Legal Case Summary

In the last argument of the day, I have to say, Chizmar versus Echo Brands Corporation, appeal number 15-1715. Mr. Silvershire? Yes, that's correct. Silvershire. Okay. Whenever you're ready. Thank you. May I please the court, this case involves two patents, and unless the court has a preference, I'm going to give begin with the 1,400 patent, in which the district court found that the elastic pivot, which is recited in claim 20 of the 1,400 patent, was not adequately described in the parent application. Now, to begin with, what's important is that there was no separate markman hearing in this case, but the court appears to have construed the phrase elastic pivot to require two things. On the one hand, a hinge that is elastic, and on the other hand, a folkroom that exhibits canceling rebending. The first important point to note is that the structure of the elastic pivot, namely the hinge and the folkroom, were not challenged by the district court as not appearing and figured 25 of the 6-4-0 patent. Instead, what the district court found was that the inherent properties of that structure, namely the fact that the hinge is elastic and the fact that the folkroom exhibits canceling rebending, was not precisely described with those words in the earlier parent application. So, is it your view that the continuation in part application that ultimately, actually, expressly described an elastic joint, and the word elastic joint, of course, didn't exist in the original application, that the CIP application actually didn't provide any new content? Correct

. Our view is that what was disclosed in the earlier parent application was the hinge. And so theoretically, the CIP could have been just a continuation application? Well, with respect to claim 20, it could have been a continuation application. That's the only asserted claim in this case so far. And so, and the only challenged element, and the element on which the district court found over indiscretion existed is the elastic pivot. And with respect to the elastic pivot to your question, that actual feature could have been part of a continuation application. I guess why did you add all that new written description and all those new figures? They were added to the fact that inherent properties of what was disclosed in the earlier application was added to elucidate more features of the invention in and of itself is not sufficient basis to the private and asserted patent from claiming priority to an earlier patent. And we cited caselo in our briefs to that effect, namely, Allergen V. Sandhoes and Kenneth Cuscaricera. So, what's important here and what I want to emphasize is what was actually, what did the district court find was missing? Not the hinge, not the folkroom, rather what was missing was the fact that the hinge was not elastic and the folkroom did not exhibit canceling of her bending. Going to elasticity, the patent describes that the hinge is located in the back cover and the patent expressly describes that the back cover can be made of cardboard, plastic, or semi-rigid material. The district court acknowledged that semi-rigid material is elastic. And so, therefore, you have on the record the district court is saying that the varying material that the hinge is made out of is elastic

. The district court construed the phrase elastic as being capable of deformation without permanent loss of size or shape. That was a definition provided by the district court. The hinge, the hinge is to the extent that it bends repeatedly over the lifecycle of a binder, is itself capable of deformation without permanent loss of size or shape. The issue here is whether or not this case was warranted to be dismissed on some re-judgment. The issue is whether an issue of fact exists at a hinge that is supposed to bend back and forth over the lifecycle of a binder that is described as being made of cardboard, plastic, or semi-rigid material, is capable of sustaining deformation without permanent loss of size or shape. And so, to your question, could that elastic feature have been part of a continuation application it could have? Now, with respect to the Cancelie verbending, again, it's another inherent property of the structure that was actually disclosed. We identified in figure 25 of the parent application, element 1740C. We provided a figure comparing figure 25 of the earlier patent with figure 19 of the later patent. And they both illustrated a courtroom. The district court did not find the element 1740C was not a courtroom. Instead, it found that that courtroom was not expressed, was not expressly described as exhibiting Cancelie verbending. But what did the earlier patent describe? It described that that feature, which we identified as a courtroom, is made of plastic, which is the same material that the elastic pivot is made out of in the later patent

