[00:00:01] Speaker 06:
So we're consolidating the first three cases this morning for purposes of argument, 15-1314, 15-1315, and 15-1316, Cuttsworth versus Motive Power.

[00:00:16] Speaker 06:
I understand you're splitting the time with Mr. Courtney.

[00:00:19] Speaker 06:
And could you just indicate to us up front, are you taking one particular or two particular of the cases or issues or what?

[00:00:26] Speaker 00:
The 16 case.

[00:00:27] Speaker 00:
And it's the issue of obviousness in the 018 patent, Your Honor.

[00:00:31] Speaker 00:
It divides cleanly that way.

[00:00:32] Speaker 00:
Mr. Courtney will be addressing the claim construction issues that arise in the 906 and 354 patents.

[00:00:38] Speaker 06:
OK.

[00:00:39] Speaker 06:
And the case you have also involves the design issue?

[00:00:44] Speaker 00:
The design choice issue, correct.

[00:00:45] Speaker 06:
Yes, exactly.

[00:00:48] Speaker 06:
And we're running your clocks individually.

[00:00:50] Speaker 06:
Great.

[00:00:51] Speaker 06:
Thank you.

[00:00:51] Speaker 00:
OK.

[00:00:55] Speaker 00:
May it please the court.

[00:00:57] Speaker 00:
This court's precedent is clear.

[00:00:59] Speaker 00:
The party alleging obviousness needs to proffer evidence of why a skilled artisan would combine the references to arrive at the claimed invention.

[00:01:10] Speaker 00:
And the board needs to analyze that evidence or the lack of evidence and make findings on that issue.

[00:01:19] Speaker 00:
KSR tells us that 418-L's finding should be explicit.

[00:01:23] Speaker 00:
That did not happen in this case.

[00:01:26] Speaker 00:
The board failed to conduct the legally required analysis.

[00:01:30] Speaker 00:
That failure was legal error, which we respectfully submit requires this court to reverse the conclusion of obviousness.

[00:01:37] Speaker 00:
Turning to the specific claims, Your Honor, first with respect to Claim 5, Dependent Claim 5.

[00:01:44] Speaker 00:
That claim the reference relied on is viscid.

[00:01:46] Speaker 00:
And the argument is there'd be a modification of BICET.

[00:01:50] Speaker 00:
There's no finding by the board of any teaching within BICET that would suggest making the modification.

[00:02:00] Speaker 00:
Nor is there any finding that there's a general teaching in the art to make the modification.

[00:02:06] Speaker 00:
It's entirely a hindsight-based analysis that we are seeing with the board's opinion.

[00:02:11] Speaker 00:
to look at this in hindsight and say you could take this case.

[00:02:13] Speaker 02:
To make the modification or to combine the references?

[00:02:16] Speaker 02:
To modify the references?

[00:02:18] Speaker 00:
So with respect to claim five, Your Honor, that's dependent claim five, which talks about that the mount block, the claim says the mount block has a spring, and that spring is its spring force on the brush holder when it's engaged.

[00:02:30] Speaker 00:
The argument there by my friend is to modify BISSET to take

[00:02:36] Speaker 00:
Spring spring 32 which is on a piece called the frame which is a part of the turbine and to move that to the Mod block.

[00:02:45] Speaker 00:
So it's a modification there your honor.

[00:02:48] Speaker 02:
The board didn't say in its opinion if the board had said it's an opinion if one of ordinary skill in the art from time to time will be inclined to

[00:03:02] Speaker 02:
modify a reference or to have a design choice, if you will.

[00:03:08] Speaker 02:
If they had a little section on the law saying one of ordinary skill and the art from time to time would do that, and case law authorizes one of ordinary skill and the art to do that, and we think that's what's happened here.

[00:03:23] Speaker 02:
Would you still be making this argument if the board opinion had said that?

[00:03:26] Speaker 00:
Well, I think your question perfectly illustrates the issue.

[00:03:29] Speaker 02:
With the answer, you wouldn't be making the argument.

[00:03:31] Speaker 02:
You'd say, no, well, you might disagree, but you wouldn't be claiming that the board misapplied the law.

[00:03:38] Speaker 00:
Well, respectfully, I would want to see what the analysis was by the board.

[00:03:42] Speaker 00:
That's the whole problem here.

[00:03:43] Speaker 00:
There was no analysis.

[00:03:45] Speaker 00:
So I can't.

[00:03:46] Speaker 02:
It's difficult.

[00:03:47] Speaker 02:
The analysis that we see post-KSR is

[00:03:51] Speaker 02:
one of ordinary skill would have been inclined or would have been motivated to make that modification, period.

[00:03:57] Speaker 02:
I mean, it's just a statement.

[00:03:59] Speaker 02:
And we see it all the time in cases coming out of the board, coming up here, where the statement, the predicate for the conclusion is written in the opinion.

[00:04:10] Speaker 02:
But in this case, the predicate wasn't written in the opinion.

[00:04:13] Speaker 02:
Why don't we just assume it was there?

[00:04:14] Speaker 02:
There's no other basis on which the board could have done this.

[00:04:18] Speaker 00:
Again, I really think your question

[00:04:20] Speaker 00:
We're speculating.

[00:04:22] Speaker 00:
And that's the problem here.

[00:04:24] Speaker 02:
Well, what ground would have permitted the board to make the conclusion it did, i.e., that this design choice was made, other than uttering complete arbitrary behavior?

[00:04:39] Speaker 02:
What would have led three members of the board to say, this is the correct result?

[00:04:44] Speaker 02:
Other than the fact that one of our narrates still in the art would have done it.

[00:04:48] Speaker 00:
Respectfully, I don't know, because they didn't do the analysis.

[00:04:51] Speaker 02:
But isn't the choice, the assumption that the board knew what the law was?

[00:04:56] Speaker 02:
This is an unusual case.

[00:04:58] Speaker 02:
If you go back and look at the petition for review here and the rest, there wasn't much by way of law larded in in front.

[00:05:08] Speaker 02:
You see KSR cited maybe twice.

[00:05:10] Speaker 00:
So I think this court's precedent speaks to your concern, Your Honor.

[00:05:13] Speaker 00:
If we look, for example, at the Chu case.

[00:05:16] Speaker 00:
In the Chu case, it was a bag filter, a mechanical device.

[00:05:19] Speaker 00:
And what the court said there is there was simply no analysis done of why you would make the modification that the examiner had said would be a design choice.

[00:05:29] Speaker 00:
And that was a problem.

[00:05:30] Speaker 00:
And that's why this court reversed.

[00:05:32] Speaker 00:
Similarly, in the Gall case, Your Honor, the Federal Circuit faulted the commissioner

[00:05:38] Speaker 00:
for not explaining how or why this would be done.

