[00:00:48] Speaker 00:
If I could just take care of one housekeeping issue here.

[00:01:01] Speaker 00:
I agree with your advice.

[00:01:28] Speaker 00:
Okay, Counselor, go ahead.

[00:01:30] Speaker 00:
May it please the Court, Grant Peters on behalf of ACME Scale.

[00:01:34] Speaker 00:
What went wrong and why we're here today is that the Board erred by considering the table with rollers in the Burgoyne reference to be a material handling vehicle in the ACME patent.

[00:01:49] Speaker 00:
The Board uses misinterpretation of the claims, the claim construction, to reverse the numerous PTO examiners' clearly and reasonable

[00:01:58] Speaker 00:
view that the original patent and to overturn the decision by the PTO.

[00:02:06] Speaker 03:
Then what are the boundaries for the term here, material handling vehicle?

[00:02:11] Speaker 03:
What is your perception of what that term means and where's the support for that?

[00:02:17] Speaker 00:
Material handling vehicle is determined by the claims and the specification in the ACME

[00:02:24] Speaker 03:
Can you give me the words?

[00:02:25] Speaker 03:
What are the words?

[00:02:26] Speaker 03:
Sure.

[00:02:26] Speaker 03:
How do you translate material handling vehicle?

[00:02:28] Speaker 00:
Material handling vehicle, if we refer to the ACME patents, that's at A36, column two, line 38, 39.

[00:02:36] Speaker 00:
The term, as very clearly stated here, material handling vehicle is meant to broadly include transport vehicles, first and foremost.

[00:02:47] Speaker 00:
As an example, but not limited to a forklift truck, a flatbed truck,

[00:02:52] Speaker 00:
in a pallet truck.

[00:02:53] Speaker 03:
So is it fair to read that as meaning that material handling vehicles broadly includes transport vehicles, but it's not limited to just transport vehicles.

[00:03:04] Speaker 03:
It can be something else.

[00:03:07] Speaker 03:
Or are you saying it's got to be just a transport vehicle rather than anything under that umbrella?

[00:03:13] Speaker 00:
It's our assertion that that is how the inventor defined what a material handling vehicle is.

[00:03:19] Speaker 00:
And she went on to, Ms.

[00:03:21] Speaker 00:
Kinsley went on to identify.

[00:03:22] Speaker 03:
I think the spec doesn't say material handling vehicle is a transport vehicle, which includes but is not limited to port.

[00:03:30] Speaker 00:
It does say port, meant to broadly include, but she was trying to achieve some broadening as might be needed to assert a patent, but identifying transport vehicles.

[00:03:41] Speaker 00:
It's our assertion that this table with rollers is not a transport vehicle.

[00:03:46] Speaker 00:
I have a podium in my office, I was practicing

[00:03:49] Speaker 00:
to get ready for this argument.

[00:03:51] Speaker 00:
And I noticed it had wheels.

[00:03:53] Speaker 00:
It's a piece of furniture with wheels.

[00:03:55] Speaker 00:
I can move it.

[00:03:56] Speaker 00:
I can move it over to the corner to get out of the way of the office.

[00:03:58] Speaker 00:
I can move it back to the center.

[00:04:00] Speaker 00:
But it's not a vehicle by any stretch of the imagination.

[00:04:02] Speaker 00:
Like a piano with wheels, or a barbecue with wheels, or a judge on wheels.

[00:04:09] Speaker 00:
I have to laugh, Your Honor, because I have two other examples.

[00:04:13] Speaker 00:
And one is a piano with wheels like I have at my home.

[00:04:15] Speaker 00:
And one is a chair.

[00:04:17] Speaker 00:
Those are definitely pieces of furniture.

[00:04:20] Speaker 00:
And we're not arguing that the Burgoyne reference is a table and that it has rollers.

[00:04:25] Speaker 00:
It's clear in its specification as to what that is.

[00:04:28] Speaker 00:
But it's not a vehicle.