. And it also described that that feature that we identified as a courtroom is an area of reduced thickness. And elsewhere in the patent, in the earlier patent, areas of reduced thickness are expressly described as being flexible. Taken together, there was sufficient evidence, and I think we satisfied our burden of production, that this feature was flexible, and to the extent it was flexible, it could bend like a diving board. And to the extent it could bend like a diving board, there was an issue of fact that that courtroom exhibits Cancelie verbending. And so, therefore, should this case have been dismissed on some regentment without allowing a jury to decide these questions, and our position is no? So I guess the idea is, even though when you read the original spec, no one would really think after reading it about Cancelie verbending. It was still somehow necessarily an inherent part of the disclosure, and so therefore, it's fair to say the inventor had possession of an elastic joint. Yes, elastic pivot. First of all, I don't think our position is that people would have thought of it. The answer that no one would have thought that this piece of plastic that looks like a folkroom that is described elsewhere in the patent as being flexible would not have Cancelie verbending. But even so, we want to underscore that the idea of Cancelie verbending was an inherent property of the structure that was actually disclosed. Why doesn't the claim just say elastic pivot? Instead, it says hinge joint or elastic pivot, or I think it says elastic pivot or hinge joint, something like that. Before the district court, we took the position that those two structures were the same

. The district court disagreed, and we're not challenging that on this appeal. So how did the district court enshrew the phrase elastic pivot? Again, there was no separate mark when hearing in this case, but the district court appears so said that the elastic pivot is something different than the hinge joint. Namely, it has an elastic hinge and a folkroom that exhibits Cancelie verbending. So whether or not the elastic pivot or in the hinge joint are the same, is really not an issue on this appeal right now. What's an on issue on this appeal, at least with respect to the 140 patent, is whether or not what the district court said the elastic pivot was, could have been described, was described in the earlier patent. And putting aside those inherent properties that are not required to be expressed expressly spelled out. Do you want to move to the other patent? Sure, I'll move to the claim construction issue on this 6th or open. So as you recall, this issue dealt with whether or not the column like thick portions were required to be on opposite sides of the ring. The district court held that the claim recites column like thick portions in the plural, but those two portions must be on opposite sides of the ring. To begin with, the district court acknowledged in its opinion that its construction was the departure from the plain meaning of the claim term. It expressly held that the column like thick portions are not defined expressly in the patent as being on opposite sides of the ring or being separated by the upper thin bow leg portion. And therefore, to the extent it construed the claim as the departure from its plain meaning were in the realm of having to identify either lexicography or disclaimer to justify that construction

. Well, I have to admit, I read your claim first, and the claim is painting the picture of this oblong ring, and it's got an upper horizontal portion, and then a lower horizontal portion. And then it has vertical column like thick portions. And I'll just be honest, a vision came to my mind as to what this claim was calling for. And then once I understood what the theory of infringement was, my mind got scrambled because now the vertical portions are actually not on either side of the ring, the claim ring. And we're stacking the vertical portions on top of each other on one side. Correct. And so I did not expect that. And then when I go back and hunt through the spec, I don't see anything even remotely suggesting that. Well, I think there is embodiments remotely suggesting that. We identified figure 59, and I think it's important to also go back to what's the purpose? Figure 59 is located on page 52 of our brief as well as a 0 1 2 6. And what's important to note about figure 59 is that the right side of that figure is much bigger than the left side. And so to the extent that your mind went to this idea of two column like portions on each side of the ring, the claim does not actually require two equally sized portions

. And there's a reason for that. And there's a reason that reason is what justifies the question. Figure 59, you say the two column like portions are where on the right side and their sort of stacked on top of each other. Figure 59 is described as having plural column like portions. And that is because one of the column like portions inserted into the other. Well, our position is that the one on the left side is not a column like portion. It's not the right. Well, I understand, but I'm trying to see what your theory is as to where the two column like portions are in figure 59. They would be stacked on top of one another. And one is the part that goes is going into the other, right? The thin one going into the thin one is, no, the thick portions are the column like thick portions on the right side. Well, you're not helping me by saying when I ask you, what are the two column like thick portions? You say they are the two column like thick portions. Show me in the figure where the two column like thick, allow me to finish my question, please

. Show me in the figure where the two column like thick portions are in figure, let's just take figure 59B. Our position is that to the extent there's two column like thick portions in that figure, they're stacked on top of each other inside of the figure. Figure B is the one that's in figure argument 59A, but I don't see it as 59B. The figure 59A and B are the same ring. One is the same drawing. Well, they're the same ring. One is in the compressed state and one is in the expanded state. Right, which is why I was asking, is your argument about the two thick column like thick portions that the, that identifies the two parts that get joined together in figure 59B, but you said no, which surprised me. Well, because they don't necessarily have to, they can, they can be the two parts that are joined together, but the specification is not explicit on this point. Well, here's where I'm having trouble with. I think we may be passing on another in the ninth here with the questions and answer. I don't understand why in, if, if you're not saying that figure, that the two column like portions in figure 59A are the portion that gets inserted A and the portion that is into which something is inserted B, if those aren't the two necessarily, the two column like figures, then why isn't it fair to say that the column like figures, there are 10 column like features on the right side of figure 59A or 20

