[00:00:02] Speaker 03:
Maybe I'm fortunate.

[00:00:38] Speaker 05:
How do I say your last name, counsel?

[00:00:43] Speaker 05:
Mr. Volpe, please proceed.

[00:00:47] Speaker 05:
OK, the idea that that is going to be helpful is completely and utterly absurd.

[00:00:52] Speaker 05:
I hope you didn't make it for argument, because I'm going to venture a guess that I have the best eyes on the court, and I don't have a clue what's on that board.

[00:01:03] Speaker 01:
Your Honor, actually, we did submit to the clerk

[00:01:06] Speaker 01:
Uh, paper copies of the state.

[00:01:10] Speaker 01:
As someone who had some of my issues and still appreciate that.

[00:01:13] Speaker 01:
Uh, your honor, if it's a police court, I'm Anthony Volpe here on behalf of Bernina, uh, who is the patent owner in this appeal from a final decision of the board and an IPR.

[00:01:26] Speaker 01:
And, uh, by way of background, this has a slightly different twist to it, namely that, uh, the inventor is a deceased at the time of the IPR.

[00:01:36] Speaker 01:
So.

[00:01:37] Speaker 01:
One of the issues that came up was the ability to swear behind a reference that was issued in October, published, I'm sorry, it was not an issued patent.

[00:01:49] Speaker 01:
It was a non-examined Japanese patent that published in October of 2002.

[00:01:55] Speaker 01:
And the original non-provisional or provisional patent application was filed in February 2003.

[00:02:04] Speaker 01:
and it was asserted by the petitioner as a one or two reference.

[00:02:10] Speaker 01:
And our position is that the board failed to appreciate the evidence and failed to appreciate the manner and standard in which the evidence should be reviewed.

[00:02:22] Speaker 01:
And in our reply brief at pages 16 and 17, we've laid out some dates and some facts and we think that one of the failures

[00:02:33] Speaker 01:
of the board was that they were quite concerned about the reliability of the evidence, largely because they focused on a letter written by the inventor prior to being deceased, of course, in May of 2009.

[00:02:47] Speaker 01:
And they focused on the time period between what the inventor's documents were in this letter of 2009.

[00:02:56] Speaker 01:
What they failed to accept or recognize at the time was that the patent application had already been filed.

[00:03:03] Speaker 01:
And a good deal of this information had already been made part of the public record by the filing of a patent application.

[00:03:12] Speaker 02:
So that the gap between the particular information that... But the board's ruling does not depend on any suggestion that these documents were created in 2009 when it suddenly became known to be significant.

[00:03:31] Speaker 02:
what happened before October 8, 2002 and otherwise.

[00:03:34] Speaker 02:
I thought that the board's decision rests ultimately on its view that there was not a complete conception.

[00:03:44] Speaker 02:
And when looking at the evidence about the conception, there was at least one thing that was important that was missing, which is how to get the needle motor

[00:03:59] Speaker 02:
to operate in accordance with the signals coming out of the motion sensor.

[00:04:07] Speaker 02:
And that just wasn't done.

[00:04:09] Speaker 02:
And your chief argument was, well, no big deal to figure out how to do that.

[00:04:14] Speaker 02:
And the board said, well, yeah, it is kind of a big deal.

[00:04:18] Speaker 01:
Well, I think your honor is correct.

[00:04:20] Speaker 01:
There was a two part.

[00:04:21] Speaker 01:
There was one on the reliability of the evidence.

[00:04:23] Speaker 01:
The second was on, and I'll turn to that, which is,

[00:04:27] Speaker 01:
partially why we have our exhibit here.

[00:04:31] Speaker 01:
If the court considers what the actual invention was, I think the board misconstrued the invention.

[00:04:37] Speaker 01:
The board viewed the invention as getting the information to the motor of the sewing machine.

[00:04:46] Speaker 00:
You've got that blow up over there.

[00:04:48] Speaker 00:
I assume it's a page from the appendix.

[00:04:50] Speaker 00:
What page is it?

[00:04:51] Speaker 00:
It's two pages from the appendix actually, Your Honor.

[00:04:56] Speaker 01:
The one chart is at, the center part is at 511 and 514, and the right hand column is 701, or 781, 780, and 782.

[00:05:13] Speaker 02:
So you have your claim, you have Watabi, and then you have some of your own documents.

[00:05:18] Speaker 01:
Yes, Your Honor.

[00:05:20] Speaker 01:
Okay.

[00:05:20] Speaker 01:
And the point here is both Watabi and

[00:05:25] Speaker 01:
The 446 patent described the issue not so much as getting the information to control the needle, or the way to control the needle, it was getting information to control the needle.

[00:05:41] Speaker 01:
Because this used to be a hand operation which required coordination between the quilter and a foot pedal.