[00:04:29] Speaker 00:
It was never intended to provide any vehicular activity of any sort.

[00:04:33] Speaker 02:
What supports you the most is the such as.

[00:04:36] Speaker 02:
Because what it's describing as transport vehicles are things that we would normally think of as transport vehicles.

[00:04:44] Speaker 00:
With further clarification as to the term truck.

[00:04:47] Speaker 00:
referring to truck as being a type of transport vehicle.

[00:04:52] Speaker 03:
So I'm still hung up on broadly include.

[00:04:55] Speaker 03:
Maybe we should think of it as transport vehicles and vehicles that are akin to transport vehicles?

[00:05:02] Speaker 00:
Transport vehicles, but again I think the operative terms here are that... It's not transport vehicle, it's transportation vehicle, which has other implications.

[00:05:12] Speaker 00:
Excuse me, yes.

[00:05:13] Speaker 00:
But I will say that we're focusing on vehicles

[00:05:16] Speaker 00:
And I think the ordinary meaning of the term vehicle would be something that you use for transportation of things its intended purpose.

[00:05:25] Speaker 00:
It's based on the intrinsic evidence in the ACME patent.

[00:05:29] Speaker 00:
I think it's very clear, the numerous references to the term truck and vehicle, that it was intended for that type of purpose.

[00:05:36] Speaker 00:
Is the wheelbarrow a vehicle?

[00:05:38] Speaker 00:
I would argue a wheelbarrow is not truly a vehicle.

[00:05:43] Speaker 00:
I would say it's on a... It can transport

[00:05:47] Speaker 00:
product from location B to location B. I would say on a spectrum of items, the furniture in Burgoyne being at one end and perhaps the acne pattern at the other end, a wheelbarrow would fit on that spectrum perhaps, yes.

[00:06:01] Speaker 00:
But I'd like to say that I think it's important to note that in attempting to assert the Burgoyne reference, I think LTS missed the point that

[00:06:14] Speaker 00:
Burgoyne actually teaches away from the use of this thing as a vehicle.

[00:06:19] Speaker 00:
I think it's pretty clear that throughout LTS, excuse me, throughout the Burgoyne reference, it identifies severe constraints with regard to the use of this thing.

[00:06:31] Speaker 00:
It also says that it's passive.

[00:06:33] Speaker 00:
Now I won't get into the passive active issue that was in the briefs, but it very clearly says A496, citing from the Burgoyne reference,

[00:06:43] Speaker 00:
column two, lines 58, 59, that the system, according to the invention, has the advantage, stating one of its advantages, that it is a passive system undisturbed by the surrounding industrial environment.

[00:06:58] Speaker 00:
So it's identifying several things that teach away from being used as a vehicle.

[00:07:04] Speaker 00:
And clearly, I would say that it's reasonable to conclude that there is no vehicular activity associated with Burgoyne.

[00:07:15] Speaker 03:
How do you understand the PTO rules, which indicate that you maybe have to file a request for rehearing before you can come to the Federal Circuit?

[00:07:27] Speaker 03:
Sure.

[00:07:28] Speaker 03:
What's your interpretation of those rules?

[00:07:31] Speaker 00:
With request to the issue of jurisdiction and perhaps exhausting the remedies below, we believe that ACME has exhausted its remedies below, before the board.

[00:07:45] Speaker 00:
The rehearing claims were rejected based on the exact same references.

[00:07:51] Speaker 00:
The board rehearing decision stated it is deemed to incorporate earlier opinion, the earlier opinion reflecting the board's decision for appeal and the board specifically cites rule 37 CFR section 41.79D.

[00:08:09] Speaker 00:
And in 4179D, it says, a rehearing decision is final for purposes of judicial review.

[00:08:15] Speaker 00:
The rules do not require the filing of a request for a rehearing from a rehearing, but the rules do require filing a request from an initial board review.

[00:08:28] Speaker 00:
This is similar to the case in Itochu, in which it was a commerce case.