. I mean, you're just saying you've just divide them into a number of different column like features and, and count each of them. You're saying they're two of them there and I can't see. We're not doing any. We're not necessarily saying there's two of them. We are agreeing that in one embodiment, one could be on top and one could be on the bottom. We're also suggesting that the patent is not specific, at least in this figure, as enumerating precisely where the column like the portions are. That's the, that's, and there's a reason for that. There's a reason for why the column like the portions can be on one side of the ring, and we're not necessarily saying that this figure 59 is the, is, is a precise example of this claim. If I were to look at figure 59, how many column like features would I be seeing? Figure fit more than one. How many? The patent says that there's plural. How many? It's not our position that we have to specify exactly where they are in order for the construction of this claim to be justifiable. So how would I know whether I'm looking at one or two or three? I think that a fair reading is that there's, there's not more than three

. And the fair reading is that there's two. And the two column like portions are on the right side of the ring. And the reason they're on the right side of the ring is because that's the part of the ring that has to resist permanent buckling, which is a theory of the claim. The purpose of the claim is that when the ring gets compressed, it won't get smushed. But you would agree that if, if I imagine for myself that there are two vertical column like portions on the right hand side, one of them is really skinny compared to the other one. That's why our position is that the skinny one doesn't necessarily have to be a column like fixed portion. And that does not necessarily lead to the conclusion that there's infinite column like pick portions in that one column. It does lead to the conclusion in your view that there's more than one. There can be yes. So maybe it's the simply by virtue of your declaring that it is more than one because of what this patent he said in this specification, he described this embodiment as having multiple column like portions. He did not enumerate like he did in other embodiments precisely where the column like portions were. And therefore to the extent that it is a moldable column like that with thick

. He said multiple column like that worth thick correct and the left side. That's on page. It's on column 56 of the six of the six world patent, which is a zero one five six towards the bottom near near lines. I think it must be column 59 right. I'm sorry 59 at a zero one five six. At the very last two cents line 66 67. When upright and closed ring 2046 has roughly vertical column like portions that are relatively thicker. Then it's roughly horizontal bull like portions right so that's when it. The ring is closed so what are we looking at 59 B no that's when the rings are open or closed. I'm in to my rebuttal time but it's not it's not relatively thicker than the horizontal portion. If you know IA our position is that this embodiment doesn't set the confines of the clean without lexicography or disavow. There's a reason why the column like thick portions can be on one side of the ring to support the ring when it's compressed so that that portion is not it was just permanent buckling. Okay so you're. For clarification if I could just to make sure I understand you're saying that the portion that's on the left side of 59 a that's marked 220. That's not a column. We're saying it's not column like the claim requires a column that was my question. And are you also saying the on the right hand side what I'll call the skinny vertical portion that is labeled 2046 N. You're not saying that's thick are you we're not taking a position that's thick. Okay so then it would be the lower right hand vertical portion that is actually perhaps more than one column like thick vertical portion. Correct. No conjunction with what Judge Brison just said. It's showing one. But but his argument is there's more than one there. Okay

. Okay so you're. For clarification if I could just to make sure I understand you're saying that the portion that's on the left side of 59 a that's marked 220. That's not a column. We're saying it's not column like the claim requires a column that was my question. And are you also saying the on the right hand side what I'll call the skinny vertical portion that is labeled 2046 N. You're not saying that's thick are you we're not taking a position that's thick. Okay so then it would be the lower right hand vertical portion that is actually perhaps more than one column like thick vertical portion. Correct. No conjunction with what Judge Brison just said. It's showing one. But but his argument is there's more than one there. Okay. We'll give you two minutes for a rebuttal. Let's hear from the other side. Shads over for a pelliz me please the court. I think some of the issues that you your owners are struggling with are ones that we struggled with as well. I just like to point out before I get into the merits that there seem to be some attacks on the process used by the district court here. And and I just like to know that that's not a process is not being appealed here. It's not something that it's been appealed. It also did not appeal the construction of the term elastic pivot to the extent that district court construed it. I'll start with the with the in validity issue on one for zero patent claim 20 we believe that the district court should be affirmed. So going back to the beginning we identified prior art actually our own product that would invalidate the claim unless they can rely on this earlier application that matured into the six for zero patent. And the written description argument that they make focuses on elastic pivot we also have another argument that other claim elements in that claim are not present in the prior application. Including elastic find your rings but for purposes here I'll stick with elastic pivot and that term as judge Chen you noted appears for the first time in the CIP that continuation and part application that led to the one for zero patent