[00:05:41] Speaker 00:
Now, both of those cases also emphasize that an important factor to look at is the function.

[00:05:47] Speaker 00:
Here, I respectfully submitted that if the board had looked at the function, they would have found that they are very different.

[00:05:53] Speaker 00:
The spring in BISSET is to make an electrical connection.

[00:05:57] Speaker 00:
And BISSET teaches that explicitly.

[00:05:59] Speaker 00:
BISSET says nothing about that spring being a mechanical connection that does what claim five does, which is provide a tensioning force so that

[00:06:07] Speaker 00:
you've got spring force to hold that brush holder in these environments.

[00:06:11] Speaker 00:
Claim five explicitly requires the spring to be on the mount pot to exert a spring force on the brush holder only when it's engaged.

[00:06:19] Speaker 02:
I just think it's hard for me to believe that the board could have met this leap of faith that you seem to think they made, unless they had been faithful in following the law, which is to say we can only do that if an ordinary artisan would have been inclined to do that.

[00:06:37] Speaker 02:
Let me ask you a question.

[00:06:38] Speaker 02:
Who is the ordinary artisan over at the board?

[00:06:43] Speaker 00:
We put in evidence, and it was not challenged by our opponent, that it's a mechanical engineer.

[00:06:48] Speaker 00:
with additional experience working in this field.

[00:06:51] Speaker 00:
The citation to that evidence is A619.

[00:06:54] Speaker 00:
That's our experts' declaration.

[00:06:55] Speaker 00:
Now, the board did not address that specifically, but that is on disputed.

[00:06:59] Speaker 00:
So it's this mechanical engineer with some experience in this brush holder field.

[00:07:04] Speaker 02:
Now, but whether or not that ordinary artisan would have been motivated to either modify or reference, which we all agree is possible,

[00:07:15] Speaker 02:
or to combine, it's the board that's saying, we are saying the ordinary artisan, right?

[00:07:23] Speaker 02:
We can identify who the ordinary artisan is.

[00:07:28] Speaker 02:
Correct.

[00:07:29] Speaker 02:
But then the next question is, well, what's the ordinary artisan going to do when they walk up to this prayer?

[00:07:34] Speaker 02:
What are they going to do?

[00:07:36] Speaker 02:
Are they going to say, oh, I would modify?

[00:07:39] Speaker 02:
Or I would combine.

[00:07:41] Speaker 00:
I think you're hitting on the question.

[00:07:43] Speaker 02:
So we then have an opinion by the board that says modify and combine.

[00:07:50] Speaker 00:
So with respect to claim five, they say modify basically.

[00:07:53] Speaker 02:
And also there's a combination issue.

[00:07:55] Speaker 00:
There is, there is.

[00:07:56] Speaker 02:
I'm just smooshing my case together so we save some time.

[00:08:01] Speaker 02:
So the board says modifying and combine.

[00:08:08] Speaker 02:
And what I'm saying is I can't see how the board responsibly could have done that unless they were, through their mind, they just failed to say it.

[00:08:17] Speaker 02:
They were saying one ordinary skill in the art would be inclined to do this.

[00:08:22] Speaker 00:
Your Honor, we don't know.

[00:08:24] Speaker 02:
And I can't assign, I mean, the agencies behave rationally and we believe they behave according to the law.

[00:08:33] Speaker 02:
I can't believe that this was,

[00:08:35] Speaker 02:
three administrative judges on the frolic and detour who just said, we have no reference whatsoever to what the law is.

[00:08:47] Speaker 02:
We have no reference at all to what an ordinary artisan would do.

[00:08:50] Speaker 02:
We're just going to do it in the closet.

[00:08:53] Speaker 00:
I submit that's the problem here.

[00:08:55] Speaker 00:
I would point the court to the board has to do this.

[00:08:59] Speaker 00:
I point you to St.

[00:09:00] Speaker 00:
Sue, which says specifically,

[00:09:04] Speaker 00:
Even if the abuse of common knowledge is assumed to derive from the agency's expertise, that does not substitute for authority.

[00:09:13] Speaker 00:
Zirco says that the board's general expertise in the subject matter may provide sufficient support for conclusions as to peripheral issues, but with respect to core factual findings,

[00:09:26] Speaker 00:
In a determination of patentability, however, the board cannot simply reach conclusions based on its own understanding or experience or on its assessment of what would have been basic knowledge or common sense.

[00:09:38] Speaker 06:
Well, it seems to me, reading the opinion, the one thing that seems to be missing here is the board starts off with an analysis which it purports and heads to say what the petitioner's contentions are.

[00:09:50] Speaker 06:
And then it moves forward to your argument, some of which it deals with in great detail.

[00:09:56] Speaker 06:
I surmise reading it, and I may be the only one, that essentially the board silently was telling us they're essentially adopting the analysis and what they've laid out in terms of the petitioner.

[00:10:09] Speaker 06:
And then they say, OK, we're accepting that.

[00:10:11] Speaker 06:
except we're going to consider your arguments with respect to those.

[00:10:16] Speaker 06:
And then you may fault them for the result, but with respect to the arguments you make, they do give a fairly detailed analysis, right?

[00:10:23] Speaker 00:
I would respectfully disagree with respect to all the analysis, but especially with claims five and eight, the dependent claims.

[00:10:30] Speaker 00:
There's no analysis.

[00:10:31] Speaker 00:
There's the issue of would you combine and the issue of could you combine.

[00:10:34] Speaker 00:
There are two sentences with respect to claim five that relate to could you do it.

[00:10:38] Speaker 02:
Are you talking about now the opinion of the board, or are you talking about the petitioners?

[00:10:44] Speaker 00:
The final written decision, the board at 25.

[00:10:46] Speaker 02:
What the chief judge, I think, was saying that also was in the back of my mind was that I went back and looked to see what, because it's clear from the board's opinion that they are adopting the arguments that would be made to them by the petitioner.

[00:11:03] Speaker 02:
So I said, we'll go back a little bit to the petitioner's argument, and it looked to me like the petitioner was flesh on the bones in the petition that you say is absent in the border claim.

[00:11:15] Speaker 00:
Your Honor, if I may address that, with unclaimed five, the argument now being offered to this court was not originally offered in the petition that you could move that spring.

[00:11:25] Speaker 00:
That was not in their petition.

[00:11:27] Speaker 00:
If you look at their petition at A95 and 96, the original argument was,

[00:11:31] Speaker 00:
You could simply, that's spring boots and that's good enough.

[00:11:34] Speaker 00:
They didn't see or think that it was necessary to move it to the mount block.

[00:11:38] Speaker 00:
We pointed out in our response, hey, the claim says it's the mount block.

[00:11:43] Speaker 00:
And then they pivoted and replied.

[00:11:44] Speaker 00:
So they didn't even make that argument.

