the the different limitations that are disclosed in lefra are necessarily in different embodiment of lefa.
>> Well, that is that is what the the petitioner said and again that was adopted by the board.
>> Right. But the you the well the petition said a couple things, right? It said we're relying on 102.
Uh the reference lefra doesn't expressly disclose that all these different limitations are contained in a single embodiment but nevertheless it's also in the alternative would have been obvious under 103.
>> Am I misunderstanding that? I I did not read the um the petition as proposing um arguments in the alternative um in in the petition.
>> What page are you on?
>> Uh sure. Um that this is uh appendex 1681.
Um the petitioner says Lefra however does not expressly state all the disclosed limitations are part of a single embodiment.
>> What does the sentence say above that?
>> It what it says is that petitioner believes these claims are anticipated.
However, the ground that's actually presented is a 103 ground. They did not present a 102 ground. Well, the thing is we've seen this before where the board officially um finds claims uh unpatentable under section 103, but the that's we've also affirmed those when the reference contains all the the single reference contains all the limitations in a 102 sense. So that's not necessarily surprising to us. And and so the next question is your argument is premised on there's something in Lef Fever that's telling us that the limitations that are being relied upon in that reference are being disclosed in separate embodiment. And so my question to you is when I read Lefiva that wasn't so obvious to me. What is it that proves to you and me that the parts of Lefra that the board and petitioner are relying on are coming from different embodiment in lefa I I think I think my response to that is that is that it's not Amstead's burden to provide the the the primmaacia case and chief motiv motivation to combine whether it's through separate references or through multiple embodiment in the same reference and this is from the step >> I guess the question is why couldn't It be that the board affirmed both affirmed yes this is a 102 and because lef fever teaches all these limit limitations and also in the alternative it's a 103 so that record was not developed below the the the entire record uh in the in the in the IPR was as a single reference obviousness found. So there was no development about whether they were all in one in a single embodiment or not.
That's kind of our point is that that was never developed. They did not present it in the petition that way and that was not part of any of the briefing below. Um and the the board acknowledged directly uh that Lev doesn't disclose all the limitations in a single embodiment.
>> The board said that?
>> Yes, in in the 673. Yes, they did. Um that is I think I have that. Yeah, that's in the final written decision appendix page 156.
So the the petitioner asserts that the challenge claims are unpatentable under 103 over LEV which does not disclose expressly all the limitations as part of a single embodiment. So that's that's what the board found. That's a finding of the board at that point.
>> But I guess if they're not expressly all disclosed in single embodiment, that doesn't mean they're not disclosed all in the single embodiment.
>> Again, that that's not Amstead's burden to show. It is it is the petitioner's burden to show that either all of the limitations are in a single embodiment which both the petitioner and the board acknowledge they are not um or to show motivation to combine those separate embodiment is not required to show a lack of a primaacia case.
So what you said what you're isolating as being the problem in this regard is simply that because the petition failed to make a primacia case of motivation to combine in the petition.
>> That's correct. Part of the a primmaacia case of obviousness is providing a motivation to combine and reasonable reasonable likelihood of success and that's not that was never developed for this round.
>> When did this come up in the proceeding?
Did you challenge it in your in the >> yes on a response?
>> Yes, your your honor. They came back and said >> the the response of the of the petitioner was we don't have to citing to real-time data. The problem with real-time data is that that was expressly a 102 or in the alternative 103 ground and um there was an express finding that all of the uh limitations were in a single embodiment and the board in that case actually did address motivation to combine in the alternative argument.
>> So what are you seeking here? a vacate and remand so that the board can or are you saying the petitioner forfeited its ability to establish a motivation to combine now because they didn't have it in their petition? What's the relief you're seeking?
>> I I think I think it's the latter. The the the the petition does not state a primmaaccia case and it's too late now to add to that record. Um at the minimum there should be a vacure and a additional fact biting.
So, with regard to claim construction of the 673 patent, um, I'm going to just touch very briefly on nominal operating conditions because I'm not I I I do not think there was a very big dispute. The main dispute just had to do with how the board approached the um the the the addition of normative into the the construction. So um just so we we are clear the the board uh construed nominal operating conditions as normative or expected conditions based on certain things that aren't relevant here. Um and Amstead proposed simply just expected conditions. And the reason why was that both petitioner and the board in its final decision continually referred to operational limits as normative limits.
And it frankly that just didn't make a lot of sense because nominal operating conditions as it is used certainly in the claim. Um it has to do with what operating conditions are expected for a rail car in any particular environment.
Um a critical failure or an operational limit cannot be by definition a nominal operating condition. So yeah, the only thing you dispute is the inclusion of the the word normative at the beginning of the correct instruction. And what is it that you think specifically is being captured by that inclusion of the word normative that otherwise would not be within the scope of this claim term?
the well again as judging from the the description that the board uses they refer to operational limits of the rail car as normative limits and so if you know to the extent that is included within nominal operating conditions it can't our view is that it cannot be correct >> your view is that operational limits would not be included within quote expected conditions >> that's correct expected conditions are what the rail car would going in under normal conditions under normal operation. An operational limit is where you have for and just to use a specific example you have a a bearing that is vibrating to the point where it is at the operational limit of that bearing and it's at risk of failure. That's not a nominal operating condition.
>> Well, this the the board here relied on the specification 42 to 48. That's what I think they cited. Are you familiar with what I'm talking about?
>> I believe so.
>> Um, >> why is that passage not sufficient basis for supporting?
>> What was I'm I apologize. What was the citation?
>> I've got it here in my notes. Uh, one 42- 48.
>> Yeah. the this well for one thing this paragraph is talking about mechanical failures that can very quickly lead to catastrophic failure. Um the you I what I'll say is so one thing I'll say I'll say this right now if the board had described their analysis the way that intervenor did I don't know if we would be here talking about this but that's not what they said. um they had they they repeatedly referred to um a limit or maximum permissible operating temperatures for example and again it I don't want to belabor this point I the reason why this is important is I think going to the next issue which is um the the severity levels um >> you want to move to those quickly because we're running into your rebuttal time >> absolutely your honor um so the the the AMSA's construction of severity level it was that it's one of a plurality of known levels indicating seriousness of a of a condition or a deviation. Um this is related to the construction of the of the claim itself. The severity level is assigned to deviations which are in the previous uh element defined as deviations from nominal operating conditions. So that's again why um it is you know operational limit would not be a nom a nominal operating condition.
Operational limit would be presumably one of those points that might indicate a severity level. But in any case um the board construed a severity level as a type of fault which requires a particular action. um Amstead in it and and it's a expert developed below that there's no definition of level that um equates to a fault. It didn't make a lot of sense to um to to refer to it as a type of fault. I believe the reason why this is the case is that the what both parties looked at the tiered the disclosure of the tiered alarms in the patent. Um, and that uh that would be uh column 13 uh to column 14 lines 32.
>> Okay. Can I just ask you quickly before your time runs out, what are the consequences of the two claim construction points you've just raised here?
>> Sure. So, >> quickly.
>> Yes. Um, so that the properly construed LEV does not disclose severity levels.
Uh, Lev discloses a single threshold.
>> And what about the normative the first construction? Well, that again I think the the the import there is that um what the uh the severity levels are assigned are assigned to the deviations from nominal operating conditions. So the again just nominal operating conditions are expected conditions from our view even if you're talking about normative conditions as long as it's normative to normal operating conditions and I guess that could be fine. Um but again for as far as the severity level is concerned the issue is Lefv does not disclose the severity level as it's described in the patent and and as it's as it's claimed.
>> All right. Um we're running out of time so we'll take the other issues that you wanted to raise on the briefs. Let's hear from the other side.
>> Thank you honor.
>> Good morning. Good morning, your honors.
May it please the court. I'd like to start with the motivation to combine issue if that's okay. Um, I just want to begin by saying there was a lot of statements here made about what the board agreed to or what the petitioner alleged. And I want to go back to uh where Judge Chen was talking about in the petition. How what was stated there wasn't some concession that there are ref there are disclosures and multiple embodiment but what the petitioner was saying is that everything is disclosed in the LEV reference. However, it's not expressly clear that there's anything in multiple embodiment. AM the petitioner did not point to there being multiple embodiment where the disclosures are.
Amstead did not point point to multiple embodiment and the board in its finding did not agree and point to the disclosures being a multiple embodiment.
That page that council pointed to where the board made the statement, the board is quoting the petitioner. the board is saying um we go back to it again. It was on APX 156 where uh opposing council seemed to suggest that the board made some sort of uh admission that things are in different embodiment. But what it's saying is petitioner asserts that claims and it lists the claims are unpatentable under 103 over LE FB which does not expressly I'm sorry which does not disclose expressly all limitations.