. We'll give you two minutes for a rebuttal. Let's hear from the other side. Shads over for a pelliz me please the court. I think some of the issues that you your owners are struggling with are ones that we struggled with as well. I just like to point out before I get into the merits that there seem to be some attacks on the process used by the district court here. And and I just like to know that that's not a process is not being appealed here. It's not something that it's been appealed. It also did not appeal the construction of the term elastic pivot to the extent that district court construed it. I'll start with the with the in validity issue on one for zero patent claim 20 we believe that the district court should be affirmed. So going back to the beginning we identified prior art actually our own product that would invalidate the claim unless they can rely on this earlier application that matured into the six for zero patent. And the written description argument that they make focuses on elastic pivot we also have another argument that other claim elements in that claim are not present in the prior application. Including elastic find your rings but for purposes here I'll stick with elastic pivot and that term as judge Chen you noted appears for the first time in the CIP that continuation and part application that led to the one for zero patent. So you look at the earlier application it's not there in a later application it appears figures 19 and descriptions of figures figure 19 and 19 be appear for the first time in the CIP. And that's where an elastic pivot is for the first time described the term in the patent and the one for zero patent as you noted is elastic pivot or hinge joint. So it's stated in the disjunctive showing that there's a difference between the elastic pivot and a hinge joint and a hinge joint and if you look at the specification it describes them differently as well. Now they're trying to rely on this hinge joint 76 in the earlier patent as written description support for an elastic pivot but there's just no evidence. There's no evidence for my person of ordinary skill on the art. There's no evidence for any expert they just didn't submit any evidence so that's grounds enough to affirm the district courts judgment. Do you agree that they disclosed embodiment of a cover that is inherently flexible? No, I do not agree with that. In a separate and discussing a separate embodiment it was discussed that the cover could be made out of a wide variety of materials could be cardboard could be plastic could be an elastic. Sorry, semi rigid material and then they extrapolate from that and they take on a burden of the doctrine of an herancy which we never saw for the district court. But a couple of those inherently are capable of being deformed at least to a certain degree right. That a hinge joint might be deformed doesn't get you where they need to go what they need is they need to show an elastic pivot an elastic pivot has an elastic hinge a folkroom and can't leave her bending of that folk. So they need to show all three at best they've shown an elastic hinge there's no way that they've shown a folkroom and there's no way that they've shown can't leave her bending of a folk

