trials@uspto.gov
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`571-272-7822
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`IPR2016-01000, Paper No. 29
`IPR2016-01003, Paper No. 28
`July 18, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`PACKERS PLUS ENERGY SERVICES INC.,
`Petitioner,
`
`v.
`
`BAKER HUGHES OILFIELD OPERATIONS, INC.,
`Patent Owner.
`______________
`
`Cases
`IPR2016-01000 (Patent 9,038,656 B2)
`IPR 2016-01003 (Patent 8,261,761 B2)
`______________
`
`Record of Oral Hearing
`Oral Hearing Held: Monday, June 26, 2017
`
`
`
`Before: MITCHELL G. WEATHERLY, BEVERLY M. BUNTING,
`and ROBERT L. KINDER, Administrative Patent Judges
`
`The above-entitled matter came on for hearing on Monday, June 26, 2017,
`at the U.S. Patent and Trademark Office, 600 Dulany Street, Alexandria,
`Virginia in Courtroom B, at 10:00 a.m.
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`571-272-7822
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`IPR2016-01000, Paper No. 29
`IPR2016-01003, Paper No. 28
`July 18, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`PACKERS PLUS ENERGY SERVICES INC.,
`Petitioner,
`
`v.
`
`BAKER HUGHES OILFIELD OPERATIONS, INC.,
`Patent Owner.
`______________
`
`Cases
`IPR2016-01000 (Patent 9,038,656 B2)
`IPR 2016-01003 (Patent 8,261,761 B2)
`______________
`
`Record of Oral Hearing
`Oral Hearing Held: Monday, June 26, 2017
`
`
`
`Before: MITCHELL G. WEATHERLY, BEVERLY M. BUNTING,
`and ROBERT L. KINDER, Administrative Patent Judges
`
`The above-entitled matter came on for hearing on Monday, June 26, 2017,
`at the U.S. Patent and Trademark Office, 600 Dulany Street, Alexandria,
`Virginia in Courtroom B, at 10:00 a.m.
`
`
`
`
`
`
`
`IPR2016-01000 (Patent 9,038,656 B2)
`IPR2016-01003 (Patent 8,261,761 B2)
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`
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`A P P E A R A N C E S
`
`
`ON BEHALF OF THE PETITIONER:
`
`SCOTT A. MCKEOWN, ESQUIRE
`CHRISTOPHER RICCIUTI, ESQUIRE
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`1940 Duke Street
`Alexandria, VA 22314
`(703) 413-3000
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`MARK T. GARRETT, ESQUIRE
`EAGLE ROBINSON, ESQUIRE
`TOM OWENS, ESQUIRE
`NORTON ROSE FULBRIGHT US LLP
`98 San Jacinto Boulevard
`Suite 1100
`Austin, TX 78701-4255
`(512) 474-5201
`
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` P R O C E E D I N G S
` JUDGE BUNTING: Good morning. Please be seated.
`We'll get our computers going here.
` Okay. This is a final hearing in IPR2016-01000
`and IPR2016-01003 involving U.S. Patent Number 8,261,761. In
`both cases, the petitioner is Packers Plus Energy Services
`and patent owner is Baker Hughes Oilfield Operations LLC.
` I'm Judge Bunting, and I'll be presiding today.
`Alongside me to my left is Judge Kinder, and to my right is
`Judge Weatherly.
` May I have the appearances of counsel beginning
`with petitioner. Please approach the microphone and say your
`name.
` MR. MCKEOWN: Good morning, your Honor. Scott
`McKeown and Chris Ricciuti of Oblon for Petitioner Packers
`Plus.
` JUDGE BUNTING: Thank you. And who will be making
`the presentation for petitioner?
` MR. MCKEOWN: I will, Scott McKeown.
` JUDGE BUNTING: Thank you. In both cases?
` MR. MCKEOWN: Yes.
` JUDGE BUNTING: Thank you.
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` And for patent owner?
` MR. GARRETT: Good morning, your Honor. Mark
`Garrett. With me today is Eagle Robinson and Tom Owens for
`patent owner. Also with me today is Andre Porter of Baker
`Hughes. He's in-house counsel. Excuse me. And Eagle will
`be making the arguments in both cases.
` JUDGE BUNTING: All right. Thank you very much.
` And I'd like to just go over how we're going to
`proceed today. Per the June 6th, 2017 order, the parties
`will first present arguments for IPR2016-01000, and each
`party will have 20 minutes, for a total of 40 minutes.