[00:05:48] Speaker 01:
Sort of the old-fashioned Singer sewing machine type arrangement made electronic.

[00:05:55] Speaker 01:
What both Watabi and the 446 patent addressed was a way to try to pick up the information on fabric movement that would remove the responsibility of the quilter to have coordination so that the movement of the fabric could be coordinated with the pedal operation.

[00:06:15] Speaker 01:
But what happened in our 446 patent was that the inventor settled on a way that the inventor could pick up

[00:06:24] Speaker 01:
the data or the data points necessary to determine whether a fabric was moving fast or slow.

[00:06:30] Speaker 01:
Taking that information and moving it into the pedal really was something that was within the state of the art at the time for two reasons.

[00:06:40] Speaker 01:
One, it was a digital signal, and in 2002, electrical engineers could take a digital signal and convert it, if necessary, into an analog signal to control

[00:06:53] Speaker 01:
the pedal function, the removal of the pedal function, or if it was a digital function, they could simply use digital circuitry to move it in.

[00:07:05] Speaker 01:
Now, the reason that becomes important here is something that we pointed out in our reply brief.

[00:07:16] Speaker 01:
After finding that we did not have certain aspects of that circuitry disclosed

[00:07:23] Speaker 01:
in our patent application, and it was not within the skill of the art, the board in a related, the same patent in a second IPR, in a motion for rehearing on claims that it had denied an IPR trial on, found that it was within the state of the art to take Watabe's disclosure and simply

[00:07:50] Speaker 01:
converted over and combine it with another reference.

[00:07:54] Speaker 01:
So they took one standard when they looked at the original 446 patent IPR and said it wasn't within the state of the art.

[00:08:02] Speaker 01:
Then they took another standard, and that standard is in the appendix set on page 1122, where they specifically state

[00:08:27] Speaker 01:
The board specifically states there that Watabe reveals that censors are known and therefore was no further need to describe censors.

[00:08:36] Speaker 01:
Watabe's election, not to describe what is known as consistent with apical precedent, they cite cases and they say, then they go on to say, the point where the invention begins and describes what has been made that is new and what it replaces the old.

[00:08:52] Speaker 01:
That which is common and well-known as if it were written out in the patent and delineated in the drawings.

[00:08:58] Speaker 01:
And that's exactly what they said we didn't have when they said we failed to disclose the circuitry.

[00:09:04] Speaker 02:
But doesn't that all depend on whether it really is, I'm going to use the word non-trivialism, but I don't mean anything technical by that to cover whether it had to be part of the conception, how to get

[00:09:21] Speaker 02:
a signal that measures how the x squared plus y squared, or whatever it is, the actual distance, to make the needle do what you want the needle to do.

[00:09:33] Speaker 02:
And there are a couple of, I guess, in the discussion with Steve, is it, at the birthday party in August?

[00:09:46] Speaker 02:
He says, well, maybe you can use a servo to do this.

[00:09:49] Speaker 02:
And the inventor says, I don't really want to do that.

[00:09:53] Speaker 02:
I'd like kind of single shot needles so that as this quilt is moving, the needle is not stuck in it as it's moving.

[00:10:03] Speaker 02:
And the initial drawings between invention disclosure number one and invention number two are quite different.

[00:10:10] Speaker 02:
The invention number two suddenly has the sensor to see

[00:10:15] Speaker 02:
I don't know where the rotary is on the position to tell it when to stop, and number one does not, suggesting that there was a problem still to be solved.

[00:10:28] Speaker 01:
No, I respectfully disagree, Your Honor.

[00:10:30] Speaker 01:
While it may not have been necessarily a pathetic item for someone who just looked at it, for an engineer, for an electrical engineer, you have to understand that people understood how the sewing machines work.

[00:10:44] Speaker 01:
They knew that certain sewing machines had one type of mechanical mechanism, which was more based on mechanics.

[00:10:51] Speaker 01:
They had others that were a little more sophisticated based on electronics, which was actually what drove the inventor to go to the Houston Quilt Show to see what kind of machines he would have to interface with.

[00:11:04] Speaker 02:
But for an electrical... What's the evidence that indicates that it was well known in the art

[00:11:13] Speaker 02:
to have, I forget what it's called, the sensor that's in the upper right-hand corner, the little angled mirror.

[00:11:19] Speaker 02:
I'm kind of remembering more than actually seeing what's within that picture.

[00:11:25] Speaker 01:
The little mouse-like device.

[00:11:26] Speaker 02:
No, no, not the mouse, not the detection one underneath.

[00:11:30] Speaker 02:
In the upper right-hand corner, there's something that's sensing where the little piece of paper is or something on the middle.