[00:08:34] Speaker 00:
But in that case, it was found that there was no expectation

[00:08:39] Speaker 00:
that there would be a different result on the rehearing.

[00:08:42] Speaker 03:
In this case... That was maybe, I would have thought, if I'm remembering it right, a somewhat more exceptional case to what I think you have, which is maybe a fairly ordinary case, which is the idea that you'd have to seek rehearing on rehearing.

[00:09:04] Speaker 03:
The exception in Itochu was pretty narrow.

[00:09:08] Speaker 00:
I agree with you, Your Honor, but I would say that this is a somewhat exceptional case.

[00:09:13] Speaker 00:
It certainly is to my client.

[00:09:16] Speaker 00:
Ms.

[00:09:16] Speaker 00:
Kinsley is a small business person who came up with the benefit.

[00:09:18] Speaker 03:
No, I was just suggesting you don't need a principle as... Correct.

[00:09:24] Speaker 03:
You don't need to rely on a tocho to say the regulations here don't require re-hearing from a re-hearing physician.

[00:09:30] Speaker 02:
Right.

[00:09:31] Speaker 02:
There's a difference between being given an opportunity and being required.

[00:09:35] Speaker 00:
Correct.

[00:09:35] Speaker 00:
And we believe that based on the rules, if you look at

[00:09:38] Speaker 00:
41.79 D. The rule clearly states that the party may request further reconsideration, but there's no expectation that we would get a different result.

[00:09:47] Speaker 00:
It's the same case.

[00:09:48] Speaker 00:
The same facts were before the board.

[00:09:51] Speaker 00:
The same references were being asserted.

[00:09:55] Speaker 00:
And frankly, we think it would be futile to go back.

[00:10:01] Speaker 00:
Keep in mind, this is a case in which the re-examination took a full year.

[00:10:04] Speaker 00:
It was 21 months on appeal.

[00:10:06] Speaker 00:
It was another 11, almost 12 months on the rehearing.

[00:10:10] Speaker 00:
And now we're going up on this appeal.

[00:10:12] Speaker 00:
If we had gone through yet another round or more, who knows how many rounds you'd have to go around on the rehearing, it'd be another 11 months.

[00:10:20] Speaker 00:
It'll be a decade from the time Ms.

[00:10:22] Speaker 00:
Kinsley files her patent application until we get a determination on this case.

[00:10:26] Speaker 00:
And it's important for her business to move forward with regard to the right that she has in her patent.

[00:10:35] Speaker 02:
We're not even close to Jarn Dice and Jarn Dice.

[00:10:42] Speaker 00:
With regard to Ms.

[00:10:43] Speaker 00:
Kinsley's business, her business again, as I said, is a small business who's trying to assert the rights in a patent that she secured through the United States Patent and Trademark Office.

[00:10:58] Speaker 00:
There were four examiners throughout this process that reviewed this application.

[00:11:03] Speaker 00:
both at the initial application as well as the reexamination.

[00:11:09] Speaker 00:
There were supervisors looking over the shoulders of those examiners.

[00:11:11] Speaker 00:
There was quality control in place on the reexamination.

[00:11:16] Speaker 00:
There were folks who were reviewing the work of Examiner Brown, who subsequently has become a board judge herself.

[00:11:26] Speaker 00:
I'd be surprised and shocked that all those people who are so educated in this process

[00:11:31] Speaker 00:
would take an unreasonable position, all of them, to not find Burgoyne to be a relevant reference.

[00:11:40] Speaker 00:
In fact, they found Burgoyne to be irrelevant by not asserting it.

[00:11:44] Speaker 00:
There were any number of opportunities that they could have asserted it, but they didn't.

[00:11:47] Speaker 00:
Burgoyne was a reference that was asserted by Ms.

[00:11:50] Speaker 00:
Kinsley in the IDS when the application was originally filed, and never considered to have any merit by the examiners.

[00:11:59] Speaker 00:
If there's no other questions, I'd like to reserve the remaining time for my rebuttal.