`Thereafter, the parties will present their arguments in
`IPR2016-01003, again having 20 minutes, with a total of
`40 minutes.
` Petitioner, you have the burden, so you will go
`first, followed by patent owner, who will argue its
`opposition. And, petitioner, you may reserve rebuttal time
`to patent owner's presentation.
` If you're using the Elmo, please explain carefully
`what you're referring to. For example, if you refer to a
`demonstrative on the screen, state the slide number. If
`referring to the record, state the exhibit and page number
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`clearly. This is important so that we have clarity in the
`transcript.
` I'm going to use the clock on the hearing room
`wall to time you, and we'll give you a five-minute warning at
`the end of your argument time.
` You're reminded that the hearing is open to the
`public and a full transcript of each hearing will be made
`part of the record.
` Before we begin, I'd like to address an email
`correspondence with the Board. In this email, petitioner
`expressed a concern with new arguments in patent owner's
`demonstratives, specifically slides 19 through 26 and 40 to
`47.
` The panel has reviewed the submissions of patent
`owner and determined that liberties were taken with the rules
`on the use of demonstratives. We also note that petitioner
`did not submit demonstratives.
` At this time, patent owner is not authorized to
`file their demonstratives.
` And we also note that petitioner filed objections
`to patent owner's unfiled demonstratives. Therefore, this paper will be
`expunged because it is not part of the record.
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` While patent owner may refer to its demonstratives
`during the hearing, the demonstratives will not be part of
`the record of the hearing. As both parties should be aware,
`the demonstratives used in the hearing do not create an
`opportunity to introduce new issues in the case.
` So, as part of your individual presentation, you
`may point out new issues that you believe the other party has
`raised, but counsel is not to interrupt the other party's
`arguments with standing objections.
` Does either side have any questions? Beginning
`with petitioner.
` MR. MCKEOWN: No, your Honor.
` JUDGE BUNTING: And, patent owner, do you have any
`questions?
` MR. ROBINSON: No, your Honor.
` JUDGE BUNTING: Thank you.
` Petitioner, you may begin with your arguments in
`IPR2016-01000 when you're ready to present, and you will have
`20 minutes. Will you be reserving any rebuttal time?
` MR. MCKEOWN: Yes, I will, your Honor, 10 minutes.
` JUDGE BUNTING: Okay. Thank you. You may proceed
`when you're ready.
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` MR. MCKEOWN: Thank you, your Honor. May it
`please the Board. Just quickly, I know that you've reviewed
`the demonstratives, but just so the record is clear, and to
`reiterate, slides 19 through 26 and 40 through 47 discuss a
`case In Re Wands that is nowhere referenced in the briefing,
`at least in the patent owner's briefing, and outlines
`additional factors that are also nowhere discussed in the
`briefing. And, in fact, when their witness was questioned at
`deposition, he confirmed that he had never been instructed on
`this case or any of its factors. So, just so --
` JUDGE KINDER: Mr. McKeown, is it your position
`that just because they don't mention In Re Wands, the case
`citation specifically, is that fatal to their entire case?
` MR. MCKEOWN: Because they don't present the
`analysis in -- in any kind of coherent fashion, the fact that
`they may not have referenced the name of the case, that's not
`what I'm arguing. For example, the enumerated factors
`require a certain analysis, you know, what is undue
`experimentation, what is the level of skill, how much skill
`would it take to implement the structure given the breadth of
`the claims, et cetera. None of that is in the briefing.
` You can certainly do a keyword search and find
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`undue experimentation, but there's no analysis as to what
`that means, how much experimentation is typically done in the
`art, et cetera, so that's what I'm talking about.
` So, just getting into the issues, the claim here
`is fairly simple. Three elements: A restriction engager, a
`restriction, and a counter, which, in layman's terms, is sort
`of -- or I should say in terms of the art, is a ball that is
`dropped down a well bore; there's a restriction to seat that
`ball in some circumstances; and a counter by which the ball
`is allowed to pass for a certain number of times, and this is
`the way you can seal off certain sections of a well bore to
`stimulate certain zones.
` As to those three elements, and specifically, I
`guess, we're referencing claim 1 of the '656, the patentee
`does not dispute that Howell discloses each and every one of
`these elements. Instead, what they've argued is that, well,
`Howell is not enabled and the counter indexing mechanisms of
`these claims are means plus function claims.
` JUDGE BUNTING: So, how would you construe the
`term "counter"?