[00:11:45] Speaker 00:
With respect to claim A, it is similar, Your Honor, that the argument they made to the board there is the same.

[00:11:59] Speaker 00:
It's essentially the same argument, but there was nothing in it addressed.

[00:12:02] Speaker 00:
Would you combine it?

[00:12:03] Speaker 00:
And if we look at the board's final decision on claimate, there's just absolutely nothing there.

[00:12:08] Speaker 00:
They don't even, in claimate, use the word design choice.

[00:12:11] Speaker 00:
I would submit under this court's precedent, both in terms of the design choice cases, Chu and Gall,

[00:12:17] Speaker 00:
And under Sengsu and Zirco.

[00:12:20] Speaker 02:
Well, the design choice language shows up in a kind of a serendipitous way.

[00:12:26] Speaker 02:
I can point you to legions of 103 cases where design choice was behind what was happening, but the words weren't used to describe the analysis.

[00:12:36] Speaker 02:
The fact that the design choice words pop up to me doesn't carry much weight.

[00:12:43] Speaker 02:
Because you can see, when you read an opinion, you can see whether that's what this design choice has to do with modifying a previous reference, right?

[00:12:52] Speaker 00:
And even recently, the court issued its opinion, Belden v. Burkett.

[00:12:56] Speaker 00:
And that is not a design choice case.

[00:12:58] Speaker 00:
But I think that case is very instructive.

[00:13:01] Speaker 00:
That was a case involving cables.

[00:13:03] Speaker 00:
And the use of the patent was about preventing twisting of the core and the cables.

[00:13:09] Speaker 00:
And in that case, in finding the independent claim obvious, here's what the board pointed to.

[00:13:16] Speaker 00:
And this court affirmed the finding.

[00:13:17] Speaker 00:
There was a teaching in the reference that you would align the core and the cables.

[00:13:24] Speaker 00:
And the board said, and I think quite reasonably, and this court said, well, if you know to align it, you know you're preventing twisting.

[00:13:30] Speaker 00:
We don't have anything like that here.

[00:13:32] Speaker 00:
We have a claim or a piece of prior art that uses this thing for one function, a claim that's a very different function, and absolutely, or didn't even attempt to point to anything in the visit reference, either for claims five or eight.

[00:13:45] Speaker 06:
You have passed your time, so I'm going to, but let me ask, can I, if I can just ask you a really technical question, because we've got three different cases.

[00:13:53] Speaker 06:
The mounting block issue is presented here.

[00:13:56] Speaker 06:
Is that the same issue that Mr. Courtney is presumably going to talk about?

[00:14:00] Speaker 06:
And if, hypothetically, we were to agree on that, what does that do to this case?

[00:14:07] Speaker 00:
So you're exactly right.

[00:14:08] Speaker 00:
It's the same issue, and he's going to address it in the 354 patent.

[00:14:11] Speaker 00:
Now, if the court finds or cuts forth on these obviousness issues, and we submit then, given the record, reversal is appropriate, it's not necessary for the 018 claims.

[00:14:25] Speaker 00:
However, it is important for the 354 claims.

[00:14:29] Speaker 02:
Yeah, but what happens if we rule against you on the argument you're making now?

[00:14:33] Speaker 00:
Then we would ask that the court reach the mounting block issue.

[00:14:39] Speaker 00:
What it means is Cartman doesn't have a mounting block.

[00:14:43] Speaker 00:
So the combination falls apart for that reason.

[00:14:46] Speaker 06:
So the whole case falls apart for all claims?

[00:14:49] Speaker 00:
Yes.

[00:14:50] Speaker 02:
You win on that case, but on the other ground.

[00:14:53] Speaker 00:
We went on the other end, correct?

[00:14:55] Speaker 02:
You went on Mr. Ferdinand's round, not on yours.

[00:14:57] Speaker 02:
Correct.

[00:14:58] Speaker 02:
Well, let's hear from Mr. Ferdinand.

[00:15:10] Speaker 07:
Why don't we begin briefly where we just were with mounting block.

[00:15:14] Speaker 07:
Mounting block is in the 906, the 354 patent.

[00:15:17] Speaker 07:
The board improperly found that the broadest reasonable interpretation of mounting block would cover a mounting block that moves about during the coupling operation.

[00:15:26] Speaker 07:
We think that's inappropriate.

[00:15:28] Speaker 07:
All of the examples in the specification

[00:15:31] Speaker 07:
make clear that the mounting block is in fact fixed in place in a column 15, line 12.

[00:15:36] Speaker 07:
This is to the 354 patent that some of these citations refer to.

[00:15:40] Speaker 06:
It seems to me that the issue is, given the broadest reasonable interpretation, the board may be right that in the absence of the word fixed,

[00:15:48] Speaker 06:
It's susceptible to a broader interpretation.

[00:15:51] Speaker 06:
I know if you do an amendment in this context, obviously it's going to prejudice you in terms of your past infringement.

[00:15:59] Speaker 06:
But was there any amendment going on in these process proceedings?

[00:16:03] Speaker 07:
There was some claim cancellation for some of these, but no amendment.

[00:16:06] Speaker 07:
Cuts Forth sought to have its claims reviewed by the PTAP just as they would be reviewed in district court.

[00:16:10] Speaker 06:
And do you agree that it would have satisfied the board if the word fixed had been inserted before mounting block?

[00:16:22] Speaker 06:
In the text of the claim?

[00:16:23] Speaker 07:
Yeah.

[00:16:24] Speaker 07:
That clearly would have resolved this issue.

[00:16:26] Speaker 07:
However, we don't think that amendment was necessary to achieve this.

[00:16:28] Speaker 07:
Because?

[00:16:30] Speaker 07:
Because of the clear disclaimer in the specification.

[00:16:32] Speaker 07:
In column 15, line 12, we have the statement that the lower mount block 16 being the only portion that must be fixed

[00:16:39] Speaker 07:
to a location.

[00:16:40] Speaker 07:
I think that's a clear statement by the patentee that that's what needs to happen.

[00:16:44] Speaker 07:
I would also note that every embodiment in all the figures shows a lower mount block that's sort of bolted into place.

[00:16:50] Speaker 07:
The word welding is used, the word keyed or pinned is used.

[00:16:55] Speaker 07:
There is throughout the specification repeated reference to securing that thing in place, fixing it so that during subsequent coupling operations doesn't move about.

[00:17:04] Speaker 06:
On the point you make that the spec calls out use of keys and pins and bolts, does that necessarily mean that it would not be moved with every proceeding?

[00:17:18] Speaker 06:
I mean, is that the same as necessarily as saying fixed?

[00:17:23] Speaker 07:
I think when we look at the weight of the statements in the specification, we have the word fixed in column 15.