It's just quoting what the petitioner had said. It's not making some sort of >> petition controls what happens in the proceeding.
Can can the board find a claim unpatentable as anticipated if the petition does not argue that it is?
>> So the what what happened? So to answer your question, no, but that's not exactly the facts here, right? So the petition says that everything all the limitations are found in LEB and then it says we're not clear that there's everything's expressly in one embodiment. So we're doing it under a 103. This is just like real time despite what opposing council said in that case. It was a 103 and the board and the court there said okay this is really like a 102 and we don't need this additional reference here. And because 102 is the epitome of obviousness, we can find that all of the limitations are here without looking for a motivation to combine. And that's exactly what happened here. When the patent owner filed its corrected reply, it basically said there's an issue here because there's a limitation missing. It did not really argue motivation to combine, but it said there needs to be a motivation to combine here because there's something missing and so you have to modify uh the reference in some sort of way. And that's not what the board found. The board went through every single limitation and said here's the limitation in the reference. Here's the limitation in the reference. There's no reason to modify here. There's no reason to um find a motivation because everything all the limitations are disclosed in that particular reference.
So this is a case akin to real time that can stand the way that it was written.
Um, moving on if that's okay to the uh claim construction with the normative operating conditions. Um, >> your friend, if you could address your friend said, uh, I'm not sure whether this is normative or severity. He made the point that if what you're saying in the brief had been what the board said, that might have been okay, but it was different what you're saying. So, if you know what he's speaking to, why don't you address that? Uh I I I don't because I feel like I was just uh defending what the board actually did which was essentially finding that there what the board I think what I think what Amstead is arguing is that they feel that the stage 4 critical alarm was read into the claim. But that's not actually what happened. That that was my impression when I read their brief and I think that's the argument that is being made made here today that you need some you can't read that in. But the board did not do that. um it didn't find that that failure was a catastrophic failure. It was basically saying what's happening here is that there are multiple operational norms that serve as reference points for detecting the deviations. And it literally went through and said you have bearing temperatures that exceed the temperature of an axle. You have averages average bearing temperatures calculate I'm sorry calculated at the wagon or freight level. You have thresholdbased alarm values for bearing temperatures. And all it's doing is saying under this word nominal operating conditions, it's saying you have these deviations that come from what is normal. And that's what that nominal, I'm sorry, normative or expected condition language means.
It's not saying we're bringing in a fault or something where it's so high that it's wrong. We're just saying this is what it should be at a certain level.
something is different and so it is off of the normative operating conditions.
>> So I'm sorry in in your view then what is what is the word normative adding to the construction of nominal that that wouldn't be covered if normative was not in the construction.
I think it's just showing that there are there are operational norms, operational values that are what one would expect when operating the rail car. And >> is it just redundant of expected conditions or is it actually broadening the claim term?
That is the inclusion of the word normative.
I think it could be made that it's it it might be a little bit redundant because it's saying normative or expected. But I think the reason it's stated here is because there are these sort of predetermined values, meaning predetermined um conditions within let's say the bearing temperatures that are that are being looked for. And when the sensors determine that something is wrong there, they send a signal. And so >> you mean like um if there was some default range that the bearing temperature should be like for example 100 to 150 degrees Fahrenheit >> and that is >> that would be at a normative nominal operating condition >> if that's what the spec if that's what the um reference says the reference doesn't actually have >> I I bet I'm just trying to get a better understanding of what a normative operating >> if that was yes if that was the expected thing that a railc car operator would have um looked for or expected when they were operating the rail car and then there was some sort of deviation from that then under that >> hypothetical maybe expected might have been referencing some kind of real time expected temperature in the sense that maybe you're sensing um the temperature of all the bearings of a train car And those are all in roughly the same temperature. But now this one is uh for this one particular bearing the temperature is deviating quite a bit from the other um >> yes maybe I misunderstood >> temperatures and so therefore um that's the expected temperature would be something very close to all the other ones.
>> Yes. And I apologize maybe I misunderstood your original hypothetical but that's what I thought I was agreeing to but it it is absolutely the case of >> so that's a real time expected condition whereas a a normative is hey during operation we expect all these things to be roughly >> yes within a range of >> x to y degrees temperature and and if you're outside of that then you're not within the nominal operating condition >> right and then you would have the alarm threshold at that point Does normative appear in the spec the word normative >> in their specification? Um I don't recall your honor. Let me just take a look real quick.
>> And also is this the plane construction that the other side that the petitioner was advocating or is this something the board came up with?
>> This was what the petitioner was advocating your honor. Um to answer your question about is normative in this >> is nominal operating conditions in the spec. It's a better question.
>> Oh, you're welcome.
>> Thank you. You're um to the extent it is, I want to be able to point you.
So, I'm not sure about the normative or at least where I could point your honors to locate that. I'm happy to. Um, >> I know there's words like normal in there.
>> Yes, those are in there.
>> Not You're right. Not nominal.
>> Okay.
>> Yeah, I don't I don't see that in the specification for honor.
So, just to to clarify, so the claim construction that the board um came to is the proper construction and is correct. As for severity level, I think it suffers from sort of the same problem, right? So opposing council argued that there's no value there's no known values in the construction and they're I think what they're looking for is that stages one through four that are sort of outlined in um their specification but that's not the board correctly found that nothing in the specification identifies numeric thresholds defining those particular stages and so those aren't needed for severity levels. The only thing you need for the severity level is the fact that it's outside of this range and therefore something is imp is wrong with the rail car and then an an an action needs to be taken by the operator as a result.
There's not any known values anywhere in the specification to point to that would go against the claim construction that the board came up with.
And so if there are no further questions I yield my time.
>> Thank you. Thank you, your honors.
>> Okay, we'll restore two minutes of rebuttal.
>> Sure. Thank you, your honor. Um I'm just going to touch briefly on the last point that was raised with regard to the um severity levels. Um if the stage the multi-stage um uh levels that that my colleague was discussing um are on uh column 13 of the um this the well I'm looking at the 223 patent but the specifications are the same. Um this is appendix 136. Um and column 13 uh it has stage one, stage two, stage three and stage four going from lines five to lines 43. It looks like um what is discussed here are in fact numerical values. They just don't have specific numerical values attached to them. But it's a predetermined amount hotter than the than the aximate is one.
That's a temperature. That's going to be a value. And it's predetermined. It's expressly stated as predetermined. Um, for stage three, it's a temperature of predetermined amount above above ambient. Again, that's going to be a value. Um, so that's that is what we're talking about. And and and these are actually escalating values that lead to um with greater seriousness and lead to more um u uh necessary interventions. The last one being the critical alarm which is stop the train and remove the bearing. Um, so that this is what Amstead uh uh is cited to in support of its construction. The board cited to it for its construction. Uh, we believe our interpretation of that disclosure um is correct and and uh supports the construction. I'll yield back.
>> Thank you.
>> Thank you.
>> Thank you both sides. The case is submitted.
>> Next case for argument 25-1063.
Once again, Amstead Rail versus Flyers.
Well, there were a few less issues on this one.
>> Yes, that's that's correct, your honor.
Um, so, uh, wi with this appeal, I'm going to, um, to start and and concentrate on, uh, the board's decision with regard to claims 25 and 28. Um the uh the these claims require respectively software filters uh and digital filters.
Amstead argued below that uh the the reference um the only reference that uh actually discloses filtering only discloses analog filtering in connection with the preconditioning of signals for analog digital conversion. Uh the board agreed with that characterization. Uh yet the board found these claims obvious uh by adopting a theory that the petitioner never advanced and was never argued by the parties uh which is that the bron's analog filtering again in relation to preconditioning of a analog signal to for conversion to a digital signal uh could be implemented in Armmitage's firmware as a digital filter. Um so Amstead had no notice of this particular argument. Had no opportunity to develop the record as to why a person ordinary skill would not would not uh use the disclosure of analog filtering in relation to preconditioning to to implement it in a digital environment in the digital domain already. There's no reason to do that because the whole point of the disclosure in Veron is to prepare an analog signal for digital conversion. There's no >> my understanding of the board's decision and the board's reading of the petition is that the petitioner was relying on Baron for the kind of broader conceptual teaching that it's good to filter out unwanted data.
uh there's an advantage to um parsing that out and then focusing on the desired data. And then um when you do that in Armmitage's uh sensing system with with Armmitage's firmware, well, you would do that kind of filtering in a in a software form. And that Mr. Raa, Dr. Ricka, the expert, said all these different forms of filtering, mechanical, electronic, software, are all super well known and have been super well known for decades.