[00:12:04] Speaker 00:
Thank you, Your Honor.

[00:12:18] Speaker 01:
I'm Rich Agarwal from Eckerd Siemens, Chair in the Lot, and I'm here on behalf of the Appalee LTS scale today.

[00:12:24] Speaker 01:
Some of the things I'd like to talk about are

[00:12:27] Speaker 01:
Definitely that this court does not have jurisdiction over this appeal.

[00:12:30] Speaker 01:
What ACME did was they filed an appeal, but it was not based on a final appealable decision.

[00:12:35] Speaker 01:
So the court does not have jurisdiction.

[00:12:37] Speaker 01:
Additionally, ACME has waived because it failed to challenge several bases of claim rejections and the- Weren't those all bases that included a reliance on Burgoyne?

[00:12:50] Speaker 01:
No, Your Honor.

[00:12:51] Speaker 01:
Actually, the three unchallenged bases of rejection

[00:12:54] Speaker 03:
were uh... rejections of all of the claims on the ground for one in combination with a forklift at one of the secondary record but if we hypothetically were to reject the board construction and understanding of the port-gorean references teaching a material handling vehicle or suggesting material handling vehicle uh... there is no reasoning either by a board or a patent examiner that relies on any of those secondary references to

[00:13:21] Speaker 03:
to fill that missing piece and combine it with the remaining teachings of the prior art to render the claims obvious.

[00:13:29] Speaker 03:
Is that fair to say?

[00:13:34] Speaker 03:
If I'm wrong, point me out where I'm wrong in the record.

[00:13:37] Speaker 01:
What I would say is those arguments have been waived, Your Honor, because ACME never challenged that.

[00:13:42] Speaker 01:
When the first board decision came out, the board said, you have these five

[00:13:47] Speaker 01:
Basis of rejections of your claims and it expressly set them forth in Acme's principal brief.

[00:13:53] Speaker 01:
It only challenged the first two.

[00:13:57] Speaker 03:
If they rip out one of the legs to all the rejections, then all the rejections fall down.

[00:14:02] Speaker 01:
I disagree with your respect, your honor, because... Well, let's just say the wheels come off.

[00:14:08] Speaker 01:
If the three bases of rejection that Acme has not challenged do not rely upon Berguon disclosing a material handling vehicle,

[00:14:17] Speaker 01:
the three bases of rejection that ACME has left unchallenged, combined Berguan in combination with a forklift.

[00:14:26] Speaker 03:
Sure, but nobody, neither an examiner or the patent board, ever relied on that aspect of those secondary references in building some kind of 103 rejection.

[00:14:36] Speaker 01:
Well, I set forth enough of those arguments

[00:14:38] Speaker 01:
while I was arguing the rejections.

[00:14:39] Speaker 03:
Right, you would like that to consider them in the first instance.

[00:14:41] Speaker 01:
Well, what I would say is that the board actually adopted all of those rejections for the reasons that I set forth when I argued those.

[00:14:47] Speaker 01:
And so therefore, I think it would be very reasonable to conclude that the board felt that those were sufficiently argued instead of setting forth all of the things that I had set forth over the course of well over a year.

[00:15:02] Speaker 03:
Well, go on with your other arguments.

[00:15:04] Speaker 01:
And I would simply say that, Your Honor,

[00:15:08] Speaker 01:
much of, in the broader scheme of things, there are an enormous spectrum of devices that fall within the broadest reasonable interpretation of a material handling vehicle, all the way from the wheelbarrow and hand truck that Patterson disclosed as being material handling vehicles.

[00:15:29] Speaker 03:
What's the best way to characterize the board's understanding of the term material handling vehicle?

[00:15:36] Speaker 03:
Any device that has wheels that can, is capable of holding on to some product?

[00:15:46] Speaker 01:
In the first board decision, the board agreed with the examiner that the device in brick one was a vehicle.

[00:15:53] Speaker 03:
Right, but I'm just trying to understand what's the conception that the patent board had of material handling vehicles.