[00:11:38] Speaker 02:
Oh, that's the shaft position.

[00:11:40] Speaker 02:
Shaft position sensor, that's it.

[00:11:41] Speaker 02:
Now, what evidence was there before the board that said that mechanism, which I gather is actually part of the mechanism for both the proportional and the single stitch embodiments, was well known in the art and not something Mr. Kerner came up with after October 14th.

[00:12:01] Speaker 01:
I guess the simplest example, Your Honor, I can give the court is every automobile has that type of a sensor.

[00:12:10] Speaker 01:
for its crankshaft and its timing shaft.

[00:12:13] Speaker 01:
That's exactly what keeps your automobile in time.

[00:12:16] Speaker 02:
And as to evidence in the record that would show that even though that appears on the second invention disclosure and not on the first, that that was a matter of simply ordinary skill and not.

[00:12:35] Speaker 01:
Once again, Your Honor, I have to go back to the board's own decision in the related

[00:12:40] Speaker 01:
application, that is something that having figured out or determined how one might get data on the fabric motion to use for controlling the machine, the interconnections with the machine would depend largely on what the machine is.

[00:12:58] Speaker 01:
If you had an electronic device that was using servo motors or something of that nature, it might already have that.

[00:13:06] Speaker 01:
If you had an older machine

[00:13:08] Speaker 01:
that was largely mechanical with what you may remember as being leather belts driving the sewing needle, then you may need to add it.

[00:13:18] Speaker 01:
But by itself, the problem solved, the invention, was how can you move a fabric at varying rates in different positions and collect data.

[00:13:28] Speaker 01:
And that was shown by the September test

[00:13:34] Speaker 01:
that he ran for his sons, and then subsequently, in all the information he provided to the patent attorney.

[00:13:42] Speaker 01:
And that information contained enough data to show that he had a full conception of how to collect data and control a cell machine.

[00:13:52] Speaker 01:
And I've been advised that I'm running into my refundable time.

[00:13:55] Speaker 05:
OK, very good.

[00:13:56] Speaker 05:
We'll save the rest for you, Mr. Freeman.

[00:14:10] Speaker 04:
May it please the court.

[00:14:12] Speaker 04:
The board got it right.

[00:14:14] Speaker 04:
Its legal conclusions are correct.

[00:14:16] Speaker 04:
Its factual conclusions are supported by substantial evidence.

[00:14:20] Speaker 04:
And it's this latter point where I'd like to spend my time this morning.

[00:14:22] Speaker 04:
That's because the board's conclusion, the board had alternative bases for its conclusion.

[00:14:29] Speaker 04:
It examined all the evidence, took it as true, weighed it, and found as a matter of law that it was insufficient.

[00:14:36] Speaker 04:
to establish conception, but it also separately examined all those pieces of evidence and found them unreliable.

[00:14:42] Speaker 05:
And you know what?

[00:14:43] Speaker 05:
I'm just going to tell you I disagree with every one of those evidentiary holdings, so you better spend all your time on the first argument.

[00:14:51] Speaker 04:
The first argument being?

[00:14:53] Speaker 05:
The first argument that accepting all the evidence as something that is able to be used, it's still legally insufficient.

[00:15:03] Speaker 05:
Because I don't agree with pretty much anything the board said.

[00:15:06] Speaker 05:
when it threw out, well, you can't rely on this and you can't rely on that, because this one came from this one and that one came from, no.

[00:15:12] Speaker 05:
I didn't find any of that persuasive.

[00:15:16] Speaker 05:
But you're lucky, because as you said, they said, well, even if you take all the evidence in, this is the outcome.

[00:15:22] Speaker 05:
So why don't you keep all of your focus on that?

[00:15:24] Speaker 05:
Let's just assume all the evidence is in.

[00:15:28] Speaker 05:
And tell me why all that evidence is not sufficient to establish its conception prior to

[00:15:34] Speaker 05:
October 8th of 2002.

[00:15:35] Speaker 05:
Okay.

[00:15:36] Speaker 04:
Well, it's pretty limited evidence.

[00:15:37] Speaker 04:
It's this image over here of exhibit 2006, which is the sketch, the diagram that is dated.

[00:15:53] Speaker 04:
There are four pre-Watabe documents.

[00:15:54] Speaker 04:
Let's go back.

[00:15:56] Speaker 04:
None of them have any stitching to connect them together because we don't have any testimony from the inventor.

[00:16:02] Speaker 04:
So we have to decide whether conception has been established on the documents alone.

[00:16:06] Speaker 04:
These documents establish what's going on inside the mind of the inventor, that he had a definite and permanent idea of the complete and operative invention.

[00:16:14] Speaker 05:
There's a picture on 781.

[00:16:17] Speaker 05:
What is the picture on 781, the free motion machine?