. So you look at the earlier application it's not there in a later application it appears figures 19 and descriptions of figures figure 19 and 19 be appear for the first time in the CIP. And that's where an elastic pivot is for the first time described the term in the patent and the one for zero patent as you noted is elastic pivot or hinge joint. So it's stated in the disjunctive showing that there's a difference between the elastic pivot and a hinge joint and a hinge joint and if you look at the specification it describes them differently as well. Now they're trying to rely on this hinge joint 76 in the earlier patent as written description support for an elastic pivot but there's just no evidence. There's no evidence for my person of ordinary skill on the art. There's no evidence for any expert they just didn't submit any evidence so that's grounds enough to affirm the district courts judgment. Do you agree that they disclosed embodiment of a cover that is inherently flexible? No, I do not agree with that. In a separate and discussing a separate embodiment it was discussed that the cover could be made out of a wide variety of materials could be cardboard could be plastic could be an elastic. Sorry, semi rigid material and then they extrapolate from that and they take on a burden of the doctrine of an herancy which we never saw for the district court. But a couple of those inherently are capable of being deformed at least to a certain degree right. That a hinge joint might be deformed doesn't get you where they need to go what they need is they need to show an elastic pivot an elastic pivot has an elastic hinge a folkroom and can't leave her bending of that folk. So they need to show all three at best they've shown an elastic hinge there's no way that they've shown a folkroom and there's no way that they've shown can't leave her bending of a folk. The the figure that they focus in on shows the hinge joint 76 they point to a part of that figure 1740 C which the patent describes as a back cover portion. You'll notice in their briefing they always refer to as a folkroom but it's never referred to as a folkroom in the patent itself and that. So that there's a structural difference between what's disclosed in the earlier patent and what's disclosed in the later 140 patent. And also they take on this doctrine of inherently and the doctrine of inherently says that something must necessarily be so. It's not sufficient that it might be so or that sometimes it might be so so we have a disclosure that the back cover could be cardboard could be plastic. Plastic is not necessarily elastic for instance I mean my pen is plastic very hard rigid no one would argue that that's elastic it's not necessarily elastic and cardboard for instance is not elastic and that's another material that the back cover could be made out of. So and if you look at the figure 25 a and 25 b it shows a ring first in an upright position and then in a rotated position and if you look at 1740 C doesn't move it doesn't flex it doesn't bend even when the when the ring rotates so that the 640 patent explicitly shows no bending. And I just like to note also that the the lockwood decision you believe is is right on point for this and it says that entitlement to a filing date does not extend the subject matter which is not disclosed but would be obvious over what is expressly disclosed and that's a case that we said district court level the district court relied on that now to try to pivot. But that fun to around that decision the other side is trying to argue this doctor of an inherently but really the inherently argument they're making is just another way of saying it was obvious and it wasn't there's no there's no testimony in the record it was. I'll move on to the literal infringement of claim 17 of the 640 patent the roughly vertical column like thick portions in the patent must be on opposing sides the they're arguing lexicography or disavow must be shown but what the district court properly did was to look at the claim and evaluate that claim can be destroyed in light of the intrinsic evidence in how an or a person of ordinary skill in the art would have construed the claim in light of specification and if you look at for instance the the claim itself and the claim function claim itself talks about column like thick portions on the sides talks about a bow like upper portion and an extendable lower portion and it talks about a specific function that the ring is compressed and when that happens the upper portion in the lower portion. Why an inflatin outward and the columns don't widen in fact and so if you if you have that claim functionality the only way that claim functionality can work is if you have columns. The column remains with the tops of above squares down right that's right so the compressibility the compression is happening in the top portion in the lower portion so you can do that with the columns on the same side you couldn't do that there's no disclosure of how the the claimed function would work with the columns on the same side well but if you look at figures 59 and 59 B why isn't that a disclose

. The the figure that they focus in on shows the hinge joint 76 they point to a part of that figure 1740 C which the patent describes as a back cover portion. You'll notice in their briefing they always refer to as a folkroom but it's never referred to as a folkroom in the patent itself and that. So that there's a structural difference between what's disclosed in the earlier patent and what's disclosed in the later 140 patent. And also they take on this doctrine of inherently and the doctrine of inherently says that something must necessarily be so. It's not sufficient that it might be so or that sometimes it might be so so we have a disclosure that the back cover could be cardboard could be plastic. Plastic is not necessarily elastic for instance I mean my pen is plastic very hard rigid no one would argue that that's elastic it's not necessarily elastic and cardboard for instance is not elastic and that's another material that the back cover could be made out of. So and if you look at the figure 25 a and 25 b it shows a ring first in an upright position and then in a rotated position and if you look at 1740 C doesn't move it doesn't flex it doesn't bend even when the when the ring rotates so that the 640 patent explicitly shows no bending. And I just like to note also that the the lockwood decision you believe is is right on point for this and it says that entitlement to a filing date does not extend the subject matter which is not disclosed but would be obvious over what is expressly disclosed and that's a case that we said district court level the district court relied on that now to try to pivot. But that fun to around that decision the other side is trying to argue this doctor of an inherently but really the inherently argument they're making is just another way of saying it was obvious and it wasn't there's no there's no testimony in the record it was. I'll move on to the literal infringement of claim 17 of the 640 patent the roughly vertical column like thick portions in the patent must be on opposing sides the they're arguing lexicography or disavow must be shown but what the district court properly did was to look at the claim and evaluate that claim can be destroyed in light of the intrinsic evidence in how an or a person of ordinary skill in the art would have construed the claim in light of specification and if you look at for instance the the claim itself and the claim function claim itself talks about column like thick portions on the sides talks about a bow like upper portion and an extendable lower portion and it talks about a specific function that the ring is compressed and when that happens the upper portion in the lower portion. Why an inflatin outward and the columns don't widen in fact and so if you if you have that claim functionality the only way that claim functionality can work is if you have columns. The column remains with the tops of above squares down right that's right so the compressibility the compression is happening in the top portion in the lower portion so you can do that with the columns on the same side you couldn't do that there's no disclosure of how the the claimed function would work with the columns on the same side well but if you look at figures 59 and 59 B why isn't that a disclose. The closure setting aside whether there are two columns on the right side or one why isn't that at least a disclosure of a situation in which the function is performed even though you only have one only have a column or columns on one side. If you if you start with the assumption that 220 is not a column. I don't understand how there could be more than one column on the other side. Well that's a separate question. They argue whether two columns there but but let's assume that problem away for a moment you certainly could have the resistance to compression with only the one column on the right side right. I mean that's what appears to be happening in figure 59 a figure 50 59 D right. There appears to be compression in the lower and upper portions of the ring and the sick section on the right is keeping that compression from collapsing the ring altogether. I would argue that the sick section on the right and on the left is keeping the ring from collapsing. So that's the basis for your argument that what's at 220 even though it is long is thick enough to constitute a column right. That's correct and I believe they admitted that in their reply brief. If you look on page 23 for their reply brief they say. I'm sorry not the reply brief in their opening brief