[00:16:00] Speaker 03:
Is it fair to say it the way I said it?

[00:16:05] Speaker 03:
device with wheels that is capable of holding or conveying or supporting products?

[00:16:12] Speaker 01:
I don't know that I can actually, the first board decision and the second board decision were more focused on what was in front of it to

[00:16:21] Speaker 01:
more broadly construe those, possibly.

[00:16:24] Speaker 01:
I'm sure that either of us, any of us, could come up with examples at the fringe where there might be a wheel on a playground toy that the children can spin that's not necessarily a vehicle.

[00:16:37] Speaker 01:
However, I would say that the Berguon reference is nowhere near the fringe.

[00:16:41] Speaker 01:
It's squarely in the midst of... I think it's pretty fringy.

[00:16:45] Speaker 03:
You know, when I have in my garage a ping pong table,

[00:16:49] Speaker 03:
And it looks like Borgon's table and the ping pong table has wheels.

[00:16:54] Speaker 03:
And I would say it defies common sense to call my ping pong table a vehicle.

[00:17:05] Speaker 01:
I would also suggest to the court that

[00:17:11] Speaker 01:
The court owes deference to the board because the factual findings by the board that Berguin discloses and teaches and suggests a material handling vehicle were supported by substantial evidence.

[00:17:22] Speaker 01:
It's clear that ACME would like to re-litigate that issue here, but this is the court appeals.

[00:17:28] Speaker 01:
ACME is already lost, and the standard of review is whether or not substantial evidence supported the findings by the board.

[00:17:37] Speaker 03:
On a claim construction question,

[00:17:41] Speaker 03:
like this one, which is about as far from technical as you can get.

[00:17:49] Speaker 03:
I think we get to actually decide that to know.

[00:17:51] Speaker 01:
Your Honor, anticipation is a question of fact, as both ACME and... I'm sorry, maybe I've misremembered.

[00:18:05] Speaker 03:
Material handling vehicle is

[00:18:08] Speaker 03:
Is that in the claim or not?

[00:18:10] Speaker 03:
It's a recitation of the claim, exactly.

[00:18:12] Speaker 03:
Okay, and the board's finding of such a thing in Burgoyne was dependent on its.

[00:18:19] Speaker 03:
Factual findings.

[00:18:19] Speaker 03:
On its understanding of what this claim meant.

[00:18:23] Speaker 03:
And at least for me, it seems beyond the bounds of common understanding of a technical term to think of the term vehicle here

[00:18:38] Speaker 03:
as covering something that can move but whose function is not meant to be performed while moving and whose function is not the transportation of something sitting on it or in it.

[00:18:53] Speaker 01:
I would disagree, Your Honor.

[00:18:56] Speaker 02:
Let's play a common intelligence test game that's given to elementary school children.

[00:19:06] Speaker 02:
Choose the one that shouldn't be here.

[00:19:08] Speaker 02:
Forklift truck, flatbed truck, pallet truck, or Judge Chan's ping pong table?

[00:19:18] Speaker 01:
Your Honor, I would suggest that this panel is far beyond elementary type questions along that nature.

[00:19:26] Speaker 01:
Yes, clearly I think it would be this last choice.

[00:19:30] Speaker 01:
But the spectrum of material handling vehicles

[00:19:35] Speaker 01:
are typically dictated.

[00:19:37] Speaker 01:
The various configurations of these devices are dictated by what is intended to be carried.

[00:19:42] Speaker 02:
They didn't just say, though, transportation vehicles.

[00:19:48] Speaker 02:
They said such as, for example.

[00:19:51] Speaker 02:
And then they list three types of commercial transportation vehicles.

[00:19:57] Speaker 01:
That's correct.

[00:19:58] Speaker 01:
But I would also note that ACCI has already stated on the record that the term material handling vehicle is unambiguous.

[00:20:04] Speaker 01:
And in that situation, the claims are interpreted according to their broadest reasonable interpretation.