[00:16:21] Speaker 05:
What does that show me?

[00:16:23] Speaker 05:
I think that it's the picture in the upper right hand column that you were just talking about.

[00:16:32] Speaker 04:
So that's one of the four pre-Watabi documents.

[00:16:35] Speaker 04:
That's 779 through 782 are the four pre-Watabi documents.

[00:16:41] Speaker 04:
The sum total of the evidence before that that anidates Watabi is for these four documents.

[00:16:47] Speaker 05:
Well, what's missing in 781?

[00:16:49] Speaker 05:
What about this claim isn't disclosed in 781?

[00:16:54] Speaker 04:
The circuit.

[00:16:56] Speaker 04:
What we knew before, what was in the prior art, was an optical sensor, a mouse.

[00:17:02] Speaker 04:
that's in prior art, sewing machines in the prior art.

[00:17:05] Speaker 04:
The way to connect those two, that wasn't in the prior art, that was in Watabi, but it wasn't in the prior art, and he had to come up with a way to connect them.

[00:17:13] Speaker 05:
Where in Watabi does it explain how to connect the two?

[00:17:15] Speaker 04:
Show me in Watabi.

[00:17:16] Speaker 04:
It explains them.

[00:17:17] Speaker 05:
You just said that's in Watabi.

[00:17:19] Speaker 04:
Right, paragraph 21 and 22.

[00:17:20] Speaker 04:
I just wanted to say that it's a fully formed patent application, so it's all throughout, but paragraph 21 and 22 is where it goes into great detail.

[00:17:29] Speaker 05:
Paragraph 21.

[00:17:32] Speaker 05:
The second interrupt procedure of the microcomputer?

[00:17:35] Speaker 03:
Correct.

[00:17:41] Speaker 05:
And so the rotational speed n of the sewing machine motor 32 is calculated from variable L that indicates the distance of the movement of the fabric.

[00:17:49] Speaker 05:
So this disclosure is what?

[00:17:56] Speaker 05:
How would you explain what this disclosure tells me that's missing from this picture?

[00:18:01] Speaker 04:
Well, it provides a calculation there at the bottom in paragraph 21 and it talks about how that information calculates.

[00:18:10] Speaker 04:
It communicates with the motor and with the shaft and tells it how many rotations and revolutions to make in response to the changing speed and the detected speed that's changing versus.

[00:18:23] Speaker 05:
Yes, I'm sorry, keep going.

[00:18:24] Speaker 04:
Versus Mr. Bowlby's argument, which was a pedal

[00:18:30] Speaker 04:
that says go fast, go slow, which is really nothing more than a potentiometer.

[00:18:34] Speaker 04:
Give it more juice, give it less juice.

[00:18:38] Speaker 04:
A circuit to connect that to a shaft is something- Boy, are you young.

[00:18:42] Speaker 00:
I'm sorry?

[00:18:43] Speaker 00:
I said, boy, are you young.

[00:18:44] Speaker 00:
It used to be done with a leather pulley.

[00:18:48] Speaker 04:
But the point being, that's very simple.

[00:18:50] Speaker 04:
That's something very simple.

[00:18:51] Speaker 04:
Yes, pedal adjustment was in the priority, certainly.

[00:18:56] Speaker 04:
But the technology to connect pedal adjustment with needle speed

[00:19:00] Speaker 04:
is rudimentary.

[00:19:01] Speaker 04:
The technology to connect a varying rate of detection that's constantly changing and constantly being recalculated, that wasn't in the technology.

[00:19:10] Speaker 04:
The record shows, if we're going to believe everything in the record, that it was tough.

[00:19:14] Speaker 04:
It took him a long time to figure it out.

[00:19:17] Speaker 04:
He came up with a

[00:19:21] Speaker 04:
quote unquote proof of concept that he showed at the party.

[00:19:24] Speaker 05:
What does 782 show?

[00:19:26] Speaker 05:
We're not going to disagree on the four documents, I'm sure.

[00:19:29] Speaker 05:
So what does 782 add?

[00:19:31] Speaker 05:
Is that just the detection means, that flow chart, or does that flow chart go to the control circuit means?

[00:19:39] Speaker 04:
Well, I think that that flow chart shows nothing more than what goes on inside a mouse.

[00:19:44] Speaker 04:
That's what goes on inside a computer mouse.

[00:19:47] Speaker 04:
It takes these measurements.

[00:19:50] Speaker 04:
and it constantly reassesses them and it kicks out an impulse and that's why you see the cursor move on your screen when you move it because it's performing this calculation.

[00:20:03] Speaker 04:
To take that information and then turn it into, through circuitry to communicate with the stitch head or the needle to go faster or slower in response to the detected motion, that's something that wasn't done until Watabi and the inventor

[00:20:18] Speaker 04:
himself had considerable difficulty making it happen.

