UNITED STATES
`
`
`
`INTERNATIONAL TRADE COMMISSION
`
`•
`
`) Investigation No.:
`
`In the Matter of:
`
`) 337-TA-1125
`CERTAIN HEIGHT-ADJUSTABLE DESK PLATFORMS
`
`
`AND COMPONENTS THEREOF
`
`•
`
`Pages: 1 -148
`
`
`
`Place: Washington, D.C.
`
`
`10, 2018 Date: Monday, December
`
`J)))I
`
`ACf HDtRAl
`
`Ace-Federal Reporters, Inc.
`
`
`
`Stenotype Reporters
`
`1625 I Street, NW
`Suite 790
`
`Washington, D.C. 20006
`202-347-3700
`
`Nationwide Coverage
`www .acefederal.com
`
`DEC 1 2 2018
`
`•
`
`
`
`
`
`INTERNATIONAL TRADE COMMISSION
`
`•
`
`) Investigation No.:
`
`In the Matter of:
`
`) 337-TA-1125
`CERTAIN HEIGHT-ADJUSTABLE DESK PLATFORMS
`
`
`AND COMPONENTS THEREOF
`
`•
`
`Pages: 1 -148
`
`
`
`Place: Washington, D.C.
`
`
`10, 2018 Date: Monday, December
`
`J)))I
`
`ACf HDtRAl
`
`Ace-Federal Reporters, Inc.
`
`
`
`Stenotype Reporters
`
`1625 I Street, NW
`Suite 790
`
`Washington, D.C. 20006
`202-347-3700
`
`Nationwide Coverage
`www .acefederal.com
`
`DEC 1 2 2018
`
`•
`
`
`
`1
`
`UNITED STATES OF AMERICA
`
`BEFORE THE
`
`INTERNATIONAL TRADE COMMISSION
`
`IN THE MATTER OF:
`
`Investigation No.
`
`CERTAIN HEIGHT-ADJUSTABLE
`
`337-TA-1125
`
`DESK PLATFORMS
`
`------------------------------
`
`MARKMAN HEARING
`
`December 10, 2018
`
`Courtroom C
`
`U.S. International Trade Commission
`
`500 E Street SW
`
`Washington, DC
`
`The Markman Hearing commenced, pursuant to notice
`
`•
`
`•
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`of the Judge, at 9:00 a.m., before the Honorable Charles E.
`
`20
`
`Bullock, Administrative Law Judge for the United States
`
`21
`
`International Trade Commission.
`
`22
`
`23
`
`24
`
`25
`
`REPORTED BY: Tina Alfaro, RPR, CRR, RMR
`
`•
`
`Ace-Federal Reporters, Inc .
`
`202-347-3700
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE COMPLAINANT VARIDESK, LLC:
`
`2
`
`VENABLE, LLP
`
`BY: ADAM HESS, ESQ.
`
`ANDREW PRATT, ESQ.
`
`ALPER ETRAS, ESQ.
`
`TAMATANE AGA, ESQ.
`
`KATHERINE DEARING, ESQ.
`
`600 Massachusetts Avenue, NW
`
`Washington, DC 20001
`
`(202) 344-4547
`
`ON BEHALF OF THE RESPONDENTS VISION MOUNTS,
`
`NANTONG JON, GRANDIX, KEXIANG, BEST CHOICE
`
`PRODUCTS, AND CKNAPP SALES:
`
`GOODWIN PROCTER, LLP
`
`BY: RONALD PABIS, ESQ.
`
`STEPHEN SHAHIDA, ESQ.
`
`TESS MAGER, ESQ.
`
`WILLIAM UHR, ESQ.
`
`901 New York Avenue, NW
`
`Washington, D.C. 20001
`
`(202) 346-4258
`
`•
`
`•
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`•
`
`Ace-Federal Reporters, Inc .
`
`202-347-3700
`
`
`
`3
`
`APPEARANCES:
`
`(Cont'd)
`
`ON BEHALF OF THE RESPONDENT DAKOTA TRADING:
`
`EZRA SUTTON & ASSOCIATES, P.A.,
`
`BY: EZRA SUTTON, ESQ.
`
`Plaza 9, Route 9
`
`Woodbridge, New Jersey 07095
`
`(732) 634-3520
`
`ON BEHALF OF THE RESPONDENTS CHANG HE AND
`
`LORELL:
`
`LEVI & SNOTHERLY, PLLC
`
`BY: RETT SNOTHERLY, ESQ.