` MR. MCKEOWN: As an indexing mechanism, a slotted
`indexing mechanism, because that is what's shown in not only
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`the '656 reference but Howell, the 1012 exhib -- or excuse
`me -- the 1014 exhibit, the 1016 exhibit, the 1018 exhibit.
`Just like the term "restriction," you ask someone what a
`restriction is, they'll say, "Well, it depends what you want
`to restrict," and sort of that's how we've gotten to this
`means plus function argument is, well, a counter is a
`functional word.
` But in the well bore arts, everybody knows what a
`restriction is; everybody knows what a restriction engager
`is; everybody knows what a counter is; it's an indexing
`mechanism. And, so, the exhibits we have presented in our
`reply brief, I think, bear that out. As long ago as 1999,
`Schlumberger patent's directed to a counter indexing
`mechanism.
` JUDGE BUNTING: So, what structure is included in
`an indexing mechanism?
` MR. MCKEOWN: It is a -- let me give you --
`specifically, I think we pointed this out at the very end of
`our reply brief, but I think we call it a slotted indexing
`mechanism with a tab or lug that moves through a plurality of
`positions.
` JUDGE BUNTING: Is there any difference between a
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`counter or a counter mechanism or an indexing mechanism?
` MR. MCKEOWN: An indexing mechanism is the
`underlying structure. The counting part of it
`is more the application or what you're using the
`indexing for. So, indexing mechanisms, as we pointed out,
`are in Howell, are in references that go back, you know,
`again, to 1999, so that indexing mechanisms were well-known
`to do a variety of things. And what they're doing is saying,
`"Well, we're using it for counting," which Howell shows, as
`well. So that --
` JUDGE WEATHERLY: So, if I understand your
`position correctly, and please correct me if I have a
`misunderstanding, is that skilled artisans know what the word
`"counter" -- the structures that a counter refers to, and
`your evidence for that is a series of prior art references.
`You rattled them off and I didn't -- it was a little too
`quick for me to --
` MR. MCKEOWN: Sorry about that.
` JUDGE WEATHERLY: -- to note them down. But do
`you have any testimony on that point or is it simply the
`presence of the word "counter" and the way it's used in these
`prior art references that is your evidence?
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` MR. MCKEOWN: Well, what we've said is "counting"
`and "indexing" were used synonymously. In fact, in the claim
`itself, claim 1, "counting" and "indexing" are sort of used
`interchangeably. And what we've said is, well, if you look
`at the art, going back 10, 15 years, "counting," "indexing"
`was used synonymously to refer to a certain class of
`mechanical structures.
` JUDGE WEATHERLY: My question is really very
`specific though, and it's really all about evidence. And,
`so, what I'm trying to get in a kind of a nutshell from you
`is what -- is your description of the character of the
`evidence that you're using to support your argument, whether
`it is disclosures in prior art references or alone, which I
`understand to be at least some of the evidence that you're
`marshalling to support your proposition, but I'm, also -- if
`there is any expert testimony that you've proffered, I'd
`like to know what that is.
` MR. MCKEOWN: Sure. I think you just answered
`your question. Yes, obviously, we're relying on the evidence
`of record. That's Exhibit 1014, 1016, 1018, Howell, the '656
`patent itself all use the term "indexing" and "counting"
`synonymously. But in terms of testimonial evidence, I think
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`if you look at slide 5, which is the patentee's
`demonstrative, right in the middle of that slide, you'll see
`an exchange that was back and forth with our witness, which
`is, "Well, what is a counter?" And when it was asked in the
`abstract, the expert said, "Well, depends what you want to
`count." But that third bullet point down there, which is
`specific to well bore --
` JUDGE WEATHERLY: I don't think it is slide 5.
` MR. MCKEOWN: Slide 7. Excuse me. So, the third
`bullet point down there on that slide is there are different
`indexing devices on trucks that pump things down the hole
`that count. So, that's testimonial evidence that indexing
`and counting in the well bore industry are synonymous and
`everyone knew what those mechanisms were. So --
` JUDGE BUNTING: And your
`expert testified to that?
` MR. MCKEOWN: That's correct. This was on
`cross-examination, your Honor.
` JUDGE BUNTING: Okay.
` MR. MCKEOWN: And I believe he's also -- in his
`direct testimony, you can find similar statements, but I
`don't have those at my fingertips.
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` JUDGE KINDER: Counsel, what's your best exhibit
`and best citation for "counter" as tying it to a structure?