[00:20:21] Speaker 04:
It wasn't until November 2015.

[00:20:22] Speaker 05:
The hard thing for me is there's no circuitry disclosed in Watabi.

[00:20:25] Speaker 05:
I mean, there's no circuitry.

[00:20:27] Speaker 05:
All there is in Watabi is this disclosure of some of these variables and the way to make a couple calculations, which are so simple.

[00:20:38] Speaker 05:
I mean, L equals 1 over 2 times 1 half.

[00:20:41] Speaker 05:
I mean, that's not really complex electrical engineering technology.

[00:20:46] Speaker 05:
I'm just wondering, because the disclosure in Watabi doesn't seem to be at some high level of detail or great addition to the technology.

[00:21:00] Speaker 04:
So when we talk about a circuit, I'm not meaning it necessarily in terms of a circuit diagram, but I'm meaning it in terms of explaining in some detail how you get the needle to change its speed in response to the detected motion.

[00:21:15] Speaker 04:
That's not something that's evident in any of these four pre-Watabi documents.

[00:21:20] Speaker 05:
And it's something that if you- Doesn't this just say, doesn't Watabi just say the microcomputer will just do it based on counting the number of rotations of the motor?

[00:21:30] Speaker 04:
No, it provides this calculation and the calculation- What calculation?

[00:21:35] Speaker 04:
Well, the one you just recited.

[00:21:38] Speaker 05:
Well, that's just an example of one rate, isn't it, that you could use?

[00:21:44] Speaker 05:
I don't know, I mean, maybe I don't, I might not, look, I'm... The calculation is N, which is... Rotational speed of the sewing machine motor.

[00:21:57] Speaker 05:
It's L over... Like I said, rotation.

[00:21:59] Speaker 04:
Yeah, and L is the accumulated... Is that L?

[00:22:01] Speaker 05:
No, I thought things as one.

[00:22:03] Speaker 04:
That's L.

[00:22:03] Speaker 04:
It's L. It's capital L, which is discussed in the first interrupt procedure.

[00:22:07] Speaker 05:
Oh, you're at n equal L over a times 2t.

[00:22:10] Speaker 05:
I was at the lower one, which is n equal 1 over 2 times 1 half.

[00:22:13] Speaker 04:
I'm sorry.

[00:22:14] Speaker 04:
And L is fairly complex.

[00:22:15] Speaker 04:
And that's something that's also not disclosed.

[00:22:17] Speaker 04:
You have to set a time frame.

[00:22:19] Speaker 04:
And there's a summing that has to take place.

[00:22:21] Speaker 05:
And you sum every x number of- And none of that is disclosed in here.

[00:22:24] Speaker 05:
None of that is disclosed.

[00:22:25] Speaker 04:
Where is that disclosed?

[00:22:26] Speaker 04:
That's in the first interrupt procedure.

[00:22:28] Speaker 04:
Paragraph 18 through 21, that's talking about L, that's talking about accumulating the time.

[00:22:49] Speaker 05:
Okay, dumb question, but isn't this first interrupt procedure just measuring

[00:22:53] Speaker 05:
the distance of the movement of the fabric?

[00:22:55] Speaker 04:
It is.

[00:22:55] Speaker 04:
It's measuring it and accumulating it through the sensor that's detecting it.

[00:22:59] Speaker 04:
What do you mean accumulating it?

[00:23:02] Speaker 04:
Adding it up.

[00:23:02] Speaker 04:
It's coming up with this term L. So it's coming up with a number that is L. It's the amount of accumulated distance.

[00:23:11] Speaker 02:
So if the first distance is too small, it holds on to that and adds the next measurement because otherwise you could go forever with

[00:23:19] Speaker 02:
as well as series of effectively dealing with the bunching.

[00:23:22] Speaker 04:
It's a time interval.

[00:23:26] Speaker 04:
So there's an interval that you set.

[00:23:28] Speaker 04:
And it takes 1,500, I believe it said somewhere, pictures per second.

[00:23:34] Speaker 04:
And in order to decide, you've got to take some number of those, some subset, and see how much it moved in that subset of time.

[00:23:42] Speaker 04:
And that's what L is.

[00:23:43] Speaker 04:
And you can set L to be, I believe in the example it's set as

[00:23:50] Speaker 04:
one, so one second.

[00:23:55] Speaker 04:
And in that time, you add up what happened, I'm sorry, I misspoke, L is the distance, time is T1.

[00:24:03] Speaker 04:
T1 is referred to in the first interrupt procedure as well.