`
`1101 Connecticut Ave., NW, Suite 450
`
`Washington, D.C. 20036
`
`(202) 997-3711
`
`ON BEHALF OF THE COMMISSION STAFF:
`
`Office of Unfair Import Investigations
`
`U.S. International Trade Commission
`
`BY: ANDREW BEVERINA, ESQ.
`
`500 E Street, SW, Room 401
`
`Washington, DC 20436
`
`(202) 205-2560
`
`•
`
`•
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`•
`
`Ace-Federal Reporters, Inc .
`
`202-347-3700
`
`
`
`4
`
`•
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`P R O C E E D I N G S
`
`JUDGE BULLOCK:
`
`Good morning. This is the
`
`Markman hearing in Docket 11-25. We're going to start
`
`well, start with the tutorial and then we'll go into the
`
`Markman phase, the proceeding, but before we do that let's
`
`take appearances.
`
`MR. HESS: Your Honor, Adam Hess from Venable on
`
`behalf of Complainant. With me is Andrew Pratt, Alper
`
`Ertas, Tama Aga, and Katherine Dearing, all from Venable.
`
`10
`
`Thank you.
`
`11
`
`MR. PABIS: Good morning, your Honor. Ron Pabis
`
`12
`
`from Goodwin Procter on behalf of Vision Mounts, Nantong
`
`13
`
`Jon, Grandix, Kexiang, which is also known as Sita, Best
`
`14
`
`15
`
`•
`
`Choice Products, and CKnapp Sales for those Respondents.
`
`And also with me from Goodwin Procter is Mr. Steve Shahida,
`
`16
`
`Mr. Will Uhr, and Tessa Mager.
`
`17
`
`18
`
`19
`
`20
`
`21
`
`MR. SUTTON: Your Honor, Ezra Sutton.
`
`JUDGE BULLOCK: Is your microphone on, sir.
`
`MR. SUTTON: Oh, sorry.
`
`Your Honor, Ezra Sutton on behalf of the
`
`Respondent Dakota Trading, and I will be presenting part of
`
`22
`
`the claim terms.
`
`23
`
`24
`
`MR. SNOTHERLY:
`
`Good morning, your Honor. Rett
`
`Snotherly from Levi & Snotherly on behalf of Chang He and
`
`25
`
`Lorell Respondents.
`
`•
`
`Ace-Federal Reporters, Inc .
`
`202-347-3700
`
`
`
`5
`
`•
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`MR. BEVERINA: Good morning, your Honor. Andrew
`
`Beverina and Anne Goalwin on behalf of the Office of Unfair
`
`Import Investigations.
`
`JUDGE BULLOCK: If there are no preliminary
`
`matters, let's proceed with the tutorial.
`
`MR. HESS: Good morning, your Honor.
`
`JUDGE BULLOCK: Good morning.
`
`MR. HESS: I have spoken with the
`
`Respondents. We reviewed the slides I'm about to present.
`
`10
`
`There are not many, it's not very technical technology
`
`11
`
`here, but I assume everything should go fine and with
`
`12
`
`hopefully no objections.
`
`13
`
`14
`
`15
`
`•
`
`Your Honor, sitting for long periods of time
`
`during the workday is generally understood to be bad for
`
`one's health. Recent studies have shown that people now
`
`16
`
`spend more than one-third of their day sitting or doing
`
`17
`
`18
`
`other sedentary activities. I won't go into the specific
`
`medical issues that can arise, but it's generally
`
`19
`
`understood that moving around is better for one's health
`
`20
`
`than sitting all day.
`
`21
`
`For quite a while standing desks have been used by
`
`22
`
`people trying to avoid sitting. Many famous people going
`
`23
`
`24
`
`25
`
`back to Thomas Jefferson, Winston Churchill, Ernest
`
`Hemingway all chose to have standing desks as an
`
`alternative to sitting, but standing all day can have its
`
`•
`
`Ace-Federal Reporters, Inc .
`
`202-347-3700
`
`
`
`6
`
`•
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`own problems. Thus, the need exists for a solution that
`
`allows for more movement.
`
`One proposed solution to get more movement was
`
`things like treadmill desks or bicycle desks. These are
`
`very complicated apparatuses and although these devices
`
`allowed for movement, they can be big, cumbersome, and
`
`expensive.
`
`Another proposed solution has been adjustable
`
`full-height desks, basically a large desk that goes up and
`
`10
`
`down to adjust to whatever height you want.