[00:20:10] Speaker 01:
Resort to the specification is... Reasonable.

[00:20:12] Speaker 01:
Reasonable, exactly.

[00:20:13] Speaker 01:
Broadest reasonable.

[00:20:15] Speaker 03:
Broadest reasonable interpretation consistent with the specification.

[00:20:18] Speaker 01:
That's correct.

[00:20:19] Speaker 03:
So maybe a ping pong table is inconsistent with the specification.

[00:20:25] Speaker 03:
When the specification talks about pallet trucks, forklifts, et cetera.

[00:20:30] Speaker 02:
Let me put it another way.

[00:20:32] Speaker 02:
If you're driving down

[00:20:34] Speaker 02:
Highway 10 in California, and a flatbed track goes by you, and then a ping pong table.

[00:20:43] Speaker 02:
Are you going to call the California Highway Patrol?

[00:20:47] Speaker 01:
Your Honor, ACME had sought, as I said, to relitigate the issue.

[00:20:52] Speaker 01:
But again, it's seeking to attempt to develop a highly specialized definition of the term material handling vehicle that's specifically calculated to avoid the application of Berguan.

[00:21:04] Speaker 01:
And there's absolutely no basis in the record for suggesting that the term material handling vehicle should be interpreted in any fashion other than its broadest reasonable interpretation.

[00:21:15] Speaker 01:
Now the board has concluded that the Berguan device falls within the scope of the broadest reasonable interpretation of a material handling vehicle.

[00:21:25] Speaker 01:
the findings of fact were supported by substantial evidence.

[00:21:29] Speaker 01:
I would respectfully submit to you that the question of anticipation is a factual inquiry.

[00:21:37] Speaker 01:
Claim interpretations are legal interpretations.

[00:21:40] Speaker 01:
For instance, obviousness is a legal interpretation.

[00:21:44] Speaker 01:
It's reviewed de novo.

[00:21:45] Speaker 01:
However, its underpinnings are factual.

[00:21:47] Speaker 01:
All the facts that would go into an obvious analysis are analyzed according to the substantial evidence standard.

[00:21:54] Speaker 01:
And in this case, the Patent Office determined with substantial evidence that the device in Berguan is a material handling vehicle.

[00:22:03] Speaker 01:
Not only it is, but also that Berguan also teaches and suggests a material handling vehicle.

[00:22:09] Speaker 01:
And the efforts by ACME to relitigate the issue here get back to my original point that this court really does not have jurisdiction.

[00:22:20] Speaker 01:
ACME should have argued all of this to the Patent Office.

[00:22:24] Speaker 01:
And I dispute what my colleague says with regard to the decision being final.

[00:22:30] Speaker 01:
What the CFR provision that he cited states is that it is final except when noted otherwise in the decision on rehearing.

[00:22:40] Speaker 01:
It goes on to say, if the board opinion reflecting its decision on rehearing becomes in effect a new decision, that's exactly the situation we have here.

[00:22:50] Speaker 01:
This was a new decision.

[00:22:52] Speaker 03:
any party to the appeal may, within one month of the new decision, file a further request for re-hearing of the new decision.

[00:22:58] Speaker 01:
Your Honor, it's permissive only from the standpoint that perhaps the party might decide to go home.

[00:23:04] Speaker 01:
If a party wants to protect its appellate rights, it needs to do so.

[00:23:07] Speaker 03:
But to me, like the PTO sort of understands, when it demands that a party file a request for re-hearing, it demands that when the board elects to install a new grounds of rejection,

[00:23:22] Speaker 03:
When there's a new ground of rejection involved, then it commands that parties must file the request for re-hearing.

[00:23:29] Speaker 03:
They didn't use those words, that terminology here in 4.7 now.

[00:23:35] Speaker 01:
But the board in its secondary decision said that all parties had one month within which to request re-hearing.

[00:23:43] Speaker 01:
The board went on to give a citation to 41.77B, which controls re-prosecution with amended claims.