So therefore um it it's just once you decide you want to do filtering in Armmitage you just plug and play in Armmitage's environment which would lead you to a digital software filter.
I guess the point is that you would not be looking to bone to do that. Um Baron doesn't discuss digital filtering at all filtering in the digital domain at all.
Um, and the only filtering that's disclosed, at least that's cited, is again signal preconditioning.
>> My my understanding is that the point is is that we're not looking at Baron's teaching of an analog filter.
We're just picking up Baron as evidence that yes, it was very very well known in the art that when you get a bunch of data, it's good to filter some of that data to because you can excise the unwanted data. Um, and then you can do that in other environments where you're, you know, sensing train safety data and that would be Armmitage. And so once you apply that concept to Armmitage, where would that lead you? That would funnel you right into um Armmitage's firmware which would lead you to a a software form of defector.
So again, that that really wasn't had certainly wasn't how I read the petition to be arguing. The petitioner continually and the and the petitioner's expert continually stated Baron discloses a digital filter. They said that in the in relation to claim one.
They said that in relation to claim 25 and 20 and well 28 was a reference. But in any case that that's the point is that what the the argument that was raised in the petition is that Baron discloses a digital filter that you could implement in Armmitage's uh firmware and it doesn't. there there is no disclosure of a digital filter in Armmitage. And in fact, one of the pieces of evidence um actually states in relation to um pre signal preconditioning prior to analog digital conversion that those types of filters always must be in the analog domain because then the reason why is that you end up if you encode um in the into the digital domain without conducting that filtering, you get a signal that that is not um that that has a lot of artifacts in it. That's you know that that's the must be in the in the in the analog domain. And so there's it's not clear to us that there was any explanation for why a person of ordinary scale would look at Baron the the reference that was selected to arrive at you know generic filtering in Armitage's firmware which Armitage doesn't disclose filtering at all. Um >> that's a different issue.
>> That's a different issue. Um but you know it it after amstead um uh brought this up in in the patent owner response um the petitioners doubled down saying that barone is not limited to analog uh and that it teaches the filtering of digital signals.
It it it actually cited additional evidence that was not um uh considered by the board because it was not part of the petition. What if we conclude that armage there's substantial evidence that armage um discloses filtering unwanted data.
Uh well I mean I would I would challenge that. Um what uh Amstead's uh view of what Armitage discloses is more of a sampling technique. It's at the at the the time of data collection. it only collects data uh from particular axes of the accelerometer for example. Um and that's you know as our expert uh discussed below that is more akin to a sampling technique as opposed to filtering. Um and so that would be our argument for why uh Armitage does not disclose filter.
And again that you know that's at the at the point of of of data collection. Um so um I'd like to also briefly touch on the implicit construction of one or more filters.
the um in Amstead's view the the the the claim text specification and prosecution history um indicate that the filtering which is recited in the claim um is uh occurs after the um the accelerations are sensed um and that's based on you know reading of the claim anticedent basis um um various um uh disclosures in the in in the specification. Tom, >> on that argument, do we have to agree with you that claim 26 is a uh plagued by a drafting error?
>> I I don't I don't think so. Um, you know, I'll just I'll just refer to um the line from I don't have the the case site in front of me, but you know, the the if if the specification is clear, the you know, claim differentiation can't wag the dog. Um, so you know, but >> don't mechanical filters have to be within the independent the scope of the independent claim if they're in claim 26 and 26 is not an error.
>> That would that that would be the application of the claim differentiation um document.
>> So what you're saying is no.
>> Well, if because claim differentiation doesn't mean that. I I'm I'm saying that the clear disclosure and the specification would trump that and and and you know we go through the history of of of the claims and the prosecution that the specification has been very clear was very clear on the distinction between mechanical filtering and the filtering which is the core of the invention.
>> So in your view claim 26 is is invalid >> very likely yes.
Did you cancel it?
>> We did. We did not. Um, we did not.
>> Anything further?
>> No. Thank you.
Good morning, your honors. And may please the court. Shallow win for the director of the USPTO. Um I'll begin by addressing the issue of claims 25 and 28. The board's reading of the petition was correct. Um the board did find that Barone signal conditioning is analog, but but then it read the petition to propose implementing the filtering of Baron in the firmware that is indisputably found in Armmitage. Um, and you can look at the petition at appendix 265 to 268 and then again at appendix 276 to 277. The board's reading of the petition is the correct one. Um, the petition makes clear that it's arguing that Baron discloses both analog and digital filtering. And um when the petition discusses the dependent claims with the digital filtering limitations, it refers back to that general idea discussed in reference with claim one, which is that a personal skill in the arc would have been motivated to combine filtering as taught in Baron with the armage reference to the extent armage can be read to not contain a filtering disclosure at all. So that's um the the evidence cited in the petition is the same evidence that appears in the board's decision um at appendix 370 at appendix 37 to 38 excuse me. Um the the board relies on the testimony of petitioner's expert um and then cites back to um teachings in the prior art about um that that a person of skill in the art would have known that there are times when you can implement filtering in analog and times you can implement filtering in digital domains. Um, so yes, the board found that Barone's signal conditioning is analog, but the petition was based on the broader concept of combining Barone's filtering.
Um, I'll turn next to, unless the court has questions on this issue, I'll turn next to claim 26. And Judge Stark, you're absolutely correct. There's no universe in which claim one and claim 26 can both exist. Um, claim 26 further limits claim one um and says where in the one or more filters are a mechanical filter and that that just disposes of of their claim construction argument. Um, to the extent council was suggesting that the specification controls. Well, there we have the preferred embodiment which teaches mechanical filtering. So, it could not be more clear um that the independent claims when they're talking about one or more filters, they're talking about mechanical as well as >> seems like your friend's only answer to that is kind of and I think he maybe characterizing some of our cases correctly like we not rested on claim construction that frequently sometimes saying it's kind of like the tail wagging the dog. So, do you have a response to that?
And I I I understand your question to mean not resting on claim differentiation and that might that's the correct um that's a correct characterization of the case law from this court. But again in this case you have the specification at column five um and at figure 4. This is at appendix 113 and appendix 100 talking about the preferred embodiment that talks about mechanical filters that uh are used for um filtering accelerations that are considered noise. So the claim construction argument whether you look at claim differentiation or just the specification or both the intrinsic evidence supports that one or more filters configured to filter at least a portion of accelerations is broader than just digital filters or mechanical filters.
>> What about dependent claim three?
>> So that's an interesting one your honor.
Um >> I see your green brief mention dependent claim three.
>> I can answer that question now your honor. I think dependent claim >> you're going to walk back what the board said about dependent claim three.
>> I I'm not sure which um >> the board seemed to rely on dependent claim 3 along with dependent claims 23 and 26 as evidence for why claim one should be understood to include mechanical filters upstream of the sensor. But of course, when you look at claim three, it it calls for additional filtering to be added to claim one. And that additional filtering is in fact mechanical filters upstream.
>> Correct, your honor? And and and I think it's a fair reading of claim three that it's if we're going to look at the dependent claims, claim 26 maps on more clearly. like the argument for claim constriction claim differentiation I'm sorry is stronger with claim 26 with claim three um and I'll pull it up so that I'm not just speaking from memory with claim three it's talking about it's limiting claim one further and it's talking about >> a wireless sensor node and then saying that there's a mechanical filter in the wireless sensor node claim one isn't talking about a wireless sensor node in that way so I think if you if you were to look at the support from the dependent claims. Claim 26 and claim 23 are are stronger evidence of what the one or more filters term means in claim one than claim three. But even with claim three, it's not it's it's sort of introducing further limitations before it's discussing filtering or mechanical filtering. So that would be my response to that. Um and then just briefly, your honor, as to if you agree, you were asking opposing council if you agree that Armmitage discloses filtering. Um the petition ground was Armmitage in combination with Baron. Um this was sort of a belts and suspender approach from petitioner. Um they talk about Armmitage disclosing filtering and then saying to the extent Armmitage does not disclose filtering, you have Baron and there's a motivation to combine the two.
Um, okay. Unless the court has further questions, I yield my time. Thank you, honor.
>> I will just uh very briefly um um address the claim three um issue and the issue of the preferred embodiment that that my my colleague just mentioned. So, one thing to note is that claim 3 was originally filed in the PCT application as claim 49. Claims 26, uh, claim 26 was added much later. Um, so when we say that the original description supports our reading, one of the things we're referring to is claim 3. That is part of the original specification as it was filed. Uh, additionally, it's just simply not true that the preferred embodiment must include a mechanical filter. the uh the the the wireless sensor node in figure five is expressly disclosed as not having a a mechanical filter and that embodiment is no less preferred. Um and that it it the a logical reading of the claims is that uh what is covered by claim one would be the WSN of claim of figure 5 and the um uh what would be covered by claim three would be the WSN of claim four which expressly states that it has an optional mechanical filter in it. Um, so the idea that mechanical filter must be included for being in the preferred embodiment just simply doesn't isn't supported by the specification.