`
`11
`
`12
`
`Yet another solution has been adjustable- height
`
`keyboard and monitor attachments that bolt or otherwise,
`
`13
`
`you know, attach to a desk somehow and then the monitor and
`
`14
`
`15
`
`•
`
`the keyboard go up and down as you need.
`
`Finally we come to the solution that is at issue
`
`16
`
`here and this is products known as on-desk adjustable
`
`17
`
`sit-stand desks. They come in a variety of shapes, sizes,
`
`18
`
`and colors, but they generally all come preassembled and
`
`19
`
`require little or no setup. They're meant to be placed on
`
`20
`
`top of an existing desk instead of being used on their own,
`
`21
`
`and they convert in an existing desk to a sit-stand desk.
`
`22
`
`They're generally large enough to hold a monitor or two as
`
`23
`
`well as other office products such as staplers, tablets,
`
`24
`
`your coffee mug, whatever. They can be manually adjusted
`
`25
`
`from one height to another and they don't use electricity
`
`•
`
`Ace-Federal Reporters, Inc .
`
`202-347-3700
`
`
`
`•
`
`•
`
`7
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`to go up and down.
`
`On this last slide there's a short video and this
`
`is, I admit, a promotional video for Varidesk, the
`
`Complainant's product, but it's meant to show how the
`
`sit-stand desks are used.
`
`It doesn't get into a comparison
`
`with other desks or products and it doesn't discuss the
`
`patents at issue.
`
`(Whereupon a video is played.)
`
`MR. HESS:
`
`I apologize, your Honor, we're having
`
`a problem with the sound. Your Honor, if you have any
`
`questions on that I'd be happy to answer them.
`
`JUDGE BULLOCK: Thank you.
`
`MR. HESS: We also have a sample of our product
`
`as well as several of the Respondents' products in the back
`
`of the courtroom if you'd like to examine any of them
`
`throughout the course of the day.
`
`JUDGE BULLOCK: Okay. Thank you.
`
`MR. HESS: Thank you.
`
`JUDGE BULLOCK: Just a word on that. To the
`
`extent parties are going to be using physical exhibits,
`
`they must remain here at the Commission so that I can look
`
`at them or the commissioner.
`
`MR. HESS:
`
`I understand, your Honor.
`
`I didn't
`
`necessarily intend to refer to any, but they're here more
`
`if you would like to refer to them.
`
`•
`
`Ace-Federal Reporters, Inc .
`
`202-347-3700
`
`
`
`8
`
`•
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`JUDGE BULLOCK: Thank you.
`
`MR. HESS: Thank you. Now go into the claim
`
`construction?
`
`JUDGE BULLOCK: Okay. So let's go to the claim
`
`construction portion of the hearing.
`
`Just a reminder, each party with respect to each
`
`-- first of all, we'll go claim by claim and then each
`
`party has the opportunity for an initial argument and a
`
`reply argument, but after that we move on to the next claim
`
`10
`
`term.
`
`11
`
`I assume the parties have agreed to an order of
`
`12
`
`presentation?
`
`13
`
`MR. PABIS: If you'd like to go first, that's
`
`•
`
`14
`
`fine.
`
`15
`
`16
`
`17
`
`MR. HESS: Yes.
`
`MR. PABIS: Go ahead.
`
`JUDGE BULLOCK: So it will be the private parties
`
`18
`
`followed by the Staff, then?
`
`19
`
`20
`
`21
`
`MR. BEVERINA: Yes, your Honor.
`
`JUDGE BULLOCK: Okay. Thank you.
`
`MR. HESS: Your Honor, before we start I do want
`
`22
`
`to let you know that since we finished briefing the parties
`
`23
`
`have agreed on the construction of term 7 in the joint
`
`24
`
`claim construction chart. We all agree that the
`
`25
`
`construction proposed by the Staff is acceptable.
`
`•
`
`Ace-Federal Reporters, Inc .
`
`202-347-3700
`
`
`
`•
`
`•
`
`9
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`So we see there's no need to argue that term today. So it
`
`will just be six terms that are argued.
`
`JUDGE BULLOCK: Great. Good .
`
`MR. HESS: Your Honor, the claim terms at issue
`
`here are simple words with definitions that should be
`
`apparent to just about anyone.
`
`In most instances the claim
`
`construction arguments fall along the same general lines.
`
`Varidesk asserts that these simple terms should be
`
`construed according to their plain and ordinary meaning,
`
`10
`
`and the Staff for the most part agrees that the plain and
`
`11
`
`ordinary meaning should apply. The Staff generally
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`proposes constructions that involve a minor word change
`
`from Varidesk, but in each instance the Staff's proposed
`
`constructions are acceptable to Varidesk.