[00:24:06] Speaker 05:
I guess the hard thing for me is this first interrupt procedure, for example, it just says, okay, you've got a sensor, and what you're gonna be measuring is the shift in the image of the sensor

[00:24:20] Speaker 05:
taken by the sensor as it moves.

[00:24:21] Speaker 04:
I mean, why isn't... Well, let me try to answer that, because what you just described is what a mouse did and does.

[00:24:33] Speaker 04:
That's what an optical mouse does.

[00:24:34] Speaker 05:
I know, and that's what's disclosed at 782, right?

[00:24:37] Speaker 05:
At a minimum.

[00:24:38] Speaker 04:
Right.

[00:24:39] Speaker 04:
At a flow chart.

[00:24:40] Speaker 04:
There's no dispute about that.

[00:24:42] Speaker 04:
He took a mouse owner's manual or user's manual and more or less copied the data that's in it.

[00:24:50] Speaker 04:
That flow chart just represents what a mouse does.

[00:24:52] Speaker 05:
Yes, but I guess you're agreeing with me, which makes it seem like maybe I don't understand what I'm thinking, which is, isn't based on his disclosure, isn't that good enough to really

[00:25:07] Speaker 05:
be comparable to what is in fact disclosed in Watabi?

[00:25:10] Speaker 05:
I'm just trying to figure out what really leap is there in Watabi?

[00:25:15] Speaker 05:
What important thing does Watabi tell us about how to do this that isn't present in the documents that he was able to show?

[00:25:22] Speaker 04:
It's this calculation, this second interrupt procedure in 21 and 22.

[00:25:29] Speaker 04:
Because that's the way that you get the needle speed to change in response to the changing motion detection.

[00:25:36] Speaker 04:
But documents to establish conception, to prove what went on inside the mind of an inventor, I believe that's a different standard.

[00:25:47] Speaker 00:
Let me just say, just so you understand and don't abandon your discussion, not everybody up here necessarily believes that the evidentiary rulings were erroneous.

[00:26:02] Speaker 04:
That might provide me a good transition if I may.

[00:26:06] Speaker 04:
Because I do believe that provides an alternative basis of affirmance.

[00:26:09] Speaker 04:
It's a direct shot.

[00:26:10] Speaker 04:
You don't even have to get into any of this legal sufficiency.

[00:26:14] Speaker 04:
Every single bit of the relevant evidence was analyzed by the court and found to be unreliable.

[00:26:19] Speaker 04:
I won't spend my time there.

[00:26:21] Speaker 04:
I'll go to another alternative basis for affirmance, and that's that Bernina didn't carry its burden of showing reasonable diligence below.

[00:26:28] Speaker 04:
But that was not decided by

[00:26:30] Speaker 04:
It was not by the board.

[00:26:32] Speaker 04:
It was not reached, but the records closed.

[00:26:34] Speaker 02:
Can we spend just one minute, I guess, on the reliability of the evidence?

[00:26:39] Speaker 02:
Certainly.

[00:26:39] Speaker 02:
What's unreliable about the evidence since a lot of it, I think, without meaningful dispute, made its way into essentially contemporaneous, not pre-October 8, but documents that were created and eventually made their way into the February

[00:27:00] Speaker 02:
2003 provisional application.

[00:27:03] Speaker 02:
There's a lot of surrounding circumstances that make very plausible that these four documents and so on and indeed the narrative about the birthday party in August, if that's what it was.

[00:27:19] Speaker 04:
Well, it's the dates on them.

[00:27:21] Speaker 04:
We don't have any basis to know that they are in fact the dates on which they're created.

[00:27:26] Speaker 04:
his letter later in May of 2009 where he couldn't say with certainty that they were the dates on which they were created.

[00:27:33] Speaker 04:
There's the screenshot that shows that the dates shown on the front of the computer drawings was different than the last modified date.

[00:27:41] Speaker 04:
That calls into question the veracity of the dates of creation of these documents.

[00:27:46] Speaker 05:
Okay, but time out.

[00:27:49] Speaker 05:
I make sure I'm not missing something.

[00:27:51] Speaker 05:
One of the things the board said, and they said this critically, and this is part of why I was so

[00:27:56] Speaker 05:
intensely bothered by it, is one of the reasons they said the date is not adequate is, for example, on the September 29, 2002 date on the document.

[00:28:06] Speaker 05:
The board says, well, we don't know it was really September 29, 2002, because Mr. Kerner doesn't say he prepared the document on that day.

[00:28:13] Speaker 05:
He says he prepared it on or before September 29, 2002.

[00:28:17] Speaker 05:
Well, I find that to be a little frustrating, right?

[00:28:20] Speaker 05:
Because before September 29, 2002,

[00:28:23] Speaker 05:
That doesn't help you.

[00:28:24] Speaker 05:
Like, so, and I mean, look, have you ever prepared a document?