`I looked at some of the -- I looked at all of the exhibits
`you submitted, and there is some question -- it seems like
`"counting" is being used in a verb context to describe what a
`certain structure may be performing, but to make this a
`recognized structure, what's your best -- out of those three,
`which one is your best? Can you give us the cite?
` MR. MCKEOWN: Of the reference?
` JUDGE KINDER: Yeah, out of 10, 14, 16, and 18.
` MR. MCKEOWN: Well, again, counting is the
`application of the indexer. So, when you're indexing and
`counting and you're using that synonymously, you know, that's
`where we've sort of presented our evidence and
`testimony that, well, that's what one of skill in the art
`would understand.
` And, again, it gets back to the claims. What's a
`restriction? Well, that's functional. You know, how
`is that not a means plus function term, yet, counter is? The
`same theory would apply. But, you know, just looking at the
`exhibits, 1018, I think, is worth bearing out that, you know,
`this is Baker Hughes, the patent owner, in a patent filed two
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`months after this one, at column 3, lines 11 through 17,
`talking about a counter and an indexer, which also happens to
`be a J-slot. And you'll notice in all of these references, a
`J-slot is used in the same context as a counter.
` The Exhibit 1014, we've cited to column 1, lines
`46 through 65, figure 6, which shows a continuous J-slot.
`Exhibit 1016, which was another Schlumberger reference, in
`the background, which I think is -- is noteworthy, they talk
`about counter and indexing mechanisms as being J-slots.
` So, this is evidence of record. It's
`evidence that has not been disputed. The burden here is on
`the patent owner to prove that these claims -- or to
`overcome, I should say, the presumption that these claims do
`not recite means plus function language because they don't --
`because they don't say, "means for."
` So, in order to overcome that presumption, you
`have to say more than, well, the counter is functional or the
`"counter" term is functional, when, in fact, the art shows
`that counters were known as indexing mechanisms.
` So, this -- this evidence has not been addressed.
`Instead, what they've said is, well, these reply
`exhibits, they don't show a counter. Well, they're not
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`proffered for that. They're proffered to show that in the
`art, it was known that counting and indexing mechanisms were
`synonymous. And the record is silent on that. And where
`there's a presumption for the patentee to overcome and they
`don't address that evidence, they can't win.
` JUDGE BUNTING: Counsel, your ten minutes is about
`up, but I know we've asked a lot of questions, so we'll give
`you another two minutes, and then we will --
` MR. MCKEOWN: Okay. Thank you, your Honor.
` JUDGE BUNTING: -- add two minutes to patent
`owner's.
` MR. MCKEOWN: And if I go 15 minutes, that's fine
`by me, as well.
` So, let me just switch quickly to the enablement
`issue. As I've said, patentee bears the burden on means plus
`function. Patentee also bears the burden on enablement. I
`mentioned at the outset of the argument that in order to have
`a proper analysis of non-enablement, you need, at a minimum,
`to address the legal requirements, which is In Re Wands and
`the various factors.
` JUDGE KINDER: Can I stop you there. I'm sorry.
`You said patentee has the burden on means plus function --
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` MR. MCKEOWN: That's correct.
` JUDGE KINDER: -- to establish that it --
` MR. MCKEOWN: Well, patentee has the burden for a
`claim does not -- that does not recite means for. There is a
`presumption that that claim is not means plus function. So,
`patentee has the burden --
` JUDGE KINDER: How does that translate with our
`regulation that requires that the petitioner actually
`identify all the limitations in means plus function?
` MR. MCKEOWN: Well, I guess --
` JUDGE KINDER: You're aware of our regulation,
`right, that says --
` MR. MCKEOWN: Yes, but in order to get to that
`regulation, I think you would -- you would have to at least
`get past the threshold issue of whether the claim is means
`plus function or not. We were saying it is not.
` JUDGE KINDER: So, you're saying in the situations
`where a nonce word is used, as that term is defined in Citrix
`v. Williamson or the Williamson case, the petitioner would
`never have an initial burden to identify those nonce words?
` MR. MCKEOWN: No, I'm not saying that. I guess
`what I'm saying is we don't agree that it's a nonce word
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`based upon the evidence of word that shows that the structure
`was readily identified as a counter in the art.
` JUDGE KINDER: I'm just talking about the burden
`here, the initial burden.
` MR. MCKEOWN: Well, the initial burden, if
`the claim said, "means for," then, yes, it would be our
`burden to identify structure, but when the claim does not
`say, "means for," there is a presumption that it is not a
`means plus function claim and, therefore, until that
`presumption is overcome, we would not have a duty to address
`that.