[00:17:28] Speaker 07:
We have these statements about welding, keying, pinning, bolting.

[00:17:31] Speaker 07:
We have the figures which show bolts being inserted into holes that hold that thing in place.

[00:17:36] Speaker 07:
And we take that all together.

[00:17:38] Speaker 07:
We have a circumstance where the patentee is clearly embracing a mouth block that stays in place.

[00:17:43] Speaker 07:
This is akin to the Abbott diabetes case.

[00:17:45] Speaker 06:
Can I ask you just another housekeeping question, which is we're talking about the 1315 case, right, the 354 patent?

[00:17:53] Speaker 07:
Yes.

[00:17:54] Speaker 06:
OK.

[00:17:54] Speaker 06:
You've got the selective coupling issue there, too.

[00:17:56] Speaker 06:
It's my understanding that selective coupling goes into one claim.

[00:18:00] Speaker 06:
But would the mounting issue go to all claims?

[00:18:03] Speaker 06:
That's correct, Your Honor.

[00:18:04] Speaker 06:
All right.

[00:18:05] Speaker 06:
So why don't you tell us a little about selective coupling?

[00:18:07] Speaker 07:
Gladly, Your Honor.

[00:18:08] Speaker 07:
Selective coupling is independent.

[00:18:09] Speaker 02:
I was going to ask you a question just about mounting for a second.

[00:18:11] Speaker 02:
If you look at figure 15B, it's on page 26 of those.

[00:18:20] Speaker 02:
It's the one that shows the bolts coming up through the bottom and going through the elliptical receptacle hole.

[00:18:27] Speaker 02:
And was the board's view that that shows that you're not fixedly held down because it can slide back and forth?

[00:18:35] Speaker 07:
The board has an allusion to that, these elongated holes into which the bolt and sort of a spacer fits.

[00:18:42] Speaker 07:
Our interpretation of this figure is that those elongated holes are to get the mounting block into the appropriate position, right?

[00:18:47] Speaker 02:
Those screw holes are... Yeah, but if you look at the elongated holes sitting on top is number 45.

[00:18:52] Speaker 02:
Number 45 is the bolt, is the nut that the bolt goes into.

[00:18:57] Speaker 02:
Yes.

[00:18:57] Speaker 02:
It looked to me like it was designed to just slide exactly right down into the hole, that there wasn't any slippage one way or the other.

[00:19:04] Speaker 07:
That's also our interpretation.

[00:19:05] Speaker 02:
So that when you put the bolts up, it's locked, it's fixed.

[00:19:08] Speaker 07:
That is also our interpretation of that figure.

[00:19:10] Speaker 02:
But what else is there that suggests non-fixedness in that drawing?

[00:19:18] Speaker 02:
That has to be the notion that somehow the nut that's elliptical also can slide back and forth.

[00:19:25] Speaker 02:
Is that the idea?

[00:19:27] Speaker 07:
We are trying to now stand in the shoes of the board in terms of what it meant.

[00:19:30] Speaker 07:
We don't think there is any notion of movement or slippage in this figure.

[00:19:34] Speaker 07:
We think the compressive force of the screw is going to hold that in place, plus the way it fits.

[00:19:38] Speaker 02:
Well, if you were going to draw number 45, the nuts, to show them sliding into the hole where they fit, if you wanted to show that they fit real tightly, how would you do it other than what they've done in that drawing?

[00:19:53] Speaker 07:
I can't think of a way.

[00:19:55] Speaker 02:
If you made the nuts very much smaller than the hole, that would be suggestive of some movement, right?

[00:20:02] Speaker 07:
It might suggest that.

[00:20:03] Speaker 07:
You'd need to deal with the compressive force of the bolt going into the nut, which I think would otherwise hold it in place.

[00:20:11] Speaker 07:
In fairness, I should note that there is a

[00:20:15] Speaker 07:
Belleville washer 185 that has some flex in it.

[00:20:18] Speaker 07:
And the board may have been referring to that.

[00:20:20] Speaker 07:
But I don't think that changes the overall fixating.

[00:20:22] Speaker 02:
And we're seeing your Manning-Bach argument standing along with your selective coupling argument standing along with your extending from argument.

[00:20:29] Speaker 02:
You've got a series of arguments where what you're trying to say is, well, go look at the spec, and you understand very clearly that the broadest reasonable interpretation was too broad.

[00:20:38] Speaker 02:
But in the selective coupling issue, you've got another leg to stand on.

[00:20:44] Speaker 02:
You've got claim differentiation.

[00:20:46] Speaker 02:
So you've got an extra boost up to say, oh, we're not just reading a limitation of the claim from the spec.

[00:20:52] Speaker 02:
And on extending from, you've got the language itself.

[00:20:56] Speaker 02:
So aren't the selective coupling and the extending from arguments necessarily stronger than the Malinbach argument?

[00:21:04] Speaker 02:
We believe in all of our arguments, but certainly the- I know you believe in all your arguments, Mr. Court.

[00:21:08] Speaker 02:
You wouldn't be here otherwise.

[00:21:09] Speaker 02:
But I mean, you're adding up data points when you're doing claim construction and you're trying to say, oh, I'm not going to violate the whole rule that you can't read the limitation after the spec, but the spec is talking to you about this.

[00:21:23] Speaker 02:
Don't you feel more comfortable when you've got something else going for you like claim differentiation or the language itself extending from telling you that it's got to be doing this work?

[00:21:34] Speaker 07:
Certainly.

[00:21:35] Speaker 07:
The term selective being inserted there certainly has to separate claim two of the 354.

[00:21:39] Speaker 02:
I think what the chief judge was asking in a way is that where BRI is at stake, and it's kind of a close call, then doesn't the tie go to the board?

[00:21:51] Speaker 02:
I mean, you have a situation where you have some examples in the spec.

[00:21:56] Speaker 02:
And the question is, are we going to limit the claim to that?

[00:21:59] Speaker 02:
And we're not in the US District Court under Phillips.

[00:22:02] Speaker 02:
We're in the patent office in front of a mongrel, if Justice Souter ever would have seen one, in terms of the standard.

[00:22:13] Speaker 02:
But of necessity, the broadest legal interpretation is supposed to be broader than.

[00:22:19] Speaker 02:
claim construction in the district.

[00:22:22] Speaker 02:
So in a situation like this, when you're comparing extending from selective coupling and then mounting block, why doesn't mounting block just necessarily fall over onto that side where you say, well, it's OK?

[00:22:37] Speaker 07:
And I think the reason is that word reasonable in the broadest reasonable interpretation standard.

[00:22:40] Speaker 07:
I think on mounting block, the board has embraced a construction that just goes beyond everything in the specification, and that's not reasonable.

[00:22:48] Speaker 07:
I do want to make sure we have a chance to talk about the 906 patent.