>> Thank you. We thank both sides. The case is submitted.
The next case for argument is 25-1107 Lyman versus Collins.
Morning.
Did I pronounce your client's name correctly?
>> Lemon, your honor.
>> Thank you. And may it please the court, Kennedy the Hawkus for Mr. Lemon. On behalf of Mr. Leone, I want to thank this court for the opportunity to present his appeal. Uh, this appeal asked the court to again consider how 38 CFR 3.156b affects the finality of a claim. The dispositive facts are not in dispute. VA issued a dispute.
>> Can we talk about finality?
>> We can, your honor. Um, so a gray brief page four, you say, quote, "If Mr. Lemo agrees to the ex Mr. Leone agrees to the extent that if a subsequent appeal is available, this court lacks jurisdiction." End quote.
So if the that's telling me that if we believe that there's a subsequent appeal available on the 2006 date then um we should dismiss this appeal.
>> Absolutely your honor and that's what the government said is the circumstance here.
>> They that's what they argue your honor.
Yes. Um I will again as that statement says we are unclear still even under this court's precedent under Williams and subsequent cases whether he must appeal this determination now or whether he must wait for the remand proceedings.
Um there is other case law Tyrus to be which is probably the most um uh glaring where if if the veteran does not appeal and he should have then he loses the right to assert his >> was that in the circumstances of this case where the case is still alive he I mean the CABC split it and it remanded part of it but that doesn't mean that the rest of it just disappears from the face of the earth that still remains the 2006 2007 issue still remains as part of the case. Correct.
>> Uh I Well, we don't believe so, your honor. And again, I I think that's why we filed this appeal to get guidance from this court whether that is or is not the case. Like in Tyruse, there was uh a claim that was denied for a specific disability. They denied one legal part of it under one legal theory.
The other legal theory was uh remanded.
And this court held that you must assert your appeal at that point on the the denied portion of it. And and as we argued in our brief, there are two separate um time periods that are at issue here. There's a 2006 to 2011 time period.
>> What is the name of the case you're referring to?
>> Tyrus. Um >> is that in your brief?
>> It is not, your honor, and I do apologize.
>> Is it a presidential?
>> It is your honor.
>> Of our court.
>> Yes, your >> Could you spell it?
>> T Y R U S I believe.
>> T Y.
>> And the issues were the same here. Is it does it play play on this case?
>> Well, we didn't cite it, your honor, because it's not directly on point. Um, Tyruuse was a case where there was a specific claim that was adjudicated by the board. The veterans court remanded and the facts are not these are generalized, but the the veterans court remanded under one legal theory say direct service connection and denied on another say presumptive service connection. And this court held that he must present his appeal on the denied portion. Uh and even though the remanded portion was was sent back to the to the VA. Uh and so that's how we looked at this case was that >> Can you give us the citation to this?
>> I I can your honor.
>> Case to us.
>> I I can your honor. Um >> and what's the spelling again? T Y R U E S >> E S Maybe you can come up with it after.
>> I I can, your honor, I can certainly look for it um after um >> I I hate to speak about a case which I understand about, but it seems to me that even if as you've described it generally, it seems a bit different than the facts here >> he had two separate claims.
>> They're somewhat intertwined.
And your position rests on the fact that he would not be able to if it goes back on remand and let's assume hypothetically the board says no on the 2013 effective date the CABC says no on the effective date that you can't press the 2000 piece of it as well 2006 piece of it as well. Not at the Veterans Court, your honor, but certainly um well, if the Veterans Court affirms the 2013 and says, >> "Yeah, they've already decided the 2006, >> right? The 2006 has already been decided."
>> Doesn't mean it's not in this case. It's not part of any final judgment issued by the CABC because all you've got is a remand now. The case is still alive, right?
>> Um right now, as we understand the Veterans Court ruling, the 2011 claim is alive.
the 2006 claim has been finally adjudicated as as final and not appealed. And so that's why we think that there is a um that we should have filed this appeal now.
>> All right. Well, are you satisfied if the government says no, its view, it's not an argument, it's a position that this case will be subject to adjudication later on. I mean, are you just trying to, you know, protect yourself and your client from the case?
I mean, yeah.
>> Yes, Sean. We're trying I'm trying to protect Mr. Leone. Now, regardless of what the the secretary says, the Veterans Court's jurisdiction, this court's jurisdiction cannot be uh asserted by by his uh his position that and the board cannot review the 2006 issue. So, if if this court does find that we we have to wait until um the Veterans Court addresses it again, then we're perfectly happy with that. But again this appeal was >> the issues in addition to that the issues are kind of intertwined arguably right I mean the 2013 and the 2006 it's about what what came in on the 2006 I mean there is some theory in which you could need to look at both right >> uh I don't believe so your honor the only thing that makes them that they have in common is that they're both trying to get benefits for Maner's condition which he by the way he's already service connected for he's already getting benefits for The the reason why they're distinct is because the ruling on the 2006 claim was an application of 3.156b or a misinterpretation of that regulation that by finding new and material evidence was presented that that finalizes and closes that claim and that's not what deal said. deal v.
Collins, which we did cite in our reply brief, um which came out after the secretary's brief was was uh was filed.
Uh that that case although was dealing with a ca a a situation where the veteran did not present new and material evidence, deal held that by not presenting new and material evidence that that prior claim is now closed and so there because there's nothing to do with that evidence. But it did say a different situation may be available which is here when new material evidence is presented. And so the the veterans court held uh appendix 5 that the claim was reopened the appellants claim in 2013. New and material evidence is necessary for a reopen claim. And so that's the legal determination that we're challenging. We're happy to we we're happy to wait if this court uh finds that we should. Uh but to protect Mr. Lemon. Um, we filed this appeal. If there are no other questions, >> your honor, >> I I think implicit what you're arguing is you agree. You didn't cite any cases in your briefing that would say that there's something that can happen uh in the further development of this case that would moot the issue of the 2006 effective date that you're asking us to review today. There may be this Tyruuse case you all can't collude to expand our jurisdiction. I get all that, but there's nothing in your brief that would that would support an argument that if you don't get the review today, it'll never be available.
>> Um, other than Williams, your honor, which is our the primary uh which I think is a controlling case law that Williams does say that that we can present these issues um and that this court does have jurisdiction over them.
>> But but Williams says you have to meet all three of those prongs of Williams.
And my question really goes to prong three, which is what we've been talking about. And and I just don't see any argument. I haven't read the case you've cited today, but based on the cases in the briefing, I haven't seen anything that says uh this issue of the 2006 effective date will become moot or could become mood on remand.
>> Well, it certainly could become moot, your honor. If obviously if the vet if the board denies the uh the remanded issue and finds against him, then it would become moot. Um following that >> just because the CABC has rejected that and it's not remanded it. The case isn't over.
>> Well, it's still the same case that will be subject to review or appeal to us depending on how things go from you already.
>> And again, your honor, that that's a a reason that is a an outcome that Mr. Leone would welcome. Um he wants to present this legal issue to this court.
Uh but again we think that because there were two separate uh periods of time here which are different which are distinct. The 2006 to 2011 which the veterans court foreclosed and then the 2011 going forward um to the current effective date issue which they remanded. Uh and so again, we're we're here to assert or determine whether we should present this now or if he should wait until the board is done with their uh with their adjudication of the remand.
>> Okay.
>> Thank you.
>> Good morning. May I please the court? I am not I will confess I'm not familiar with the Tyruuse case. It looks to me like the citation is um 732 F-3rd 1351.
That's 732 F3rd 1351. Now >> that's not that's a pretty old case.
>> Yes, it is. Um and as we've discussed, it wasn't cited in any of the briefs. So I I can't tie it into the to this case today. Um happy to do something if the court believes that that's >> Do you disagree with any of the observations that have been coming from the bench?
which seemed to be repeated in your brief.
>> No, your honor. I think if we go particularly to the third Williams factor of danger of mooteness during the remand, that's that's not a danger here.
And so for that reason um we've cited the Joyce case and its um point that where a claim where where um issues are inextricably intertwined as here where there's the same underlying injury claimed injury that is a situation where this court under the >> are the issues inextrictly intertwined?