`
`Respondents, however, in just about every instance
`
`violate one of the fundamental rules of claim construction.
`
`They spend a lot of time going over minute details of a
`
`preferred embodiment and try to read those limitations from
`
`the preferred embodiment into the claims. The Federal
`
`Circuit has routinely rejected those arguments in the past
`
`and you should do so here today.
`
`There's a heavy presumption that claim terms
`
`should be given their plain and ordinary meaning and
`
`importing limitations into the claims from a preferred
`
`embodiment is inappropriate unless one of two exceptions
`
`•
`
`Ace-Federal Reporters, Inc .
`
`202-347-3700
`
`
`
`•
`
`•
`
`10
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`exists. First, if the patentee clearly acted as his own
`
`lexicographer and explicitly defined the term and, second,
`
`if the patentee clearly disavowed specific claim scope in
`
`prosecution.
`
`As you will see, neither of those
`
`exceptions apply here and the claim terms at issue should
`
`be given their plain and ordinary meaning. We'll go
`
`through the claim terms in the same order that they appear
`
`in the briefs and in the joint claim construction chart.
`
`10
`
`I'll start with the term "base. " The term "base"
`
`11
`
`appears in several phrases in the claims.
`
`12
`
`13
`
`14
`
`15
`
`16
`
`You see on this slide the wording of the overall phrase is
`
`slightly different, but generally the parties agree on all
`
`the meaning of all the words except for the word "base"
`
`in these claim phrases.
`
`Here, as with many other claim terms, Varidesk and
`
`17
`
`the Staff agree that the plain and ordinary meaning should
`
`18
`
`apply. Here, although there's a slight variation, the
`
`19
`
`20
`
`Staff's proposed construction is acceptable to Varidesk as
`
`well. A "base" is simply the structure that supports the
`
`21
`
`overall device.
`
`22
`
`23
`
`24
`
`25
`
`Respondents, however, try to limit the base to a
`
`platform or a work surface, in other words, something with
`
`a large surface area, but nothing in the claims, the
`
`specification, or the prosecution history indicates that
`
`••
`
`Ace-Federal Reporters, Inc.
`
`202-347-3700
`
`
`
`•
`
`•
`
`11
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`the term 11 base 11 should be so limited. Thus, the issue here
`
`is whether the base must be a platform or work surface.
`
`If we look at the claim language the answer is no.
`
`There's nothing in the plain and ordinary meaning of the
`
`term 11base" that suggests it must be a platform or work
`
`surface. Respondents have not argued otherwise. Instead
`
`Respondents focus on a figure in the provisional
`
`application that includes the term "base platform" to
`
`describe one of the structures therein, but that argument
`
`10
`
`fails for several reasons.
`
`11
`
`12
`
`First, as we explained in our brief, the
`
`specification of the patent at issue is what dictates the
`
`13
`
`claim construction, not the provisional application. But
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`even looking at the provisional application figure, here
`
`you see the key term "base platform'' is outlined in red.
`
`You can see that 11 base 11 does not mean "platform. " If it
`
`did the term "base platform" would be redundant and
`
`meaningless.
`
`Instead basic English grammar rules dictate
`
`that the word "base" modifies the word "platform. " Just
`
`like you see at the top of this figure, the term "desktop"
`
`modifies the word "platform. "
`
`It describes what type of
`
`platform it is. Thus, in this figure the base platform is
`
`the platform that serves as the base of the device, but it
`
`does not mean that "base" and "platform" are synonymous.
`
`If we look at the figures in the asserted patent,
`
`•
`
`Ace-Federal Reporters, Inc .
`
`202-347-3700
`
`
`
`•
`
`•
`
`12
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`for example, figures 2 or 14, it shows an underview and an
`
`overview of the one example from the patent. Here the term
`
`"base" includes a platform, which is identified as item 20,
`
`but it is not limited to the platform as the base also
`
`includes what we've referred to as the ski-like structures
`
`identified as 22 which are counterweights to prevent the
`
`device from tipping over. Why is that? Because in context
`
`the base supports the other components in the device and is
`
`9
`
`adapted to sit on an existing desk.
`
`10
`
`This understanding of the term "base" is confirmed
`
`11
`
`by looking at dependent claim 4 of the '809 Patent. Claim
`
`12
`
`4 states "The adjustable desk platform of claim 3 wherein
`
`13
`
`the base includes a counterweight. " In other words, claim
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`4 is limited to devices where the counterweight is part of
`
`the base, but by claim differentiation claims 1 and 3 are
`
`not.