[00:22:53] Speaker 07:
In the 906 patent, again, we see some of these themes.

[00:22:56] Speaker 07:
The board is vitiating structural requirements that are in the independent claim 14.

[00:23:01] Speaker 07:
Independent claim 14 describes functional structures, like brush cash, but it also describes how those structures relate to and connect to other structures.

[00:23:11] Speaker 07:
The board seemed to have emphasized the first and ignored the latter, and actually vitiated the latter with its claim construction.

[00:23:17] Speaker 07:
This happens in a couple of places.

[00:23:19] Speaker 07:
The first place it happens is on the term brush catch, coupled to the beam.

[00:23:24] Speaker 07:
That word coupled to has meaning.

[00:23:26] Speaker 07:
It doesn't say the brush catch is part of the beam.

[00:23:28] Speaker 07:
It doesn't say the beam includes a brush catch.

[00:23:30] Speaker 07:
It says coupled to.

[00:23:31] Speaker 07:
And that means, we think, distinct physical structures

[00:23:34] Speaker 07:
brought together into a coupling relationship.

[00:23:36] Speaker 06:
And so why is broadest reasonable?

[00:23:37] Speaker 06:
As you were just saying, it has to be reasonable.

[00:23:40] Speaker 06:
Take away the word broad, because we're allowed to do it broader.

[00:23:44] Speaker 06:
What is unreasonable about the board's construction here?

[00:23:47] Speaker 07:
The board's construction contemplates a relationship between the brush catch and beam where they're the same structure.

[00:23:53] Speaker 07:
And that's improper.

[00:23:54] Speaker 07:
This Court's Becton Dickinson opinion said it's unequivocal where a claim says you don't connect to yourself.

[00:24:03] Speaker 07:
Two structures may connect to one another.

[00:24:05] Speaker 07:
And so that's what should happen here.

[00:24:06] Speaker 07:
Couple two should be.

[00:24:07] Speaker 02:
Couple two in your reading means brought into connection with.

[00:24:11] Speaker 07:
That's correct.

[00:24:12] Speaker 02:
And you can't bring something into connection with if it's already there.

[00:24:15] Speaker 07:
That's right.

[00:24:16] Speaker 07:
And so we think this is a clear structural physical limitation.

[00:24:18] Speaker 07:
Once this court, we hope it will do, cleans that up, the board's rejection under claim 14 falls apart.

[00:24:24] Speaker 07:
And that's because of the way the rest of the claim fits together.

[00:24:27] Speaker 07:
The claim requires a beam that's in sliding engagement

[00:24:31] Speaker 07:
with the mounting block, and it requires a brush catch.

[00:24:34] Speaker 07:
In the board's analysis, it points to the same structure for both.

[00:24:37] Speaker 07:
It points to Resilient Member 56 as having sliding engagement and the brush catch, thereby vitiating the couple-two relationship.

[00:24:44] Speaker 06:
So the rejection.

[00:24:44] Speaker 06:
And we need to read, but we need to, if we agreed with you on the brush issue, we still need to read the projection extending issue.

[00:24:51] Speaker 06:
I mean, we need to reach both of those issues.

[00:24:55] Speaker 05:
Three independent bases for.

[00:24:56] Speaker 05:
There is the other reference, the Olmstead reference.

[00:24:58] Speaker 05:
We have to be right.

[00:24:59] Speaker 05:
Can't just do one.

[00:24:59] Speaker 07:
I think we have two attacks on the Olmstead reference.

[00:25:02] Speaker 07:
First, this theme we've been talking about about the board failing to respect the structural definition in the claim applies on claim 19 for Olmstead.

[00:25:11] Speaker 07:
Claim 19 says the brush catch includes a spring, but the board's analysis for the spring points to something that's in the beaker.

[00:25:19] Speaker 07:
So the board is pointing again to the wrong structure.

[00:25:21] Speaker 07:
It needs to find a spring in the brush catch, which in Olmstead are the little metal teeth

[00:25:27] Speaker 07:
25.

[00:25:28] Speaker 07:
There's no spring in there.

[00:25:30] Speaker 07:
Olmstead doesn't meet the requirements of claim 19.

[00:25:33] Speaker 02:
And then turning to the projection, we think the dictionary... No spring because the legs can't compress it, can't create a spring effect?

[00:25:41] Speaker 07:
This is the structural issue.

[00:25:42] Speaker 07:
The legs are the beam in Olmstead.

[00:25:46] Speaker 07:
And the teeth are the brush catch.

[00:25:48] Speaker 07:
If the brush catch includes a spring, that means the spring has to be inside those little teeth somehow.

[00:25:53] Speaker 07:
That's not what's happening.

[00:25:54] Speaker 07:
We're in anticipation here.

[00:25:55] Speaker 07:
This is a 102 rejection.

[00:25:57] Speaker 07:
There's not structural identity between these two.

[00:25:59] Speaker 07:
And I think reversal is appropriate.

[00:26:02] Speaker 06:
And there is reversal, because there's no obvious necessary that the petitioner is exclusively anticipation.

[00:26:07] Speaker 07:
That's correct.

[00:26:07] Speaker 07:
Also, the other side, MPI, does not assert that under the correct claim construction, that the claim construction cuts forth is proffering, that there would be any anticipation.

[00:26:18] Speaker 07:
We think the record is clean for reversal.

[00:26:20] Speaker 02:
The same way you don't argue that there is not anticipation if we disagree with your claim construction.

[00:26:26] Speaker 02:
In your perspective, both sides are rising and falling on the claims restriction.

[00:26:31] Speaker 07:
It's a legal issue that's appropriate for review at this stage.

[00:26:35] Speaker 07:
I do want to talk about projection.

[00:26:36] Speaker 07:
There's dictionary evidence.

[00:26:37] Speaker 07:
The court is familiar with it.

[00:26:39] Speaker 07:
I think all the dictionaries plus common knowledge is that projection has to jut out from its surroundings.

[00:26:44] Speaker 07:
The board evidenced some confusion and said, well, the direction, maybe it juts down.

[00:26:49] Speaker 07:
Maybe it juts left.

[00:26:50] Speaker 02:
It has to jut.

[00:26:50] Speaker 02:
It doesn't necessarily have to jut out.

[00:26:52] Speaker 07:
It has to jut.

[00:26:53] Speaker 07:
That's what we're about.

[00:26:55] Speaker 07:
That's what our proposed construction is aimed at.

[00:26:57] Speaker 07:
I think the board's approach to this term, they're operating under ordinary meaning.

[00:27:01] Speaker 07:
But when they applied it, it became clear that their ordinary meaning was overbroad.

[00:27:05] Speaker 07:
They applied the term projection to a little parking garage ramp that goes down.

[00:27:10] Speaker 02:
Why isn't that jutting down?