I mean can't we think of them completely separate in terms of the facts and the law that applies to each? Well, I think what Joyce says is that they're inextricably intertwined because it's it's the same underlying injury. And so that to me means that there's I understand your honor's point in so far as there may be different evidence on effective date applicable to the two claims, the 2006 and the 2011, but ultimately what we're trying to understand is the correct effective date for the miner syndrome. And so that all is tied together and that is to me what Joyce stands for and why this court should stay its hand for now under Williams and address these issues uh on a full appeal.
Recognizing my friend's concern that well is now the right time or is now not the right time. The position we're taking here is that when it comes back, if it comes back after remand, at that point, the court would be positioned to review both the Veterans Court decision both with respect to the 2006 claim and also with respect to the 2011.
>> I don't know if we're going to have to consider factor one under Williams, but you seem to dispute uh that. But as I understand uh the argument it's that the board and the Veterans Court misinterpreted 3.156B uh in maybe uh allowing very little to be done in order to show that the new material evidence was considered and and it's analogous to I think our cases of Hampton and the recent case of Deal where we've said those interpretive type questions are questions of law about would satisfy Williams prom one. What's your response?
>> Yes, your I I I I do agree the deal and Hampton do provide support for that position. Um I our point in the red brief was focusing on um sort of the the way in which jurisdiction is found not under Williams but rather under this more typical question of whether there's an issue of legal interpretation. Um I do understand your point and I think that the third Williams factor is where this court's focus should be in terms of whether or not the court should act now or wait >> that if if we wait the the government is reserving the right I suppose to argue at that time we lack jurisdiction based on a different idea that this is really just a dispute over application of law and effect. That that's right, your honor. And that would that would arise under typical principles as it would in any uh situation where this court is reviewing a judgment of the veterans court.
>> But the government is foreclosed from arguing however many years from now that he he needed to have appealed the 2006 case immediately.
>> Right. I mean I the the position we're taking here is is that this is not the right time and there must be a right time and so yes, your honor, I agree with that. Okay.
>> Thank you.
>> Thank you.
Thank you, your honor. Just two points.
Um, that is the Tyruse case that I was referring to and >> it's not a new case. If it's >> it's not true. Yeah.
>> Um, >> did Tyuse talk about Williams factors?
>> It did not, your honor.
>> Maybe because the Williams factors weren't relevant.
um perhaps I think but again that goes to our position that these are two separate issues that had to have been appealed separately and can uh and remain um distinct from each other. Uh and the last the last uh point that I'll make is under Joyce um inextricably intertwin they found that it was inextricably intertwined because the uh addressing one would disrupt the orderly process of the adjudication on the remanded uh issue. Uh and that case relied heavily on Elkins and and Elkins really explained that um interpretation of a statute or regulation would preclude uh where the veterans in veterans court's interpretation of a statute or regulation would preclude an award of benefits on a particular claim.
A veteran might otherwise have to wait years before all of his or her claims are fully adjudicated. resolution at this stage um would um actually enhance the the adjudication of the claim as opposed to disrupting it. Uh and that's that's the primary holding at Elkins was just that that sometimes um you don't have to wait because uh it it does not disrupt the the uh remand proceedings.
>> Is anything just for clarity is there anything going on at this stage? The case was remanded like a year ago or something.
>> Nothing yet, your honor. No.
>> Okay. Thank you. Thank both sides. Case is submitted.
>> Final case for argument this morning is 26-1033 park revision versus quality.
Mr. Budwin, whenever you're ready.
>> Thank you, your honor. Josh Budwin of Mcool Smith on behalf of Parker Vision.
This court's September 6, 2024 presidential opinion was correct in every respect. Yet on remand, the district court failed to apply this court's direction and committed error by reading the generating limitation into the receiver claims at issue here.
>> Can we talk about rule 54b?
>> Yes, your honor. And I'm I'm not aware of a prior 54B where some patent claims that have been finally adjudicated could come up on appeal under a 54B while other patent claims were still being litigated below. Is there an example of that?
>> Your honor, we were unable to find such an example. I would agree with the framing that this is unprecedented, but the the procedural posture of this case is also unprecedented and it meets all of the requirements for certification pursuant to rule 54B, which is dictated to the discretion of the district court, which the district court um correctly resolved in this case. Speaking of standard of review, we've got a case WLG Gore and doesn't it say that on the an appellent court should review the finality of a judgment denovo in order to assure itself it has jurisdiction the underlying factors in 54B maybe at the discretion of the judge but isn't the threshold issue a denovo standard review >> ultimately whether the issues are properly before the court this is an appellet court that decides the issues that are properly before it you're your honor and at least with respect to the 907 patent that's an issue here where the district court's order was dispositive as to all claims related to that patent there can be no doubt that the issues related to the 907 patent are properly before this court that >> but we've never had that situation either where say one the claims of one patent have been resolved below and but the claims of a second asserted patent are still being litigated >> well not in the real rule 54b context text your honor, but it's certainly permissible under interlocatory appeal 1292b. And to the extent that this court is at all uncomfortable with considering this case under the the uh rule 54b, this court is permitted to convert the district court's rule 54b certification into a rule 1292b interlocatory appeal and consider the issues under that framework. Your honor, >> how do we do that? I mean, that's such a rare procedure that's used by our court.
I mean, you know, we've got hundreds and hundreds of cases, and the minute we open up one little hole, people can try to drive a truck through it. Why would we do that in the circumstances of this case?
>> This is a very unique case, your honor.
>> Well, I know it's very old.
>> It's old. And as referred to on the first page of the court's 2024 opinion, it refers to this as a litigation saga.
And as the district, >> unfortunately, we've got quite a few of those going on in our sphere. And as the district court recognized when it granted the rule 54, this is an unusual, rare, and unique case which meets the requirements for certification under rule 54b. And there can be no doubt that further delay would work, hardship, and injustice, which is what that rule 54b, also potentially 1292b interlocatory certification, is permitted to address.
Uh, this case has been pending, as you know, well longer than a decade, has been to this court already twice. three times if we include the PTAB appeal of the 940 IPR.
>> I know. And it's unfortunate because the briefs here were filed. I mean, now we've built in another year, a year and a half into the delay because of this appeal. That's an unfortunate circumstance, but I don't see how that gets you to the extraordinary circumstance, which no one can find any precedent for, >> which is why to a 54B here, >> which is also why we requested to expedite this appeal, your honor.
this case. Coming back to why rule 54b and 1292b exist, I agree they are rare.
They are unique. It's not something that's going to be granted in every case, even the vast majority of this of cases. This is a case where it's proper.
Okay, we've got an inventor who's died.
Our first expert received a health adverse health ad uh event and had to withdraw. Now during the pendency of the remand, our second expert was diagnosed with >> I don't but first of all very little of that distinguishes you sadly from dozens of other patent cases for better or worse.
But I fundamentally I'm having trouble still even if 54b were appropriate.
What's the prejudice of going to trial or finishing up what's remaining these transmitter claims and then coming to us with one final appeal? So, it's not just the additional delay, your honor. It's how long this case has been pending. If we go back to >> Well, we can't turn back the clock. Why?
I mean, why again? What What is the the prejudice?
Because the district court found some and you keep arguing it, but why not just finish up like almost every other case does on the transmitter claims and then come here and and make your arguments that the claim construction was wrong on the receiver?
>> Yes, your honor. And if we want to handicap how much longer that will take.
I mean, I have a district court case now where we're more than a year post jury trial and we still don't have a final judgment.
>> Is there a possibility a pending summary judgement motion in this case on those claims >> on on which claims are under the transmitter claims?
>> Yes.
>> Uh I don't believe so. I believe all of the summary judgement motions have been decided. I think there are pending issues. There's still a Dow bear issue, outstanding motion to eliminate, things of that nature. The the issue we have is we're losing the witnesses and the people who are involved in this case.
Okay, one of our inventors has died.
We're now lost our second expert. Some of the Qualcomm witnesses who are involved in the transactions that we say lead to induced infringement and willful infringement. They've also died. I understand some of them are no longer um they have adverse health uh instances and may be unable to testify live at trial. And so if this case takes another two, three, four years to resolve, we're going to continue to lose evidence, which the 16-year saga of this case going back to Parker Vision One shows.
>> Well, the only things before Ross are those claim constructions, right?
>> Claim construction and the request for reassignment, your honor.
Do you to the extent you argue that maybe one thing we should do for you is consider just the 9007 patent because it is final.
I'm I'm concerned about that because you never requested just a 9007 appeal. And it seems to me the logic of your position is we could the district court couldn't find there's no just reason for delay of an appeal of just the 907 because of the at least arguable overlap on the issues between the 907 and the 940. So I'm I'm I'm troubled by considering telling the district court it got the 54B wrong on a question it was never asked that is 907 alone. But even if we could do that, wouldn't wouldn't it be wrong to say there's no just reason for delay of just a pure 907 appeal?