. The closure setting aside whether there are two columns on the right side or one why isn't that at least a disclosure of a situation in which the function is performed even though you only have one only have a column or columns on one side. If you if you start with the assumption that 220 is not a column. I don't understand how there could be more than one column on the other side. Well that's a separate question. They argue whether two columns there but but let's assume that problem away for a moment you certainly could have the resistance to compression with only the one column on the right side right. I mean that's what appears to be happening in figure 59 a figure 50 59 D right. There appears to be compression in the lower and upper portions of the ring and the sick section on the right is keeping that compression from collapsing the ring altogether. I would argue that the sick section on the right and on the left is keeping the ring from collapsing. So that's the basis for your argument that what's at 220 even though it is long is thick enough to constitute a column right. That's correct and I believe they admitted that in their reply brief. If you look on page 23 for their reply brief they say. I'm sorry not the reply brief in their opening brief. The bottom of page 20 23 they say despite having only a small sliver of a portion actually column like on the left side figures 59 a 59 b nonetheless satisfy the functional requirement. So they're admitting that there's at least a sliver of a column like thick portion on the left side. Now I admit in other parts of their brief they seem to take a contradictory point of view on that but at least for the doctrine of equivalence. They seem to be admitting that there is a column like thick portion on the left side and on the right side and the other issue I want to do address is something that you touched on early earlier judge Bryce and that is the sort of absurd result that would happen if you took their claim construction. And that is there would be no way to tell how many portions were in a ring where they are or where a portion might start or end. So it would leave the claim invalid as indefinite and I would argue also invalid for lack of any written description because there's no written description in the patent of how a claim with columns or how a ring I'm sorry with columns both on the same side would work. And then we have an alternative reason to affirm the district courts judgment as well we have the claim construction but even if you don't go with this on claim construction we have the argument that the accused rings do not have any more than one vertical column like thick portion and no reasonable juror could find that they that they would they point to in their brief. And then we have an area above the snap closure and an area below but if you look for instance claim or sorry figure 55 of the of the patent. It shows for example whenever there's a ring closing mechanism in fact every figure show that has a ring closing mechanism shows that. It shows that there's a portion above and a portion below when it refers to that refers to it as a single column like thick portion it doesn't refer to them as to column like thick portions in the patent. So we would submit that you could sustain the district courts summary judgment of non-interference some point in the written description that where they're discussing 55 a that refers to the left hand side of the single portion. I believe there is your honor