`
`In their reply brief on page 11 the Respondents
`
`try to argue that claim 4 requires that a counterweight is
`
`added to the base as a separate component rather than being
`
`20
`
`part of the base by intentionally conflating the term
`
`21
`
`"base" and the term "lower platform."
`
`22
`
`I'm reading now from page 11 of the Respondent's
`
`23
`
`reply brief where they state in the second and third lines
`
`24
`
`that "The counterweights can be added to the base lower
`
`25
`
`platform. " They use the term "base lower platform"
`
`•
`
`Ace-Federal Reporters, Inc .
`
`202-347-3700
`
`
`
`•
`
`13
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`together and, contrary to their assertion, the patent never
`
`uses the term "base lower platform." Indeed the portion of
`
`the specification they cite to does not use that term.
`
`The Respondents go on in that same page then to
`
`state that "The specification of the
`
`'809 Patent refers to element 20 as the base or lower
`
`platform." Again, that's not correct. That does not
`
`appear in the '809 Patent. Nowhere does the '809 Patent
`
`refer to item 20 as the base.
`
`10
`
`Item 20 in the drawing we looked at before is a platform.
`
`11
`
`It is part of the base, but it is not the base.
`
`12
`
`In addition to claim 4 we have the same concept
`
`13
`
`here in the summary of the invention. In the '809 Patent
`
`14
`
`and in all the patents the summary of the invention
`
`•
`
`15
`
`describes several embodiments, and in this one embodiment
`
`16
`
`they describe an embodiment where the base includes a
`
`17
`
`counterweight, in other words, the ski-like structures that
`
`18
`
`we looked at earlier, but it doesn't define the base as
`
`19
`
`being a platform. Both the summary of the invention and
`
`20
`
`claim 4 describe embodiments where the base includes a
`
`21
`
`counterweight, not that the counterweight is attached to
`
`22
`
`the base as asserted by the Respondents.
`
`23
`
`24
`
`Respondents also point to the prosecution history
`
`of the '703 Patent. Here an excerpt from an amendment in
`
`25
`
`that prosecution. The prosecution history of the '703
`
`•
`
`Ace-Federal Reporters, Inc .
`
`202-347-3700
`
`
`
`•
`
`•
`
`14
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`Patent also indicates that "base" should not be interpreted
`
`to mean a platform or a work surface.
`
`In this amendment the patentee specifically
`
`deleted the words "A lower platform defining a
`
`substantially planar work surface" and inserted the words
`
`"a base located beneath the upper platform. " Notably, this
`
`amendment was not made in response to a rejection
`
`concerning the term "lower platform." There was no
`
`indication by the patentee or by the examiner that "base"
`
`and "lower platform" mean the same thing.
`
`In fact, if they
`
`did mean the same thing this amendment would have been
`
`unnecessary.
`
`Contrary to the Respondents' arguments, this
`
`amendment does not mandate that the construction of the
`
`term "base" requires the base to be a platform or work
`
`surface.
`
`The rest of the Respondents' arguments are also
`
`easily dismissed. First, the Respondents count the number
`
`of times that the term "lower platform" appears in the
`
`specification and argue that the term "base" should be
`
`21
`
`limited to platform due to the number of times that these
`
`22
`
`words appear in the specification. But as in the Gillette
`
`23
`
`24
`
`25
`
`case we cite in our brief, that argument should be rejected
`
`because there was no explicit disavowal of claim scope.
`
`Next, the Respondents argue that claim 5 of the
`
`•
`
`Ace-Federal Reporters, Inc .
`
`202-347-3700
`
`
`
`•
`
`•
`
`15
`
`l
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`'703 Patent supports their argument because claim 5
`
`includes the term "lower platform" and depends from claim 1
`
`which includes the term "base," but as Respondents note in
`
`a footnote, the patentee disclaimed claim 5 due to lack of
`
`an antecedent basis for the term "lower platform. "
`
`That claim is not even at issue here and it was disclaimed
`
`by the patentee a while ago. Thus any alleged relationship
`
`between the claims is irrelevant.
`
`The Respondents also try to argue that the term
`
`10
`
`"base" does not include the term "feet. " They conflate
`
`11
`
`"feet" and "legs, " but this argument is not really a claim
`
`12
`
`construction argument.