>> Yeah, your honor, we asked the district court to certify the 907 and the related 940 issues because they present the same claim construction issue.
>> Never just 907. Correct. And if we want to fall back to saying that what should what should be heard is just the 907 which I believe is properly before this court because it's dispositive as to all issues. This court could consider the 940 issues pursuant to pendant jurisdiction which we explain in our briefs. It's the same claim construction issue with the same underlying facts and law. So the court could consider it that way. If the court has any concerns about how this case is presented and how this case is before the court today, the court could issue a limited remand and to the district court with a direction or an instruction to certify just the 907 patent potentially under 54B or 1292b or both patents under 1292b. There is a reason rule 54b exists. There's a reason rule 1292b exists. It is gu it is set to be the exception and here we meet that exception as the district court found in its discretion and I would note that under this court's authority the 20 2001 decision of uh intergraph which is cited on our blue brief at page four whether an appeal should proceed under rule 54b is best decided by the trial court and should only be disturbed where clear clearly unreasonable >> but I think that goes to the no judge best reason for delay discretionary part. Whether there's finality here is as judge gross mentioned something we reviewed day no vote and I don't think you're arguing the district court can treat something as final that as a matter of law is not final.
>> I would not make that argument your honor. I the district court has treated these issues as final. It gave us a final judgment on the receiver claims in the 907 patent. But but if unfortunately that's an error of law that you cannot split up a single cause of action and treat half of that cause of action as a final judgment for 54b then we have to say that and and send you back.
Right.
>> Correct. Unless this court either converts it to a rule 1292b which it's permitted to do or has a limited remand where it directs the district court to do so.
>> I guess just confirm this for me as I understand it. I think I'm looking at it, but at A576, it's your complaint.
Count one, infringement of the 940 patent, that count one is not final. Correct. Count one in the pleading, the notice pleading is specific to the patent. The infringement allegations are specific to the claims and each claim stands on its own.
>> But your count one cause of action is not final. Half of it, roughly half of it is severed and stayed and still in the district court. correct severed into a separate cause of action and stayed those claims. So what the district court did was it was specific as to the claims at issue. The receiver claims were cert entered final judgment certified for appeal pursuant to rule 54b. The remaining transmitter claims were severed into a separate cause of action and stayed. And that's where the the procedure is now at the district court level. Your honor, >> C could you explain something to me about claim 24 of the 940 patent? Um I the party seemed to be calling it a receiver claim, but half of that claim is really contained in independent claim 22, which is all about a transmitter subsystem. And so claim 24 is really a transmitter and a receiver claim. Claim 22 uh is a receiver is a transmitter claim. The last element of that is a generic recitation of a receiver of which claim 24 then specifies the specific elements of that receiver.
Right. And so you're calling claim 24 a receiver claim, but claim 24 necessarily has brought in uh a transmitter, a significant transmitter component into claim 24.
>> Ultimately to prove infringement, we would have to show the elements of the independent claim. That independent claim is not separately asserted and is not what any of the parties or this court have referred to as a transmitter claim at any point in the pendy. I understand they haven't labeled it a transmitter claim, but you just look at claim 22, which is necessarily part of claim 24, and you line it up to claim 25 of the 940, which is one of the transmitter claims, and claim 25 and claim 22 really look very similar in what they're talking about. The difference is that claim 24 is claiming the receiving subsystem which is not present in either of the claims that your honor just mentioned.
>> Right. But claim 22 is necessarily part of claim 24.
>> Claim 24 is >> we can't ignore all the elements of claim 22 when we're examining the scope of claim 24.
>> Claim 24 is a dependent claim, your honor. That's correct. And so I think you assert I'm not sure that the damages are completely separate and distinct between the receiver and the transmitter claims. And I I have a hard time looking through all the claims and seeing how that's the case.
>> There are separate damages numbers presented for receiver and transmitter in the damages expert reports which are still subject to the district court's dow. And that's part of what supports the separateness of the claims um because they have separate recovery in addition to separate infringement proof.
>> But I assume for claim 24 for the accused products, you're pointing to something in Qualcomm's products that would meet the receiver limitations and then something else in the Qualcomm accused products that would be matched up with the transmitter portions >> in order to prove infringement of claim 22. Even though claim 22 is not separately asserted. First we would have to prove that the elements of the independent claim are met which relates to transmitter proof. Yes, that's correct your honor.
>> Then we would have to prove that the receiver claim is >> then there is transmitter proof required to deal with this receiver claim of 24.
>> But the damages recovery is separate.
Your honor, there's no claim under claim 24 for transmitter damages. It's specific to only receiver. In Qualcomm's accused product, are you accusing one component in Qualcomm's product as being a transmitter and then another separate component as being a receiver? Or are you >> um accusing a transceiver as as being um the the infringing component?
>> When we look at a chip, the accused products, most of which are transceivers, there's one piece of silicon. Within that piece of silicon are separate components. Some of those are transmitter which is upconverting the signal for transmission and that's separate from the receiver claims which is receiving the high frequency signal and down converting that. So they are separate uh they're separate circuit elements. They're drawn separately on the schematics and the way we intend to prove infringement of them is different because it's different infringement proof for each >> and the damages would be you're dealing with sales of a device or how do you differentiate them when you're dealing with the amounts collected for one versus the other one? They're all in one device.
>> Correct. Your honor, if because we have to aortion to the infringing instrumentality and so we've aortioned a and arrived at a number for receiver and we've aortioned and arrived at a separate number for uh transceiver. Uh and so the damages are separate and there's a separate aortionment for each.
>> And you mentioned there's a challenge pending. Does that have to do with any of the things we've discussed today?
There's an out there's an outstanding Dowbear challenge on the damages and I my recollection of it is it challenges the whole gambit of the damages report that we've provided in this case.
>> Ask one more near the start of your remarks you said I think that the district court didn't comply with what we ordered in our last opinion. I understand what I'll call substance the substance of the claim construction you're unhappy with. But I'm more concerned at the moment about procedure.
Is there something procedural that the district court did that you think did not comply or was inconsistent with what we were ordering procedurally to happen on remand?
>> Yes, your honor. So the remand instruction was clear that on remand the district court should undertake any necessary claim construction and then determine whether the asserted claims that issue receiver claims have the generating limitation of the claims that were issued.
>> Seems like that's exactly what happened.
The district court understood that was its task. But then and in this court's 2024 opinion, it identified two errors.
The first error was ignoring or failing to apply the intrinsic evidence which the district court again repeated. The district court's claim constructions are not supported by the intrinsic evidence and they render the claims as written nonsensical. So I I I should have said you may have an argument that the claim construction process he followed was somehow inconsistent uh with a proper claim construction process. In my mind, I'm thinking of that just for purposes of this question as substantive because I know you don't like the claim construction, but we remanded with directions to undertake further claim construction if necessary.
And while I understand initially maybe the district court thought none was necessary ultimately on reconsideration, he agreed some was necessary and he went through a claim construction process. Is there do you agree with that part that that is what happened and is there some other procedural error that happened?
>> I I agree with that that the district court went through the claim construction process. I disagree that the district court followed the claim construction process that this court guided it to in its 2024 opinion.
>> Okay. Thank you. Okay.
>> Can I ask Sure.
>> a couple questions about the merits of the planned constructions of the well? I know we're way out of time, but I think council is eager to get to that. So, um, is is it isn't it true that your inventors and your experts acknowledge that these two claims in front of us um they're using the energy stored in the storage medium um to produce a downconverted signal?
>> Absolutely not, your honor. The inventor testimony that's referred to was in uh specific I believe to the 551 patent which was an issue in Parker Vision 1.
And as this court's 2024 opinion expressed, and this is the second error that I was explaining to to uh Judge Stark, the district court aired in 2024 by treating the extrinsic evidence, the expert opinions as unrebuted when in fact it was undisputable that the explanation our expert provided, which is inconsistent with the formulation your honor just provided, uh was inconsistent with viewing the claims in that manner.
And so our expert's explanation is in the record at appendix 9058 to 59 cited on pages 10 to 12 of our blue brief and that's credited in the 2024 opinion the quote in the 2024 >> I'm referring to A7379 this is Dr. Steer and then A7237 and that's Dr. Allen and they both seem pretty clear that when it comes to the 940 um you're you're that energy that's being stored in the storage medium is being used to produce that low frequency bassband signal. It's used to produce a continuous downconverted signal. It is not used to create the downconverted signal in the first instance. And >> tell me the difference between those two things for right now. I don't see a difference.