[00:23:54] Speaker 01:
Additionally, 37 CFR 41.81 states that there is no appeal from the board to the Federal Circuit until all parties' rights to request re-hearing have been exhausted.

[00:24:07] Speaker 01:
Not permissive rights if they choose to

[00:24:10] Speaker 01:
attempt to re-litigate something in the federal circuit regardless of the standard of review.

[00:24:15] Speaker 01:
It says that they must be exhausted.

[00:24:18] Speaker 03:
Here they were waived, along with the arguments that ACBE has failed to raise with regard to... Is it the patent board wrote a rule that commands that every time they write a decision they want to see a request for re-hearing?

[00:24:32] Speaker 01:
I don't think so at all, Your Honor.

[00:24:33] Speaker 03:
I think that...

[00:24:34] Speaker 03:
That's your reading of 41.88.

[00:24:36] Speaker 01:
Actually, my reading is that in view of the fact that the board expressly said this is, in effect, a new opinion, and also incorporated its previous opinion.

[00:24:45] Speaker 01:
I think that if the board had not been interested in seeking rehearing, it would have not bothered to say it was a new opinion.

[00:24:53] Speaker 01:
The point is that ACME is again, as I said before, ACME is seeking to re-litigate, hear the issue.

[00:25:01] Speaker 01:
ACME is already lost.

[00:25:03] Speaker 01:
The issue is whether or not the board had substantial evidence to support its conclusion that Verguan discloses and teaches and suggests a material handling vehicle.

[00:25:12] Speaker 01:
And it does.

[00:25:15] Speaker 01:
And as I had said before, the CFR 41.81 says that there is no appeal possible until everyone's rights to request for a hearing have been exhausted.

[00:25:28] Speaker 01:
Further, as I had mentioned, the three grounds of rejection that Acme has not challenged are dispositive of this appeal because they render moot, quite honestly, the grounds that Acme has challenged, which are the grounds of rejection on the ground of anticipation over Berguin and on the ground of obviousness individually over Berguin.

[00:25:50] Speaker 01:
I would also note that Acme cannot distinguish Berguin by trying to argue

[00:25:58] Speaker 01:
that its device or that its method involved dimensioning of an article while a material handling vehicle is moving or is in motion.

[00:26:07] Speaker 01:
Those arguments are not commensurate with the claims that are in front of this court.

[00:26:10] Speaker 01:
I was perplexed for a long time and it finally occurred to me that those dozen arguments seem to be related to an embodiment of the ACPE patent that is not in front of this court.

[00:26:22] Speaker 01:
Those claims have nothing whatsoever

[00:26:24] Speaker 01:
The claims in front of this court have nothing whatsoever to do with dimensioning an article while a material handling vehicle is moving or is in motion.

[00:26:32] Speaker 03:
What does the word active mean in the claim?

[00:26:34] Speaker 01:
Well, active is actually not in the patent at all, Your Honor.

[00:26:38] Speaker 01:
And to Mr. Peters' point that this application was thoroughly examined with supervisors, none of the examiners ever failed to ever notice the fact that the word actively, which is unquestionably the point of novelty of claim nine,

[00:26:53] Speaker 01:
There's no question whatsoever because the word active and actively added to claim nine resulted in its allowance, but none of the examiners ever noticed that that word is completely absent from the ACME patent.

[00:27:05] Speaker 01:
So for the reasons I've mentioned, I would ask that the court reject the appeal on the ground of lack of subject matter jurisdiction, that additionally the decisions by the board be affirmed both because of waiver by ACME of the end challenge rejections rendering its

[00:27:23] Speaker 01:
points moot and also would ask that the court affirm the board's findings based upon the substance of the matter and that there's a standard of review that the board's findings were represented and based upon substantial evidence.

[00:27:39] Speaker 01:
Thank you very much.

[00:27:58] Speaker 00:
Earlier I said that we're here because the board made a mistake.

[00:28:05] Speaker 00:
They erred in deciding that the table with rollers in Burgoyne is a material handling vehicle.