`
`It's actually an infringement
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`argument. The Respondents' products, like Varidesk
`
`products, like many products, have little rubber feet on
`
`the bottom of them so when you put them on a desk they
`
`don't scratch the desktop.
`
`The Federal Circuit has repeatedly stated that
`
`it's an error of law to consider the accused device as
`
`extrinsic evidence during claim construction, and that's
`
`20
`
`exactly what the Respondents are asking you to do with this
`
`21
`
`argument.
`
`22
`
`23
`
`24
`
`25
`
`Finally, the Respondents' argument regarding the
`
`prosecution history of the '853 parent application should
`
`be completely disregarded.
`
`It does not even relate to the
`
`claim language at issue and in their reply brief they did
`
`•
`
`Ace-Federal Reporters, Inc.
`
`202-347-3700
`
`
`
`•
`
`•
`
`16
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`not correct or address Varidesk's statement on that .
`
`As noted very clearly in the Staff's brief, the
`
`relevant question for construing the claim term is whether
`
`the base claimed in all the claims of the asserted patents
`
`must be a platform based on the claims, the specification,
`
`and the prosecution history. As agreed upon by Varidesk
`
`and the Staff, the answer is no. Although the base can be
`
`a platform and the base can include a platform, there is
`
`nothing that requires the base to be a platform.
`
`Thank you.
`
`JUDGE BULLOCK: Thank you.
`
`MR. PABIS: Again, your Honor, Ron Pabis on behalf
`
`13
`
`of Respondents.
`
`I'll be addressing the "base" phrase,
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`which, just to be clear, is not just the term "base, " but
`
`there's a lot more to the "base" phrase in each of the
`
`disputed claims.
`
`We have our slides printed out if you would like
`
`them.
`
`I can hand those out if that would be okay.
`
`JUDGE BULLOCK: That would be great. Thank you.
`
`MR. HESS:
`
`I apologize.
`
`I forgot to hand ours
`
`21
`
`out.
`
`22
`
`23
`
`24
`
`25
`
`JUDGE BULLOCK: Let's go off the record for a
`
`moment while the slides are handed out.
`
`(Short interruption.)
`
`JUDGE BULLOCK: Back on the record. Please
`
`•
`
`Ace-Federal Reporters, Inc .
`
`202-347-3700
`
`
`
`17
`
`•
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`proceed.
`
`MR. PABIS: Thank you.
`
`Your Honor, the issue with the term "base, " the
`
`"base" phrase, we call it for short the "base" phrase is
`
`the limited disclosure that was made by the patentee with
`
`regard to that phrase and, frankly, with regard to several
`
`of the phrases that we're here to talk about, and of
`
`course, the disclosure is the quid pro quo for the grant of
`
`exclusivity. And when we're construing the claims the
`
`patentee should not be able to obtain a patent on what has
`
`not been disclosed to the public, and what we'll see is
`
`12
`
`that the original disclosure was limited, very limited to a
`
`13
`
`14
`
`15
`
`16
`
`mechanical component with different arms and platforms
`
`connected in a certain way. That was the disclosure, that
`
`maintained the disclosure for years, and it's that
`
`disclosure which should govern the way that we construe
`
`•
`
`17
`
`these claims.
`
`18
`
`So I want to talk about the "base" phrase first .
`
`19
`
`The "base" phrase appears in several of the claims, and
`
`20
`
`it's not just "base." It's "a base located beneath the
`
`21
`
`upper platform, the base defining a bottom surface without
`
`22
`
`23
`
`24
`
`25
`
`legs that is adapted to sit on an existing desk. " That's a
`
`lot of words, it's a lot more than just "base, " and
`
`Varidesk is correct, we are disputing this term because
`
`Varidesk is trying to read that phrase on a structure that
`
`•
`
`Ace-Federal Reporters, Inc .
`
`202-347-3700
`
`
`
`•
`
`•
`
`1 8
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`has feet instead of a base platform.
`
`Now, we know from the Federal Circuit in the
`
`Wilson Sporting Goods case that while the Court shouldn't
`
`prejudice the process by construing claims to include or
`
`exclude a product, it's appropriate to consider the accused
`
`product in the claim construction process to give
`
`meaningful context to claim construction.
`
`8
`
`So why are we here? We're here because we have a
`
`9
`
`dispute about this term. We believe the disclosure limits
`
`10
`
`it to the platform we are accused. Our products have no
`
`11
`
`platform but instead these feet which the arms are attached
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`to. That's why we're here, that why it matters. So when
`
`Varidesk says the claim doesn't need construction, we have
`
`a fundamental dispute under 02 Micro it should be
`
`construed.