>> These are this is a sampling system. And so the way a sampler works is the switch in the sampler opens and closes and takes discrete samples of the input highfrequency signal. Those samples when they're taken those signal portions are the down converted um performing the down conversion. The down conversion is performed in the switch not in the energy storage device. and trying to read the claims particularly these claims in a way saying that it's the energy storage device that's doing the down conversion.
>> It's not doing the down conversion but necessarily you are using those stored samples those portions to combine them with other portions to produce the final downconverted signal and I thought when we read our provision one that was the whole key to the generating limitation.
So the first part of your framing I agree with. The second part referring to Parker vision one I disagree with your honor. And so the way the claims particularly these claims are written is clear.
Energy is sampled by the switch. That is the down conversion. The down conversion happens at the switch. Those create signal portions. Some of those signal portions go directly to the load. Never even go into the energy storage device.
If we look at um claim the claim uh one of the 907 patent the third step of that is clear. It says providing during the periodic couplings energy from the electromagnetic signal to the load. That energy never goes into the energy storage device. Meaning that energy if the rest of the energy that does go into the energy storage device and the energy storage device is doing the downconverting at the load you're going to have a high frequency energy that you're going to try to combine with already downconverted energy and that's not possible. Instead, what happens and as our expert explains in the appendix 908 to 59 cited in our blue brief pages 10 to 12, the switch in uh the energy sampler takes samples. Those samples, those signal portions are then ultimately combined in the load to create a continuous downconverted signal. And that's exactly what's shown in figure 57E. It's the saw to waveform.
Appendix uh 211, blue brief page 49, signal portion 5710A.
That's the portion of the signal that's created when the switch is closed and the high frequency signal is coupled directly to the load. You get this rising edge on that saw to waveform. And then when the switch is open, the energy that was already downconverted by the switch and that is stored in the energy storage device is then provided to the load to create this continuous down converted signal. Park revision one at 10:13 defines the generating limitation as requiring that the accused products produce a low frequency bassband signal using energy that has been transferred from a high frequency carrier signal into a storage medium such as a capacitor or set of capacitors.
Importantly, >> why isn't that what is essentially happening here? When you combine up what's being stored in the capacitors uh or storage mediums and these claims, >> here's the distinction and the 2024 opinion recognizes this expressly. Okay, the 2024 opinion says add or after the capacitor with emphasis six times. And that is the key. In Parker Vision one, that generating limitation came at the very end of the claim after the energy storage device and was read to require the creation of the low frequency downconverted signal in the first instance at or after the capacitor as the 2024 opinion recognizes six times.
In contrast, >> the 2024 opinion could not have changed the meaning of what a generating limitation was described in the 2015 opinion, could it?
>> No, it's not. It's saying I I'll read it to you. This is the quote from the 2024 opinion. In Parker Vision 1, we concluded that the generating limitation in each of the claims asserted in the 2011 action, quote, requires that the accused products produce a low frequency bassband signal using energy that has been transferred from a high frequency carrier signal into a storage medium such as a capacitor or set of capacitors.
This meant that the down conversion of the signal had to occur at or after the capacitor. That is exactly right. The reason we lost in Parker Vision one is because those claims were read to require generating of the low frequency signal in the first instance at or after the capacitor. It is impossible to read these claims to have that same requirement. The 940 claim is express step one the uft module to down convert figure. What if the this meant sentence about down conversion is is shorthand for what the prior sentence from Parker version one said which is the production of a low frequency down converter base signal using energy that was stored in the capacitor.
>> Your honor if there was any doubt there's another portion of the 2024 opinion that I'll refer you to. I know I've read them all. Okay, there I there's a that is in other words and but I guess we we need to understand what has been said in Parker Vision 2 in light of Parker Vision one. I guess that's what I'm trying to get at.
>> As the 2024 opinion says, none of the asserted receiver claims in this case appears to require the down conversion to occur at or after the capacitor.
Instead, the claims involved here appear to permit the down conversion to occur before, and there's emphasis on the before before the capacitor. And that is exactly right, your honor. The claims here do permit the down conversion to occur before the capacitor because it is the switch that is doing the down conversion. And all this court needs to do is look at the claim language themselves to arrive at that conclusion.
Unlike >> unlike Is that it?
>> Yes. Okay.
>> Thank you, your honor.
>> Good morning, your honors, and may it please the court. Uh, your honors are exactly right that there is a threshold jurisdictional issue here, and what Parker Vision is seeking is unprecedented.
uh and that's because there's no basis for it. I will address some of the jurisdictional issues and then since there was some discussion of the merits, I'll turn to that. Um we should start with rule 54b which is of course the rule of civil procedure 54b. That is the context in which we're operating here.
And rule 54b has a mandatory statutory requirement of a final judgment.
That's clear. It's reiterated in Curtis Wright, WLGore, elsewhere. We don't have that here for the simple I think you appreciate that we all get what you're saying. Yes. And understand it, but it's a just on the ground as a practical matter. Is there anything I mean is your friend incorrect that these claims are absolutely separate and distinct with respect to damages and everything else and therefore there's no policy reason there's no practical reason that they couldn't be taken up forget 54B necessarily and just the practical problem the reason we have 54B is for some sort of slim exception and why at least with respect to the ex explicit separateness of these particular claims. Does it not maybe fit within that very very slim exception?
>> Thank you, your honor. Uh my friend is absolutely incorrect that it would be possible to sever them in some way. As Judge Chen was observing, claim 24 here of the 940 actually depends from claim 22, which is effectively a transmitter claim, although yes, no longer asserted.
and it is very similar to one of the remaining claims 25. They even have elements in common plurality of harmonics and the like. Um and since the court seems to be interested in credential considerations, I would note that for example, although this is not necessarily an issue here, what would happen if there were inequitable conduct? Right? Let's imagine that remaining severed claims are tried below. inequitable conduct is proven and then an entire patent is supposed to be cancelled. This would create a procedural mess.
>> What about the fact that the transmitter claims as I understand are now severed and in their own cause of action? Uh does that make a difference?
>> Uh thank you your honor. I was curious to hear about that because I myself am not familiar with the separate cause of action language and formulation specifically. Um, I have been looking at appendix six in which the district court uh purported to enter final judgment pursuant to rule 54 on the receiver claims. Uh, again, we maintain that was defective. And then right after it says all other claims are severed and stayed.
I see no discussion of another cause of action.
>> Let's ask it this way. What if they had from the beginning pled uh cause of action count one is 940 receiver claims, cause of action count two is 940 uh transmitter claims. We would have a final judgment on count one in my hypothetical.
Would that be meaningfully different for 54B purposes?
>> It would be meaningfully different for rule 54b purposes, your honor. But what's interesting about that is they couldn't have done that because it's axiomatic that you need to plead infringement for a patent, not for particular claims within a >> do we have cases that >> we do and they're cited in our briefs and I'd be happy to pull them up.
>> Okay. But it's the ones in the brief.
>> Yes, your honor.
So, if for example the 940 was only for transmitter claims and the 907 was only for receiver claims, then it would be fine to uh do a 54B on the 907 with just the receiver claims.
>> Your honor, I think in that situation there would be very different just reason for delay concerns. Um, and the district court would have to analy the finality part.
>> The finality part would be cured assuming there were indeed a final >> judgment that allow 54b and a case here.
Here we're dealing with claims within the patent but with between one patent and another patent. Are there 54b cases?
>> I believe there are, your honor. Um, because we are talking, however, about how this is unprecedented. I do want to note the parties agree that the case that is most on point is Donnelly. Um and although Donnelly is nonpresidential, we know it's nonpresidential, but it is persuasive to this court. Um, and it bears uh noting exactly what Donnelly says, which is, and this is at page three, quote, "The term claim as used in rule 54b refers of course to a claim in a cause of action, not to individual patent claims." Close quote. Um it's clear and there is of course lots of other authority to which we cite in our brief uh establishing that a claim that word in the context of civil procedure means a cause of action.
>> Should we be looking at 11th circuit law here or our own >> uh your own?
>> So is a cause of action really patent by patent in your view?
Yes, cause of action is patent by patent. That's correct.
>> Two patents that have granted off the same common specification and the claims are in different patents, but they're claiming very very close cousins of each other. So in that situation, um the district court who was looking at the rule 54B certification request would analyze the just reasons for delay and conclude that those should not be separated. So it goes to the second prong of the rule 54b analysis and not the first prong which is the final judgment requirement. What about a patent that is, I don't know, has a 10,00 page specification and it has wildly different embodiment being described in the 10,00 specification and then there are claims in a single patent that are directed to those wildly different embodiment.
would we still say um it's a it's a patent by patent of what cause of action analysis >> even if um you know there's one claim to I don't know um a new transmission system and another claim to a braking system for a car >> yes your honor you you would it would remain patent by patent cause of action and the Donnelly court thought, well, yes, they couldn't imagine, but >> they couldn't imagine.