. The bottom of page 20 23 they say despite having only a small sliver of a portion actually column like on the left side figures 59 a 59 b nonetheless satisfy the functional requirement. So they're admitting that there's at least a sliver of a column like thick portion on the left side. Now I admit in other parts of their brief they seem to take a contradictory point of view on that but at least for the doctrine of equivalence. They seem to be admitting that there is a column like thick portion on the left side and on the right side and the other issue I want to do address is something that you touched on early earlier judge Bryce and that is the sort of absurd result that would happen if you took their claim construction. And that is there would be no way to tell how many portions were in a ring where they are or where a portion might start or end. So it would leave the claim invalid as indefinite and I would argue also invalid for lack of any written description because there's no written description in the patent of how a claim with columns or how a ring I'm sorry with columns both on the same side would work. And then we have an alternative reason to affirm the district courts judgment as well we have the claim construction but even if you don't go with this on claim construction we have the argument that the accused rings do not have any more than one vertical column like thick portion and no reasonable juror could find that they that they would they point to in their brief. And then we have an area above the snap closure and an area below but if you look for instance claim or sorry figure 55 of the of the patent. It shows for example whenever there's a ring closing mechanism in fact every figure show that has a ring closing mechanism shows that. It shows that there's a portion above and a portion below when it refers to that refers to it as a single column like thick portion it doesn't refer to them as to column like thick portions in the patent. So we would submit that you could sustain the district courts summary judgment of non-interference some point in the written description that where they're discussing 55 a that refers to the left hand side of the single portion. I believe there is your honor. So you'll see column 58 of the 640 patent. And column 58 line. Yes sorry 58 line 45 says when closed and upright ring 1646 has column like roughly vertical thick portions 1646 p and 1646 q that resist. Buckling and has bow like an upper portion 1646 are that's 55 B we're looking at. Yeah right and so if you. It's also shown in 56 B as well the the on the left hand side of the ring there is what is said to be a single column and there's shown to be a closure in the middle of that column. But it's not no word as it say that there's a column like thick portion above and a column like thick portion below the closure mechanism. And then just briefly on the doctrine of equivalence we believe they have a lack of evidence and that's what the district court found there was no testimony from a person of ordinary skill in the art that supports there. There are arguments that are testimony from an expert the only testimony they rely on is the testimony of a ca 30 B6 witness and they try to. Contort that testimony to fit into the. Function that they claim and they have a couple problems first they're talking about the wrong function. They're talking about the they're being a bigger column on one side and a smaller column on the other side and the bigger column can absorb more of the compression force and the column on the smaller column on the other

. So you'll see column 58 of the 640 patent. And column 58 line. Yes sorry 58 line 45 says when closed and upright ring 1646 has column like roughly vertical thick portions 1646 p and 1646 q that resist. Buckling and has bow like an upper portion 1646 are that's 55 B we're looking at. Yeah right and so if you. It's also shown in 56 B as well the the on the left hand side of the ring there is what is said to be a single column and there's shown to be a closure in the middle of that column. But it's not no word as it say that there's a column like thick portion above and a column like thick portion below the closure mechanism. And then just briefly on the doctrine of equivalence we believe they have a lack of evidence and that's what the district court found there was no testimony from a person of ordinary skill in the art that supports there. There are arguments that are testimony from an expert the only testimony they rely on is the testimony of a ca 30 B6 witness and they try to. Contort that testimony to fit into the. Function that they claim and they have a couple problems first they're talking about the wrong function. They're talking about the they're being a bigger column on one side and a smaller column on the other side and the bigger column can absorb more of the compression force and the column on the smaller column on the other. Side that's just simply not in the claim with the claim says is that you have a reversible compressibility sub relative to a moderate compressive force roughly exerted in the direction of the minor diameter again like I said before and that's going to cause that top portion to and bottom portion to compress while the sides don't that's the proper function that's not the function that they analyze and therefore their doctrine of equivalence argument doesn't have any support in terms of the testimony from. Act goes 30 B6 witness it simply was addressing the snapping close of closure of the ring not the claimed vertical moderate compressive force so it's a different force and it's also a different action and it's a different force because the claimed force is a force on the ring not a force solely on the column so in the reply brief at page five they say they claim this R axis that runs through the center of the accused column and they say the force. Mister blism testified to is a force that goes directly into that column along the R axis that's not the claim force because that force wouldn't cause any compression of the top and bottom portions of the ring it's a different force and then it's a different action and he's he's talking about. Shutting the ring not compressing the ring if you look at the at the patent claim and the description it talks about perhaps the notebook would be put into a crowded bookcase or briefcase and it would be compressed and that's a totally different situation something that no witness testified about no expert testified about Mr. Chismar himself didn't submit any declaration about that either. All right I think we have your argument Mr. Sover thank you very much your time here you're two minutes from Mr. Silver. I'd first like to go back to the one for all patent Mr. Stover made a point about figure 25 that element 1740 C in the six world time it's not depicted or illustrated as bending. But the one point I want to make again I'm talking about figure 25 element 1740 C which we identified as the folkroom Mr. Stover is suggesting that because it's not illustrated as bending that's despositive of the fact that it cannot exhibit is not flexible and it can't exhibit can't leave a bending but what we have what's important about that figure is that the ring is only partially rotated in fact it's not nearly as rotated as it can be