[00:27:12] Speaker 07:
I think it's not jutting at all.

[00:27:14] Speaker 07:
It's descending into sort of it's milled out of a surface.

[00:27:17] Speaker 07:
It doesn't project or jut in any way.

[00:27:20] Speaker 07:
respectfully.

[00:27:21] Speaker 02:
So we think the rejection over Olmstead, in addition to the claim... You don't think of a downward ramp in a parking garage as extending downward?

[00:27:29] Speaker 02:
When I think of it extending, you know... This doesn't extend... The ramp is connected to the flat surface.

[00:27:35] Speaker 02:
The car is sitting here.

[00:27:36] Speaker 02:
Go to the edge and point your car down.

[00:27:38] Speaker 02:
It's going to go down the hill.

[00:27:40] Speaker 07:
So maybe I chose a bad example, because in the parking garage, the ramp goes below, you know, I'm on level one, the ramp goes below level one.

[00:27:48] Speaker 07:
right, and extends into level two.

[00:27:50] Speaker 07:
In Olmsted, that's not happening.

[00:27:52] Speaker 07:
The little ramp just cuts through the side of the box.

[00:27:55] Speaker 07:
That's it.

[00:27:56] Speaker 07:
It doesn't extend below.

[00:27:57] Speaker 02:
Do we know that?

[00:27:59] Speaker 02:
I think the figures are clear.

[00:28:00] Speaker 02:
Is it clear from the specification in Olmsted?

[00:28:03] Speaker 07:
I believe it is clear.

[00:28:04] Speaker 02:
Where?

[00:28:04] Speaker 02:
I mean, all I saw was the drawing.

[00:28:08] Speaker 07:
I think the drawing is what we're standing on, and the description of those is ramps.

[00:28:12] Speaker 02:
But we're talking about ramps in the garage that can extend down there.

[00:28:16] Speaker 07:
There's ramps and there's ramps, I suppose.

[00:28:18] Speaker 07:
I think these particular ramps only extend through the wall of the brush box.

[00:28:22] Speaker 05:
Can I ask you about the beam limitation?

[00:28:26] Speaker 05:
Yes.

[00:28:28] Speaker 05:
The board found it was an elongated support structure.

[00:28:32] Speaker 05:
What's wrong with that claim construction, and do you need to prevail in order to win on this?

[00:28:38] Speaker 07:
Take those questions in reverse order.

[00:28:40] Speaker 07:
I think the other arguments we've presented provide a basis for reversal.

[00:28:44] Speaker 07:
This is not our only basis for reversal.

[00:28:45] Speaker 05:
So if I don't agree with you on this, there's still, because it's hard just to keep track of all the different claims and the three different patents.

[00:28:52] Speaker 05:
If I don't agree with you on beam, but say I agree with you on everything else, hypothetically.

[00:28:56] Speaker 07:
If you agree with me on everything else, I think reversal is appropriate for the 3.5, or for the 906 patent.

[00:29:00] Speaker 05:
So why don't you tell me what's wrong with elongated support structure for the word beam?

[00:29:04] Speaker 07:
That's not a technical definition of a beam, I think.

[00:29:07] Speaker 07:
Even under BRI, it's appropriate to look at what the meaning would be to a person of skill in the art.

[00:29:11] Speaker 07:
And a person of skill in the art here looks to... In light of the patent, correct?

[00:29:15] Speaker 07:
That's correct.

[00:29:16] Speaker 07:
Right, okay.

[00:29:16] Speaker 07:
And we think there's unrebutted dictionary and textbook evidence here, unrebutted expert testimony, that the beam has a technical definition that involves considerations of being long, being straight, being rigid.

[00:29:27] Speaker 05:
Okay, but let's look at Figure 16.

[00:29:30] Speaker 05:
Figure 16 in the 906 patent is described repeatedly

[00:29:35] Speaker 05:
as being a beam.

[00:29:37] Speaker 05:
Now, the beam doesn't just include the back plate.

[00:29:40] Speaker 05:
The beam includes the edges.

[00:29:43] Speaker 05:
The beam includes the upper locking pin.

[00:29:46] Speaker 05:
The beam includes the pin holes.

[00:29:49] Speaker 05:
Does this picture look like a long, straight, structural member?

[00:29:56] Speaker 07:
I think it does.

[00:29:57] Speaker 07:
I think it's special.

[00:29:58] Speaker 05:
No, seriously?

[00:30:00] Speaker 07:
Seriously, Judge?

[00:30:00] Speaker 07:
I do.

[00:30:01] Speaker 07:
I do.

[00:30:01] Speaker 05:
I think it's... There's credibility here, counsel.

[00:30:03] Speaker 05:
I mean, look at this.

[00:30:04] Speaker 05:
This is... It's in multiple dimensions.

[00:30:07] Speaker 05:
This is nothing like an I-beam or any of the other things that you describe as a beam, which granted, my plain understanding of the word beam would absolutely consist with what you say it should be, but I feel like you're living in a plain meaning world and not owning up to what you actually disclosed was a beam in your own patent, and that's why I corrected your initial statement about

[00:30:28] Speaker 05:
Is it beam as one of ordinary skill in the art would construe it or beam as one would have to construe it in light of the patent?

[00:30:35] Speaker 05:
The patent discloses this is a beam.

[00:30:37] Speaker 07:
It's the upper beam.

[00:30:39] Speaker 05:
Yes.

[00:30:40] Speaker 05:
As opposed to the lower beam.

[00:30:42] Speaker 05:
Right.

[00:30:43] Speaker 05:
Well, okay.

[00:30:43] Speaker 05:
This is a beam.

[00:30:45] Speaker 05:
So if this is a beam, so it's clearly not the long straight thing that you said it was because there's no way that this is long and straight.

[00:30:53] Speaker 05:
No way.

[00:30:54] Speaker 05:
So if this is a beam, then why isn't

[00:30:57] Speaker 05:
or whatever with its U shape or Olmsted with its other shape, likewise beams.

[00:31:01] Speaker 05:
I mean, I don't know what the heck to make out of the word beam in light of the patent's own use of it.

[00:31:06] Speaker 05:
And that's why I'm like, hmm, I think elongated support structure's not looking so bad all of a sudden to me, you know.

[00:31:12] Speaker 07:
Then let me at least, and I'm out of time, let me focus on Olmsted briefly.

[00:31:16] Speaker 07:
Olmsted is a springy structure.

[00:31:18] Speaker 07:
It flexes back and forth.

[00:31:20] Speaker 07:
That's not rigid.

[00:31:21] Speaker 07:
That's not what a beam is.

[00:31:21] Speaker 07:
When we build things out of beams, we don't expect them to flex.

[00:31:24] Speaker 07:
In fact, we design them to flex minimally when they're under load.