` JUDGE KINDER: Yeah, I don't know if that's clear
`in our cases as far as who has that burden when it's not a
`specific means for, but certainly the regulation requires the
`petitioner -- places a burden on the petitioner to identify
`anything in 112 paragraph 6, so that's why I was asking.
` MR. MCKEOWN: Right.
` JUDGE KINDER: You can go ahead with the
`enablement.
` MR. MCKEOWN: I think, also, we've done that.
`Whether or not this claim construes means plus function or
`otherwise, we've provided a mapping in the back of our
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`responses as to how it would meet those features, in any
`event.
` But let me get back to Howell and enablement. As
`I said, the Wands factors have not been identified. And a
`further legal error is looking at figure 6B of Howell as the
`patent owner's expert has and treating it as if it were drawn
`to scale as if the proportions were manufacturing blueprints.
` And you can look at slide 15 of patent owner's
`demonstratives for this. You've got a dimension in there,
`"L," which is length of the slots. You've got "V," which are
`relative positions of the vertices and angles alpha that --
`they are nowhere described in Howell. So --
` JUDGE KINDER: Go ahead.
` JUDGE BUNTING: Okay. I think we're both
`intrigued by figure 6B because I think your expert testified
`that there's errors in figure 6B.
` MR. MCKEOWN: There was a -- yeah, I think the
`patent describes stop positions and start positions sort of
`in reverse order, and I think both experts agree --
` JUDGE BUNTING: So, your expert,
`therefore, spent time studying figure 6B. But you're also
`saying that figure 6B isn't drawn to scale and does not
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`provide one of skill in the art -- would not enable someone
`to build or manufacture the invention or what's your
`testimony?
` MR. MCKEOWN: Well, yeah, that's the patent
`owner's argument --
` JUDGE BUNTING: The patent owner's. Okay.
` MR. MCKEOWN: -- that it's not enabled. And it's
`not -- you know, it's not petitioner saying, that's Howell
`saying that. If you look at the first paragraph of the
`specification, it states these -- aside from this being sort
`of black letter patent law, that unless there's a statement
`that figures are drawn to scale, they are deemed not to be.
`There's a paragraph in that specification saying, well, not
`only are they not drawn to scale, but they're exaggerated in
`some places.
` And, so, all of the analysis of this figure is
`based upon the specific lengths and the specific proportional
`angles, which is just improper as a matter of law. You can
`look at the patent owner's response at page 15 at the very
`top, which explains that their analysis is based on the
`relative positions of the vertices, the lengths of the slots,
`et cetera. So --
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` JUDGE BUNTING: So, what is the testimony of your
`expert regarding Howell and how the inner
`sleeve rotates with respect to the outer casing? In other
`words, what structure is causing that rotation in a
`particular direction?
` MR. MCKEOWN: The expert declaration, I think,
`explains that as the pressure is applied, the sleeve rotates
`about that sort of zigzag pattern.
` JUDGE KINDER: I'm sorry. What shows
`that?
` MR. MCKEOWN: The Medley declaration.
` JUDGE KINDER: Can you point us towards that?
` MR. MCKEOWN: Sure. I don't want to paraphrase
`his testimony but let me get you a citation here. You can
`look at, for example, paragraph 45, also page 39. There's an
`illustration of the slot itself or at least one of the slots.
`Figure 11 is a different slot.
` JUDGE BUNTING: And is the slot in figure 6B, is
`that -- would that be considered by one of skill in the art a
`J-slot?
` MR. MCKEOWN: No, it would not, your Honor.
`There's also the slot on page 35 of that declaration, which
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`is the slot that's discussed in the patent owner's briefing.
`But that is not a J-slot either. It's -- Howell provided
`these as teaching examples. He also mentioned a J-slot,
`which was never analyzed by the patent owner's expert, along
`with a host of other issues in the specification, whether it
`was via start and stop positions, angles, different pin
`shapes. None of this was addressed.
` But I know I'm running out of time here, so --
` JUDGE BUNTING: Yeah. We were at about another
`additional five minutes.
` MR. MCKEOWN: To the extent I have anything left,
`I'll reserve for rebuttal. Thank you.
` JUDGE BUNTING: Okay. You want to reserve the
`remaining time. We'll give you about ten minutes.
` JUDGE KINDER: And certainly the issues overlap
`between the cases, so --
` MR. MCKEOWN: Absolutely.
` JUDGE KINDER: -- so, we can continue the
`discussion.
` MR. MCKEOWN: Thank you.