. Side that's just simply not in the claim with the claim says is that you have a reversible compressibility sub relative to a moderate compressive force roughly exerted in the direction of the minor diameter again like I said before and that's going to cause that top portion to and bottom portion to compress while the sides don't that's the proper function that's not the function that they analyze and therefore their doctrine of equivalence argument doesn't have any support in terms of the testimony from. Act goes 30 B6 witness it simply was addressing the snapping close of closure of the ring not the claimed vertical moderate compressive force so it's a different force and it's also a different action and it's a different force because the claimed force is a force on the ring not a force solely on the column so in the reply brief at page five they say they claim this R axis that runs through the center of the accused column and they say the force. Mister blism testified to is a force that goes directly into that column along the R axis that's not the claim force because that force wouldn't cause any compression of the top and bottom portions of the ring it's a different force and then it's a different action and he's he's talking about. Shutting the ring not compressing the ring if you look at the at the patent claim and the description it talks about perhaps the notebook would be put into a crowded bookcase or briefcase and it would be compressed and that's a totally different situation something that no witness testified about no expert testified about Mr. Chismar himself didn't submit any declaration about that either. All right I think we have your argument Mr. Sover thank you very much your time here you're two minutes from Mr. Silver. I'd first like to go back to the one for all patent Mr. Stover made a point about figure 25 that element 1740 C in the six world time it's not depicted or illustrated as bending. But the one point I want to make again I'm talking about figure 25 element 1740 C which we identified as the folkroom Mr. Stover is suggesting that because it's not illustrated as bending that's despositive of the fact that it cannot exhibit is not flexible and it can't exhibit can't leave a bending but what we have what's important about that figure is that the ring is only partially rotated in fact it's not nearly as rotated as it can be. If you look at figure 23 which is on the page before you see that the ring can rotate much more all the way around and in fact in figure 25 to go back all the papers still on the top none of the paper has been rotated around and so what's important to know about Mr. Stover's argument is that simply because element 1740 C is not illustrated in this figure as not bending is not despositive despositive of the fact that it cannot be flexible particularly given. That it is described as being made of cardboard plastic or some origin material particularly because it's described as being an area of reduced thickness particularly because elsewhere in the patent areas of reduced thickness like that and figure 25 are described as being flexible. I'd like to address Mr. Stover's points on the doctrine of equivalence really quickly his suggestion that we do not present testimony of a person of ordinary skill is incorrect Mr. Ousson who was there 36 witness has more than five years of experience designing and developing consumer products including binders is a mechanical engineering degree this is consistent with their own definition of a person of ordinary skill. They never challenged him in the district court or at some point that he's not a person of ordinary skill and more importantly he expressly testified that when the ring is compressed that right rigid portion of defendant's ring the right side of the ring does not break or deflect in other words he testified that it does not it does not resist permanent buckling under vertical pressure. I have one last final point the district court interpretive his testimony as being limited to the snap closure as Mr. Stover explained that was precise error and what the district court said is that nothing in the six world patent teachers a relationship between reversible compressibility resisting permanent buckling and making sure that the ring snaps together properly that was error on page a zero one five three of the appendix at column 54 lines 54 to 56. The patent expressly teaches a connection between what Mr. Bruce some testify to namely making sure the ring and she picks snaps together properly and the fact that the ring is stiff enough to resist permanent buckling. Okay thank you

. Case is submitted. All right. The other court is adjourned from day to day