[00:28:28] Speaker 05:
I mean, sometimes you sit down and you start writing it and the end date you put on it is this final day that you completed it.

[00:28:33] Speaker 05:
I just don't see how his statement that he worked on it, he worked on it in advance of September 29th, 2002 and finished it on that day means that somehow it shouldn't be credited with at least a September 29th, 2002 date.

[00:28:45] Speaker 04:
I think if he were alive and provided testimony, maybe so.

[00:28:48] Speaker 04:
You know, maybe we could take all this in and a totality of the circumstances.

[00:28:52] Speaker 05:
Testimony is he prepared it on or before September 29, 2002.

[00:28:55] Speaker 04:
That's not sworn testimony.

[00:28:57] Speaker 04:
That's a letter from 2009.

[00:28:58] Speaker 04:
And it wasn't subject to any kind of cross-examination.

[00:29:02] Speaker 04:
We don't have any sworn, invent, or testimony in this case.

[00:29:04] Speaker 04:
In a case of sworn, invent, or testimony, maybe we take documents like this.

[00:29:07] Speaker 04:
Maybe we process them through a little bit of a relaxed filter.

[00:29:12] Speaker 04:
In this case, we have to rely on the documents and the documents alone to establish what went on inside the mind

[00:29:18] Speaker 04:
of the inventor.

[00:29:19] Speaker 05:
And the document has a date on it.

[00:29:21] Speaker 05:
What evidence is there that it doesn't have that date?

[00:29:24] Speaker 04:
So what could have happened is, in 2009, he gets sent back by his lawyers.

[00:29:29] Speaker 04:
His lawyer says, go find your information.

[00:29:32] Speaker 04:
He digs through his stuff.

[00:29:34] Speaker 04:
Maybe he finds these documents.

[00:29:35] Speaker 04:
They're not dated.

[00:29:36] Speaker 04:
And he says, I know what was there.

[00:29:38] Speaker 05:
There's no evidence that he later in time put the date on them.

[00:29:42] Speaker 04:
It's their burden to establish certainty, however.

[00:29:45] Speaker 04:
So the point, I'm just running through a hypothetical.

[00:29:47] Speaker 04:
And I'm not calling him a crook.

[00:29:48] Speaker 04:
I'm saying this is very well could have happened.

[00:29:50] Speaker 04:
He says, I'm positive.

[00:29:52] Speaker 04:
I know.

[00:29:52] Speaker 04:
I know I would create it on this date.

[00:29:54] Speaker 04:
I'm just going to put that in there.

[00:29:56] Speaker 05:
No evidence of that.

[00:29:56] Speaker 05:
You're just making stuff up at this point.

[00:29:58] Speaker 05:
There is no evidence whatsoever to even vaguely support that.

[00:30:02] Speaker 04:
Well, the burden is on the other side to establish that he- And they put proper to document with a date on it.

[00:30:08] Speaker 05:
And when you look at least at the photocopy, it's not like the date appears that it was written in a different color pen or had

[00:30:13] Speaker 05:
different even amount of pressure in writing.

[00:30:16] Speaker 05:
I mean, the date looks exactly like the rest of the dates.

[00:30:21] Speaker 04:
The best answer I can give you is that we're held to the rules of evidence in these proceedings.

[00:30:25] Speaker 04:
And they have to pass muster under the rules of evidence.

[00:30:28] Speaker 04:
And there's nothing to authenticate it.

[00:30:30] Speaker 04:
It doesn't have anything to verify that it is what it purports to be, which is a document that was created on that date.

[00:30:39] Speaker 00:
You're challenging the foundation.

[00:30:40] Speaker 04:
Correct.

[00:30:42] Speaker 04:
And had the board ruled on my motion to dismiss and granted it, we'd be reviewing that for abuse of discretion, which is a pretty relaxed standard.

[00:30:58] Speaker 03:
With that, I'll see that I'm done with my time.

[00:31:01] Speaker 03:
Thank you, Mr. Freeman.

[00:31:03] Speaker 05:
Mr. Volpe, you have a little bit of time left for rebuttal.

[00:31:08] Speaker 05:
Oh, you're not well paid.

[00:31:09] Speaker 05:
Yeah, yeah.

[00:31:10] Speaker 05:
You'll have a little bit of time left for remittal.

[00:31:12] Speaker 01:
I'm sorry, Your Honor.

[00:31:13] Speaker 01:
I thought you said that Parrish had time left.

[00:31:17] Speaker 01:
Just a couple of quick things, Your Honor.

[00:31:18] Speaker 01:
I want to go back to the 782, the 929 figure again.

[00:31:24] Speaker 01:
And I think one of the things that was overlooked in counsel's argument here is the calculation here goes not just to amounts.