` MR. ROBINSON: Do your Honors have patent owner's
`demonstratives? I have paper copies if you don't have an
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`electronic one.
` JUDGE KINDER: Sure. Go ahead.
` MR. ROBINSON: May I approach?
` JUDGE BUNTING: Yes.
` All right. Patent owner, we'll give you a few
`minutes to get ready, and let us know when you're ready to
`start and you may begin.
` MR. ROBINSON: All right. Whenever you're ready.
` JUDGE BUNTING: All set? Great.
` MR. ROBINSON: Thank you. So, I'd like to start
`with slides 3 and 4 of patent owner's demonstratives. This
`is the first embodiment of the '656 patent. It's remarkably
`different than the second embodiment. Notably absent from
`petitioner's response on the means plus function construction
`of "counter" is any consideration of the fact that the '656
`patent uses "counter" to describe, as well, the structure
`that is nothing like anything in any of the exhibits cited as
`a support for the notion that counter is an indexing slot.
` There's just no attempt to address it or to
`consider the fact that the '656 patent uses "counter" to
`refer not only to that first embodiment of figures 2 through
`4 but, also, to the second embodiment of figures 5 through 7
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`that's really been the focus of much of the discussion.
` That first embodiment of figures 2 through 4
`doesn't have a lug that passes through an indexing slot.
`It's nothing like that. It has two pivoting arms and it has
`these spring-driven plungers that index each time a ball
`passes and eventually move to the position of figure 4 to
`prevent the seat from expanding and letting that last ball
`pass through. Really remarkably different and distinct and
`nothing like anything else in any of the prior art of record.
` JUDGE KINDER: So, just because it -- the
`specification describes two distinct embodiments of what a
`structural counter is, why does that necessarily take it into
`the realm of means plus function? Why couldn't you have
`"counter" just being a broad term that's capable of two
`distinct embodiments?
` MR. ROBINSON: So, that is certainly a
`possibility, your Honor, but it's not the case here. There's
`no evidence to suggest that it is. The fact that the
`specification uses "counter" so broadly, that the claims
`themselves use "counter" broadly to cover both of these
`structures, supports and furthers the conclusion in the prior
`art itself and the testimony of Dr. Stevick that "counter"
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`did not have a sufficiently definite structural connotation.
` JUDGE KINDER: Looking at the specification, for
`example, when it refers to "counter," it actually defines
`structures. It says, like, for example, the counter 122
`includes rotational indexable sleeve. So, it defines what a
`counter is and says it includes this as part of that
`structure. I mean what -- why does that necessarily require
`us to go into means plus function?
` MR. ROBINSON: Which is exactly the approach that
`it would take if it said, "'counter' means." Ultimately,
`that's not what requires the -- the means plus function
`analysis. What requires the means plus function analysis is
`that in the prior art to a POSITA at the relevant date,
`"counter" did not connote a particular structure or class of
`structures. It was a function. It's used consistently
`throughout the evidence of record as a function. You've got
`indexing mechanisms that act as a counter, that perform a
`counting function. And that is, in fact, consistent
`throughout these references.
` Mr. Medley, in his opening declaration, did not
`address this point at all, did not discuss whether a counter
`was structural or not, just sort of glossed over it all.
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`When asked on deposition -- and slide 7, in fact, has a
`number of quotes from those questions. You've got to know
`what you want to count, even when you get into the oil and
`gas art, down-hole art.
` You'll notice in that third bullet point cited by
`petitioner on slide 7, these are different indexing devices
`on trucks that pump things down a hole to count. This isn't
`a down-hole tool, this is another counting device that's on a
`truck -- odometers, flow meters. So, the one down-hole tool
`that Mr. Medley could point to is a flow meter that measures
`flow down hole.
` JUDGE BUNTING: So, how does patent owner define
`"counter"? How would you construe "counter"?
` MR. ROBINSON: So, "counter," and if I may refer
`back to slides 3 through 6, there are essentially two
`structures. The first is the first embodiment of figures 2
`through 4. It has the pivoting arms; it has the plunger; the
`escapement and the -- the notches that that indexes through.
` JUDGE WEATHERLY: Well, I think we understand that
`your position is that the structures that are described in
`the specification for counting are the structures -- we don't
`have any trouble identifying the structures that are
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`disclosed. The difficult part of this case is in sorting out
`whether the claim is written in a means plus function format
`to begin with that would -- and if it were, then, of course,
`we're supposed to identify the structures. That's not the
`hard part here. The hard part is i
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