[00:28:12] Speaker 00:
I'd like to clarify that.

[00:28:14] Speaker 00:
We're here because my friend, his client, brought this case as a reexamination.

[00:28:21] Speaker 00:
They chose on that reexamination which references to assert in the reexamination and took their best shot at it from the start.

[00:28:28] Speaker 00:
In a re-examination, you have to identify the substantial new question of patentability.

[00:28:34] Speaker 00:
And Mr. Agarwal and his colleagues, they're bright and thorough attorneys.

[00:28:41] Speaker 00:
They have the strength of a well-known firm behind them.

[00:28:44] Speaker 00:
They have a client who has funded this activity.

[00:28:47] Speaker 00:
And the best that they could find, the best reference their searchers could find was a patent that had already been cited by the original applicant.

[00:28:57] Speaker 00:
So it's our position

[00:28:58] Speaker 00:
that they had their opportunities to look for any references they wanted.

[00:29:03] Speaker 00:
They couldn't find anything better than something, with all respect, analogous to a ping pong table.

[00:29:10] Speaker 00:
With regard to dealing with the various issues, each one of the individual references, or excuse me, rejections that were asserted, require the inclusion of Burgoyne, as I think the court has already stated.

[00:29:25] Speaker 00:
Other references that were included in the combinations

[00:29:28] Speaker 00:
There's a 102 reference, excuse me, rejection based on Burgoyne.

[00:29:32] Speaker 00:
There's a 103 rejection based on Burgoyne.

[00:29:33] Speaker 00:
But the combination references, Burgoyne plus Berg, Riddling or Anderson, Riddling and Anderson very clearly include passive devices that were considered during the prosecution.

[00:29:45] Speaker 00:
Passive meaning the barcode or scanner used in Riddling or the RFID.

[00:29:51] Speaker 00:
The combination of Berg and Burgoyne doesn't resolve any other issues as well because

[00:29:56] Speaker 00:
there's no incentive to combine those references.

[00:29:59] Speaker 00:
The teaching away that occurs as a result of looking at the reading of Burgoyne, eviscerates the combination of that.

[00:30:09] Speaker 00:
Moving along, with regard to the standard of review, yes, the standard of review is de novo, and especially in a situation where the factual issues are so straightforward, I think this court has the ability to reduce de novo because it is a legal issue.

[00:30:25] Speaker 00:
is a question of factual issues under 102 or 103, all those determinations hinge on a reasonable interpretation, what a reasonable mind would consider.

[00:30:36] Speaker 00:
Again, I have to laugh at your comment in a positive way about one thing is not like the other.

[00:30:43] Speaker 00:
I will often use that in training new attorneys in my firm as to these types of rejections and what's reasonable.

[00:30:51] Speaker 00:
And I think in this case, it is unreasonable to try to assert

[00:30:55] Speaker 00:
the Burgoyne reference as a material handling vehicle.

[00:31:00] Speaker 00:
Just to close out one other issue that's lingering in our mind and I think shows the lack of support of Burgoyne in this case is that throughout the briefs, and I don't understand why this is occurring, but LTS relies on the term platform and wheels as opposed to table and roller set forth in Burgoyne.

[00:31:25] Speaker 00:
Burgoyne very clearly identifies the table 21 with rollers, very clearly cited in the patent.

[00:31:31] Speaker 00:
There is a platform identified there, but that's a separate component of the wheeled table, excuse me, table with rollers.

[00:31:38] Speaker 00:
So I suspect that that's trying to make an attempt to try to further differentiate their argument from the Burgoyne reference.

[00:31:48] Speaker 00:
Based on all of the arguments and briefs that we've submitted to this court, we respectfully request that you overturn the board and

[00:31:55] Speaker 00:
pass this patent to issue so that Ms.

[00:31:57] Speaker 00:
Kinsley can proceed to enforce this patent against LTS.

[00:32:01] Speaker 00:
Thank you very much, Chairman.