>> I've got a pretty good imagination. So, I am just wondering if uh if 54B is supposed to be pragmatic or functional and we're really talking about claims that are wildly unlike each other, then why would we say that no, they're all lumped into the same cause of action?
because then it starts to feel like form over substance, >> right? So, rule 54b is pragmatic, but it is supposed to be extraordinarily rare and we do of course have a statutory requirement that is clear on the face of the language of rule 54b.
Um, and the Supreme Court has repeated that those requirements need to be met.
Um, in another context here, which hopefully we can get to, because I did hear Mr. Budwin say the court could potentially convert defective rule 54b certification into 1292b uh jurisdiction. And as the Supreme Court has told us, uh, when the statutory requirements are not met, it would twist the fabric of the statute more than it can bear.
We are of course talking about jurisdiction and there are bright line rules.
Uh they argued uh it's in their very brief at 8. I'm sure you're familiar with it that your jurisdictional challenge goes only to the 940 patent and you heard them again today say the 907 is definitely final and maybe we should consider just reviewing the 907.
Is it true that your jurisdictional challenge only goes to the 940 patent?
And either way, why shouldn't we at least entertain the merits of the 907 issues?
>> Um, that is absolutely not true, your honor. Uh, the entire rule 54b certification was defective. Um, and the reason why it would be improper for the court to consider the 907 alone is because again, rule 54B has these express requirements and the district court must determine that there's no just reason for delay here. Parker Vision never asked for a 907 only appeal. There would be very different just uh reasons for delay. We never had an opportunity to respond to that. The district court didn't say anything about it and I would also direct the court to Curtis Wright which reiterates that requirement of rule 54b.
Do you have any response putting aside 54B? Uh the arguments that this case is is just so unusual now so old has been here so many times. Sadly people are getting older maybe passing away. uh that if there's any possible way we could find jurisdiction and find an exception here, we really should do it because of unique characteristics about this case.
>> Thank you for raising that, your honor.
It is an ironic argument because if there had not been a rule 54b certification, perhaps there would have been a trial on the transmitter claims already and maybe we would be back up here again on an expedited appeal of all the issues as things are normally uh considered. Um there's nothing particularly exceptional here that merits finding jurisdiction and there just is no jurisdiction. Um, if I may, I also heard uh my friend Mr. Budwin discuss pendant jurisdiction. Um, and I just wanted to clarify there that even if the court could exercise jurisdiction over the 907 alone, it would be improper to try and extend that to the 940. Um, and that is because the the 907 and 940 constructions are not inextricably intertwined. lots of in inextricable intertwinement today. Um and furthermore, review of the 940 is not necessary to ensure meaningful review of the 907. And those are the tests as originally set forth in Swint and as repeated by this court in Helifix and Orention which are cited in the papers.
Um and the Hellifix case to which Parker vision cites actually just underscores the point there. The court exercised pendent jurisdiction because it clearly had jurisdiction over the denial of a motion for a preliminary injunction and it exercised pendent jurisdiction because that was based upon a summary judgment of invalidity. So they were inextricably intertwined and it was necessary to review both. That is not the situation that we have here.
>> Do you want to address some of you suggested initially you'd address some of the concerns on the merits question that discussed with Judge Chen. So you want to do that?
>> I would love to. Thank you, your honor.
Um, and in short, uh, Parker Vision is misrepresenting, uh, what the core invention is here. Um, and I would like to start with the 907 patent. Um, and we can start with the plain language and the structure of the claim. So you have all the limitations and at the very end is when you first see the downconverted signal being recited. Um and as we can see if we go to figure 65 which is one embodiment of it can see how this works. Here in figure 65 we have the electromagnetic signal coming in the downconverted signal going out and they are going in and out of the gated transfer module. Both the switch module and the storage module uh play a part in that down conversion.
um and they they cooperate and that is the language of the specification. When you view the claims in the context of the patent instrument as a whole, it is crystal clear that it is the energy transfer both energy transferred yes from in the 940 the uft module but also from the storage device that generate the downconverted signal.
Um, I can direct the court to lots of other places that make this point. But one final note on the 907, the specification uses forms synonymously with generates or produces creates. So, uh, figure 83D is an example of that. That is at appendix 265.
And the specification explains that 83D illustrates downconverted signal 8310 that is formed by energy transferred from the input signal to the extent there's any shaping that would happen at a different point. Um and finally, lest there be any doubt, also uh the 9007 patent appendix 394, uh the specification teaches starting at line five that the storage module outputs the transferred energy as the downconverted signal.
I there's there's certainly specification support for what you're saying, but why if we were to reach the merits, why would the claims be limited just to embodiment that do the down converting uh at the place where you say and point out there is support for it?
Why why would that be the full scope of these claims though?
>> Because these constructions, the district court's constructions did not limit to particular embodiment. rather they clarified a a slightly uncertain term in the claim language. And when you read the specifications and you look at the figures as a whole, there's discussion throughout in lots of different embodiment um that talk about how the storage module plays a role. So for example, we were just talking about the gated transfer system. The specification also talks about the inverted gated transfer system. Um that's column 103 on the next page. We didn't cite that in our papers, but uh the specification is replete with it. Um I would note just briefly addressing the 940 since I hadn't yet addressed it. Um what Parker Vision is essentially trying to do here is ask the court to adopt tunnel vision. So if you look at the 940 figure 64A, you can see that it is the aliasing module that is doing the down conversion. And again, you have the uft module, yes, but you also have the storage device, and that is what is down converting. I know that I'm over my time, but >> ask just one one more. Uh you're aware there's a request for reassignment.
Um I just wanted to ask you to address one part of what Parker Vision argues at page 26 of the gray brief. They say Qualcomm ignores the judge's criticism of this court and his criticism of our direction to reopen claim construction.
I I didn't see you address that. Uh is that at all relevant? Uh if we were to consider reassignment, his uh arguable criticism of us in our opinion, >> we certainly tried to address it on some level, your honor. Apologies if if we didn't enough. Um, reassignment is an extraordinary and severe remedy of course. Uh, and we cited case law in our brief about how jurists dealing with long-standed complicated cases may express frustration, dissatisfaction, even anger, but that doesn't amount to grounds for recusal or reassignment.
There's no dispute here that the Torquington factors apply. And all three of those factors in this case weigh heavily against reassignment. So, uh, first of all, it's clear that the district court judge can re-examine his prior opinions. He did issue a 22-page claim construction order that applied Phillips and marched through the intrinsic and exttrinsic evidence.
There's no appearance of partiality.
We're here arguing before your honors today because the district court ruled against us and for Parker Vision in certifying this appeal. And finally, there would be extraordinary waste and duplication if this were to go to another district court judge at this point in time.
>> Thank you.
>> No, that Thank you.
>> Thank you, your honors.
Your time's all gone, but we'll serve two minutes.
>> Thank you, your honor. I just wanted to come back to the the jurisdictional questions and say that I agree with what Judge Judge Chen said. The law calls for a practical finality standard, not a rigid standard. And that's why rule 54B and rule 1292B exist. They exist for the exceptions, not for every run-of-the-mill case. And we look at the factors. What are the separateness of the rights here? There's a clear separation and a division between receiver and transmitter. And consistent with what Morris federal practice says because there is separate recovery available. Those are separate claims within the meaning of rule 54b. There's no that's uh Morris federal practice 5422 page 4 of our great brief. There's no clear definition of claim in the law which is why the standard needs to be practical. I want to come back to the the merits of the claim construction issue briefly. There is no way to read the generating limitation into the claims where the district court did without rendering the claims nonsensical. That's true for both the 940 claim or step one is clear the uft module not anything broader than that. The aliasing module I heard my friend refer to the uft module to down convert step one. That's figure 64a. There's a box drawn around the UFT module 6402. The only things within that box are the switch and the control signal for that switch. The storage module is not within that box. When we look to claim one of the 907 patent, the the step that I read providing during the periodic couplings energy from the electromagnetic signal to the load. that energy goes straight from the highfrequency input signal and it bypasses the energy storage device and goes to the load. If that energy that never goes in the energy storage device um is being downconverted by the switch as we say then it makes sense all of the switch portions are combined in the load otherwise it's nonsensical because you have high frequency signals and low frequency signals being combined in the load.
>> Thank you. We thank both sides cases that concludes that we're seeing for this morning.
>> The honorable court is adjourned until tomorrow morning at 10 a.m.
>> All right. Thank you.
>> Thank you.
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