`
`Here are our constructions. Varidesk says plain
`
`and ordinary meaning . Ours is "a lower platform or work
`
`surface beneath the upper platform that is adapted to sit
`
`on an existing desk. " I'll get to how we get there. The
`
`Staff's construction from our perspective doesn't do much
`
`21
`
`but change a couple words in the claims and it doesn't give
`
`22
`
`23
`
`24
`
`25
`
`any additional clarity to the term -- to the "base" phrase.
`
`Okay. So before we get into the extrinsic
`
`evidence there are two overarching issues that are relevant
`
`to most of the terms that are being disputed that we'd like
`
`•
`
`Ace-Federal Reporters, Inc.
`
`202-347-3700
`
`
`
`19
`
`•
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`to address, and we think Varidesk is incorrect and
`
`overstating the law.
`
`That starts with this concept that counsel just reiterated,
`
`the concept that without either lexicography or clear
`
`disavowal the Court should give a claim term its broadest
`
`reading.
`
`What you see on slide 6 is from the reply brief --
`
`Varidesk's reply brief at page 5 and that was the concept
`
`that was just explained to you, and that relies on the
`
`10
`
`Thorner v . Sony case. The Thorner v. Sony case is not an
`
`11
`
`accurate statement of the post-Phillips law on claim
`
`12
`
`construction.
`
`13
`
`14
`
`15
`
`16
`
`If you shepardize that Thorner case you see that it was
`
`recognized with disapproval in the Trustee's case by the
`
`Federal Circuit subsequently, and what the Federal Circuit
`
`said in Trustees we have on slide 8 and this is talking
`
`•
`
`17
`
`about Thorner.
`
`18
`
`19
`
`20
`
`The patentee in that case made the same argument
`
`that was just made to you about the clear disavowal or
`
`lexicography. The Federal Circuit specifically expressly
`
`21
`
`said our case law does not require explicit redefinition or
`
`22
`
`23
`
`24
`
`25
`
`disavowal.
`
`Indeed our en bane Phillips opinion rejected
`
`this very approach.
`
`They're talking about Thorner here, the case that
`
`Varidesk relies on. That approach, that clear disavowal or
`
`•
`
`Ace-Federal Reporters, Inc .
`
`202-347-3700
`
`
`
`•
`
`20
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`lexicography approach that Thorner sets forth is really the
`
`old Texas Digital approach to claim construction and not
`
`the Phillips approach to claim construction, and that type
`
`of approach the Federal Circuit has said improperly
`
`restricts the role of the specification. Of course, as
`
`your Honor well knows, you need to look at the
`
`specification and that the claim language that most
`
`naturally aligns with the description in the specification
`
`is the correct construction. We can't ignore the
`
`specification. That's overarching point 1 .
`
`Overarching point 2, which we disagree with,
`
`relates to reliance on earlier specifications. All right.
`
`I'm sure your Honor saw in our briefs we talk a lot about
`
`14
`
`the provisional, we talk a lot about the parent and the
`
`•
`
`15
`
`16
`
`17
`
`18
`
`patents that came before the specifications.
`
`Varidesk
`
`takes issue with that and says the provisional application
`
`does not help
`
`Respondents -- we just heard this again this morning
`
`19
`
`because it is the specification of the patents-in-suit that
`
`20
`
`control, and they cite to the Sun Pharma case for that
`
`21
`
`proposition.
`
`22
`
`23
`
`24
`
`25
`
`The Sun Pharma case was an obviousness- type
`
`double patenting case distinguishable from what we have
`
`here in two ways. One, they weren't really talking about
`
`claim construction. There is some dicta about claim
`
`•
`
`Ace-Federal Reporters, Inc .
`
`202-347-3700
`
`
`
`21
`
`•
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`construction. That's distinguishable point No. 1. No. 2,
`
`unlike the case here, the earlier specification that was
`
`being discussed in this case wasn't incorporated by
`
`reference into the specification that was at issue and that
`
`the court was looking at.
`
`Here there's a long history, there's a long
`
`history. On slide 13 and in our briefs we presented the
`
`Court with the family tree of these patents. These patents
`
`have been in prosecution since 2012 and what you'll see is
`
`10
`
`that in that prosecution it started with a very specific
`
`11
`
`disclosure in 2012. And from that simple disclosure
`
`12
`
`Varidesk has basically gotten hundreds of claims, hundreds
`
`13
`
`of claims from that one simple disclosure of a combination
`
`14
`
`15
`
`•
`
`of known mechanical components, and as time progressed from
`
`2012 until now -- and there are still applications pending
`
`16
`
`-- the words become a little bit more amorphous. So as
`
`17
`
`we' 11 see, "base platform" turns to the "base" phrase that
`
`18
`
`we have, "pins" changes to "anchors, " and so on and so on.