[00:31:27] Speaker 07:
Olmstead is the opposite.

[00:31:29] Speaker 05:
But wait, the patent office said elongated support structure in that implies a degree of rigidity.

[00:31:35] Speaker 05:
You can't have a rubber band that's not an elongated support structure or a spring.

[00:31:39] Speaker 05:
not going to be deemed an elongated support structure.

[00:31:41] Speaker 05:
But then we're getting into not the matter of claim construction, but the matter of does substantial evidence support a determination that that particular structure in the anticipatory reference fits the definition or not.

[00:31:52] Speaker 07:
But respectfully, I'm not sure it is at all clear that the board viewed rigidity as part of beam, because it applied to Olmstead was expressly flexible.

[00:32:00] Speaker 05:
It has to be a support structure.

[00:32:02] Speaker 05:
How can you have a non-rigid support structure?

[00:32:04] Speaker 05:
A rubber band can't be a support structure.

[00:32:06] Speaker 07:
I agree with you on the one hand, and yet I'm bound by where the board said Olmstead, which is resilient members flexing back and forth, and the board said that's a beam.

[00:32:15] Speaker 07:
So I have to assume that the board viewed the meaning of beam as broad enough to encompass that.

[00:32:20] Speaker 07:
Running very short on time, I'd like to reserve some rebuttal.

[00:32:23] Speaker 06:
Yes, sure.

[00:32:24] Speaker 06:
We'll reserve three minutes of rebuttal.

[00:32:27] Speaker 06:
Thank you, Your Honor.

[00:32:34] Speaker 04:
Good afternoon.

[00:32:36] Speaker 04:
May it please the court?

[00:32:40] Speaker 04:
It's important to take a look back and kind of figure out how this patent portfolio fits into the whole thing.

[00:32:46] Speaker 04:
And to keep in mind that there were five patents originally challenged at the Patent Office.

[00:32:50] Speaker 05:
Okay, you've got so much stuff you've got to cover in 30 minutes.

[00:32:53] Speaker 05:
The look back at the history of the world is just not the way to go.

[00:32:58] Speaker 05:
Focus, let's start one at a time.

[00:33:00] Speaker 05:
Projection extending from, how can something recessed into something else be a projection extending from?

[00:33:06] Speaker 05:
It seems, quite frankly, the opposite of the word projection.

[00:33:10] Speaker 05:
The opposite, not even sort of maybe not quite usually the way we think of projection, but actually the opposite of the way the word projection normally operates.

[00:33:19] Speaker 04:
I would disagree, Judge Moore, with respect to it being a recess.

[00:33:25] Speaker 04:
The board found that it had to extend from a surface of the mounting block.

[00:33:29] Speaker 04:
And so that ramp extends from a surface of the mounting block upwardly.

[00:33:33] Speaker 05:
It's actually, there is, I mean, I have the picture here, instead of Figure 1, it is, there's a cutout and the little

[00:33:40] Speaker 05:
Orange ramp, I think mine is color-coded by my quirks is my guess.

[00:33:44] Speaker 05:
Yes, okay, so you don't have orange on yours.

[00:33:47] Speaker 05:
The little orange ramp is actually recessed into the cutout.

[00:33:51] Speaker 05:
It doesn't actually protrude at all, at all from the sideways surface of Olmsted's project.

[00:33:58] Speaker 04:
Yes, but it extends up from the horizontal surface

[00:34:01] Speaker 04:
that's inset there.

[00:34:02] Speaker 04:
So that's what the board found is it has to extend up.

[00:34:04] Speaker 05:
Only because there's a cutout.

[00:34:06] Speaker 05:
It doesn't actually extend beyond the horizontal surface.

[00:34:08] Speaker 05:
It's that the horizontal surface is cut out so it can be fit into that horizontal surface.

[00:34:13] Speaker 04:
But it extends up.

[00:34:14] Speaker 04:
From the cutout.

[00:34:17] Speaker 05:
So that's like saying something's a projection if I dig a hole and bury it because it projects from bottom.

[00:34:25] Speaker 04:
And when I'm talking about the horizontal surface, I'm talking about the base of the ramp.

[00:34:30] Speaker 04:
It extends upwardly from that base and extends to a point.

[00:34:36] Speaker 04:
That's, I believe, what the board found in its decision.

[00:34:42] Speaker 04:
It said nothing limits the direction in which the projection must project.

[00:34:47] Speaker 04:
Cuttsworth wants it to project outwardly from an outer surface.

[00:34:52] Speaker 04:
It does project up from, and what I'm talking about, Your Honor, is the bottom of the ramp 59.

[00:34:57] Speaker 04:
There is a horizontal surface there, and that ramp extends up from that surface.

[00:35:02] Speaker 05:
Right, because the horizontal surface was cut out to slide the ramp into it.

[00:35:05] Speaker 05:
That's the part that seems pretty clear from the picture.

[00:35:10] Speaker 05:
Okay, let's move on to your next argument.

[00:35:12] Speaker 04:
Sure, moving on to

[00:35:14] Speaker 05:
brush catch including the spring?

[00:35:17] Speaker 04:
The brush catch includes the spring.

[00:35:18] Speaker 04:
I think you'll see in figure 12 of the Cuttsworth patent the spring is actually a separate piece from the brush catch.

[00:35:26] Speaker 04:
It's a leaf spring that comes off of the brush catch.

[00:35:29] Speaker 04:
The brush catch is a generally kind of straight member with a tooth coming off of it and there is a spring attached to it just as in the Olmsted reference.

[00:35:38] Speaker 04:
There's a brush catch 25

[00:35:40] Speaker 04:
And the board found that the resilient part of Olmsted at the bottom of the beam there.

[00:35:43] Speaker 04:
And it's only that small part that deflects.

[00:35:45] Speaker 04:
Because if you look at the figure we were just looking at in Olmsted, the top part of the beam actually fits behind the box.

[00:35:53] Speaker 04:
And only the bottom part deflects.

[00:35:55] Speaker 04:
And that part is riveted to the brush catch.

[00:35:58] Speaker 05:
I'm confused.

[00:35:59] Speaker 05:
In Olmsted, what's the spring?

[00:36:01] Speaker 05:
Is it on the beam, or is it on the brush catch?

[00:36:05] Speaker 04:
It would be the bottom part of the beam.

[00:36:06] Speaker 04:
So if you're looking at figure one,

[00:36:09] Speaker 05:
So does the brush catch include the spring, or does the beam include the spring?

[00:36:14] Speaker 04:
The brush catch is coupled to the beam, and the bottom part of the beam is the spring.

[00:36:17] Speaker 04:
So there's a spring coupled to the brush catch, just in the Cutsworth patents.

[00:36:21] Speaker 04:
In figure 12, it says there's a separate.