[00:31:31] Speaker 01:
It goes specifically to when you set the stitch length

[00:31:36] Speaker 01:
The box there indicates.

[00:31:38] Speaker 02:
Let me just say, it seems to me that what the board said was right near the bottom between compare stitch length versus X squared plus Y squared and stitch.

[00:31:51] Speaker 02:
That's where control circuitry to make the stitch happen occurs.

[00:31:55] Speaker 02:
And that is what is not shown.

[00:31:58] Speaker 02:
There's no control circuitry.

[00:32:00] Speaker 02:
And without the conception of how to do this little

[00:32:04] Speaker 02:
step, what is it, FL, oh, FL less, right?

[00:32:07] Speaker 02:
So if the stitch length is less than the X squared plus Y squared, then you go ahead and stitch, otherwise you loop back around to the top and you accumulate the distances until you get an X squared plus Y squared is greater than the stitch length.

[00:32:22] Speaker 02:
That's what's missing, right there.

[00:32:24] Speaker 01:
But the point is, your honor, that is the point at which it is the state of the art.

[00:32:29] Speaker 01:
The one skill in the art at that point

[00:32:32] Speaker 02:
But that's what the board said was missing as conception.

[00:32:38] Speaker 02:
And is it not your burden to show that, is that a factual question?

[00:32:46] Speaker 02:
That the circuitry to produce that stitch was so much a state of the art that it doesn't have to be described.

[00:32:57] Speaker 01:
That's right, Your Honor, because the sewing machine itself is what would produce the stitch.

[00:33:01] Speaker 00:
Are you agreeing with him that that's a factual question?

[00:33:05] Speaker 01:
Yes, Your Honor.

[00:33:06] Speaker 01:
It's certainly a factual question, but at this point, we believe that because it was an item of state of the art, that there was no evidence required such as expert evidence that the board referred to, because the sewing machine itself had the motor that was capable of

[00:33:25] Speaker 01:
pushing a stitch a certain length.

[00:33:27] Speaker 01:
That all existed.

[00:33:29] Speaker 01:
All that was required at this point was to know what was the information that you were going to transmit to it.

[00:33:36] Speaker 01:
And to the extent that circuitry, and I believe Judge Moore pointed it out, if you look at the figure two and three at 513 and 514 of Watabi, Watabi never says how to do any of this.

[00:33:52] Speaker 01:
Watabi says you take an image, and if it doesn't,

[00:33:55] Speaker 01:
show up and you take another image and you use that as your base image.

[00:33:59] Speaker 01:
And then you wait until you get other images.

[00:34:01] Speaker 01:
But Watabi never says anything about whether you're putting images through a shift register, whether you're somehow putting a data stream together on how many pixels they are.

[00:34:12] Speaker 01:
So to the extent that Watabi teaches that circuit, as the final written decision says, then the 446 pattern or the

[00:34:26] Speaker 01:
2006 exhibit does as much to teach it.

[00:34:32] Speaker 01:
And if there are no other questions on that, I have just one other point I want to make.

[00:34:38] Speaker 01:
As far as the reliability of the evidence goes, counsel is correct that we gave, as part of the evidence, we produced a screenshot from the computer which showed a different date.

[00:34:51] Speaker 01:
And that was done because when we had

[00:34:54] Speaker 01:
Mrs. Kerner, after he was deceased, she went through his records.

[00:34:59] Speaker 01:
And that was part of the record that he had made with that.

[00:35:04] Speaker 01:
And that was why it was produced.

[00:35:06] Speaker 01:
That was not something that was subsequently discovered.

[00:35:09] Speaker 01:
That was actually part of Mr. Kerner's records at the time.

[00:35:12] Speaker 01:
I think that was clear from the record.

[00:35:15] Speaker 05:
Thank you.

[00:35:17] Speaker 05:
I thank both counsel for their arguments.

[00:35:19] Speaker 05:
The case is taken under submission.

[00:35:21] Speaker 05:
Thank you.

[00:35:33] Speaker 03:
The Honorable Court is adjourned until tomorrow morning at 10 a.m.

[00:36:04] Speaker 03:
That's why I stand here the whole time.

[00:36:19] Speaker 03:
Because that's the easiest thing.

[00:36:31] Speaker 03:
Next time, we'll have to find out how to make a visual instrument.

[00:36:42] Speaker 03:
Yeah.

[00:36:43] Speaker 03:
Everybody used it.

[00:36:46] Speaker 03:
That is the funny part about it.

[00:36:52] Speaker 03:
It must have been here or not.

[00:36:57] Speaker 03:
Yeah.

[00:36:58] Speaker 03:
I didn't even notice that.

[00:37:04] Speaker 03:
I didn't understand if they were supposed to be like what?