`
`19
`
`The claim language becomes more amorphous.
`
`20
`
`But what's important here is that we start with
`
`21
`
`the provisional and the provisional, as you see on slide
`
`22
`
`14, is specifically incorporated by reference into every
`
`23
`
`other patent. It says that "The entire contents of the
`
`24
`
`25
`
`foregoing applications are incorporated herein by
`
`references."
`
`•
`
`Ace-Federal Reporters, Inc.
`
`202-347-3700
`
`
`
`•
`
`•
`
`22
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`Why is that important? Because they are now part
`
`of the specifications that we're looking at, and that is
`
`what the Trustee's case held and the Trustee's case, again,
`
`we were looking at defined bit sequence. The court looked
`
`back to the earlier specifications because they were
`
`incorporated by reference and found that the provisional
`
`applications incorporated by reference are effectively part
`
`of the specification as though it was explicitly contained
`
`9
`
`therein.
`
`10
`
`Okay. So that's the other overarching issue.
`
`It
`
`11
`
`is appropriate in this case for us to look at the
`
`12
`
`specification of the provisional and of the parent which
`
`13
`
`are -- or have been incorporated by reference.
`
`14
`
`15
`
`16
`
`17
`
`18
`
`The other important thing here is that Varidesk
`
`has claimed priority to those earlier applications for the
`
`claims that have the terms that we're talking about. So
`
`what they're saying is those -- that early provisional
`
`application in May of 2012 that provides the support for
`
`19
`
`the "base" phrase, that supplies the support for the
`
`20
`
`"anchor" phrase that we'll get to later.
`
`21
`
`So those are the two overarching issues we
`
`22
`
`disagree with Varidesk on. All right. One, it's
`
`23
`
`appropriate to look at the provisional and, two, you don't
`
`24
`
`have to have a clear disavowal or lexicography. You
`
`25
`
`construe the claims in view of the specification.
`
`•
`
`Ace-Federal Reporters, Inc .
`
`202-347-3700
`
`
`
`23
`
`•
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`We start with the provisional in 2012.
`
`I'm sorry. These first two terms of our six are going to
`
`take a little bit of time.
`
`I think we'll speed up as we
`
`get through this.
`
`I just want to warn you about that.
`
`Sorry.
`
`If you start with the provisional in 2012, the
`
`provisional discloses "a base platform. " When they went to
`
`the Patent Office and they said this is our invention, on
`
`slide 17 you see the figure in the provisional, they call
`
`10
`
`this a base platform.
`
`11
`
`12
`
`Now, Varidesk counsel said, well, that shows that
`
`11base 11 is something different from "platform." Well,
`
`13
`
`what's happening here is they're distinguishing the base
`
`14
`
`platform from the desktop platform. The disclosure was an
`
`•
`
`15
`
`16
`
`adjustable desk that had an upper platform, a lower
`
`platform.
`
`17
`
`These things right here, these feet-like structures are
`
`18
`
`19
`
`mounting brackets and arms, and then we have mounting
`
`brackets on the top too and then there is a method or an
`
`20
`
`apparatus to lock the upper platform into place. The
`
`21
`
`disclosure is as shown on slide 17, upper platform, lower
`
`22
`
`platform.
`
`23
`
`24
`
`25
`
`What's important too -- and we'll see this later
`
`in a little bit -- is these feet-like structures, they're a
`
`different element of the claim. These are the upper
`
`•
`
`Ace-Federal Reporters, Inc.
`
`202-347-3700
`
`
`
`•
`
`•
`
`24
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`mounting brackets.
`
`This is essentially what Varidesk is trying to read the
`
`base on in the accused products.
`
`Okay. The description in the provisional
`
`repeatedly and consistently states that the invention has a
`
`base platform and that the base platform is intended to set
`
`on an existing worker's desk. The original claim of the
`
`provisional is consistent. It says "A base having a lower
`
`platform."
`
`10
`
`Now, Varidesk and the Staff have said, well, that
`
`11
`
`means a base is something different than a platform. The
`
`12
`
`disclosure is a base that has a lower platform, a base that
`
`13
`
`is a platform as opposed to some other undisclos
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