[00:36:23] Speaker 05:
Does enclave 19 say wherein the brush catch includes the spring?

[00:36:27] Speaker 04:
It does.

[00:36:28] Speaker 04:
And in the Cutsworth patent, the spring is a separate piece from the brush catch.

[00:36:32] Speaker 04:
If you go to figure 12 of the Cutsworth patents,

[00:36:37] Speaker 04:
There is a brush catch 118, and then there's a separate piece 112, which is the spring.

[00:36:44] Speaker 04:
They're two separate pieces.

[00:36:46] Speaker 04:
So the brush catch includes the spring by having something connected to it, just as an homestead.

[00:36:54] Speaker 02:
Are you going to address the 018 patent?

[00:36:57] Speaker 04:
Yeah, why don't we shift to that, Judge Kluffinger?

[00:37:00] Speaker 04:
With respect to the 018 patent, I think there was an argument that the board conducted

[00:37:05] Speaker 04:
an improper obviousness analysis.

[00:37:07] Speaker 04:
And I don't think that's the case.

[00:37:09] Speaker 04:
I think if you look back to page A2 of the board's decision, they indicated they considered the prior art, the petition, the patent on a response, the petition reply, and the arguments made at the oral hearing.

[00:37:22] Speaker 04:
And they went on to find, in view of these arguments and evidence, the board found petitioner met its burden by a preponderance of the evidence.

[00:37:30] Speaker 04:
So they found the arguments that were presented and the evidence

[00:37:33] Speaker 04:
The petitioner met its burden by preponderance of the evidence.

[00:37:36] Speaker 02:
Let's go back to A2.

[00:37:37] Speaker 02:
Are you citing me to A2?

[00:37:39] Speaker 04:
Yes.

[00:37:40] Speaker 02:
I'm looking at A2.

[00:37:42] Speaker 02:
I granted the petition.

[00:37:43] Speaker 02:
There was nine grounds.

[00:37:45] Speaker 02:
We had trial on some.

[00:37:46] Speaker 02:
They filed a response.

[00:37:50] Speaker 02:
They filed a petition.

[00:37:51] Speaker 02:
Oral hearing was held.

[00:37:52] Speaker 02:
We have statutory authority.

[00:37:55] Speaker 02:
The reasons that follow, bang.

[00:37:58] Speaker 02:
Didn't you say there was more on page two?

[00:38:01] Speaker 02:
What were you telling me was on page two?

[00:38:03] Speaker 04:
The board laid out all of the evidence and all of the arguments they considered, and then indicated that we determined that- They didn't do that on page two.

[00:38:11] Speaker 06:
No, well, page two is said for the reasons that follow.

[00:38:14] Speaker 06:
So we're holding our breaths for the reasons that follow.

[00:38:18] Speaker 04:
Well, up above was where they indicated... Up above, like where up above?

[00:38:22] Speaker 02:
Like, show me... Sure.

[00:38:23] Speaker 04:
So, in the background, mode of power, petitioner filed a petition.

[00:38:27] Speaker 02:
Ah, the petition.

[00:38:27] Speaker 02:
Good.

[00:38:28] Speaker 02:
That was great.

[00:38:30] Speaker 02:
Did you say we read the petition?

[00:38:34] Speaker 04:
I assume that the board considered the petition.

[00:38:37] Speaker 02:
I'm just calling you out because you were reading more into page two than non-page two.

[00:38:42] Speaker 04:
Okay.

[00:38:42] Speaker 04:
Well, let's shift to the analysis of the board.

[00:38:46] Speaker 04:
There's an argument that they did not follow the KSR rationale.

[00:38:51] Speaker 04:
And page 15 of our red brief, we talked about KSR.

[00:38:55] Speaker 04:
And KSR elaborates that, quote, there are a finite number of identified predictable solutions.

[00:39:05] Speaker 04:
A person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp.

[00:39:12] Speaker 04:
And if this leads to the anticipated success, it is likely

[00:39:16] Speaker 04:
The product not of innovation, but of ordinary skill and common sense.

[00:39:20] Speaker 04:
And I would indicate that's what the board did here.

[00:39:22] Speaker 04:
With respect to claim five, there's no argument that there's not a spring in the prior art.

[00:39:26] Speaker 04:
There are two possible positions to position the spring.

[00:39:30] Speaker 04:
The board said when faced with a finite number of solutions, it would be a design choice as to where to place it.

[00:39:37] Speaker 04:
With respect to claim eight, regarding the

[00:39:40] Speaker 05:
But doesn't that quote say where there is a design need or market pressure to do so?

[00:39:46] Speaker 05:
Quote, there are a finite number of identified predictable solutions.

[00:39:50] Speaker 05:
A person of ordinary skill is good reason to pursue the known options within his or her technical grasp.

[00:39:55] Speaker 05:
You left out the first part, right?

[00:39:56] Speaker 05:
And that's the part they're complaining about.

[00:39:58] Speaker 05:
Their complaint is it's not enough to just say it's a design choice.

[00:40:02] Speaker 05:
What the Supreme Court said is when there is a design need or market pressure to solve a problem, then blankety blankety blank.

[00:40:10] Speaker 05:
But I don't see the board's opinion.

[00:40:14] Speaker 05:
You may have articulated some good reasons in your brief, but I don't see any of those in the board's opinion itself as to where the design need has been established or what the design need is or what the market pressure is.

[00:40:26] Speaker 05:
I mean, I'm just reading straight from KSR on my computer the first part of the single sentence that you read the second part of.

[00:40:33] Speaker 05:
So you kind of left out a sort of important part, which is the part they're arguing.

[00:40:40] Speaker 04:
All I can say is I think that the board identified it as a design choice, recognized that there were two possible places based on the prior art before them, and said that it would have been obvious for a skilled artisan to move it to the modified mounting block.

[00:40:57] Speaker 04:
Why?

[00:40:59] Speaker 05:
What is the design need or the market pressure?

[00:41:01] Speaker 05:
What's the problem with the way it was before?

[00:41:03] Speaker 05:
What is the advantage to be achieved by moving it?

[00:41:06] Speaker 05:
Why?

[00:41:07] Speaker 05:
Why would a skilled artisan have made that design choice?

[00:41:11] Speaker 04:
I don't think that there was a, with this being a dependent claim, I don't think there was necessarily the same problem presented in the prior art that way.

[00:41:21] Speaker 04:
And I think the board considered it, I mean, in the patent that way.

[00:41:24] Speaker 04:
And I think the board considered it that way.

[00:41:26] Speaker 04:
There was the Olmstead reference that was performed that did have the spring on the brush box.

[00:41:32] Speaker 04:
And I think that they considered the prior art in arriving at their decision.

[00:41:37] Speaker 05:
That's why the board didn't say any of that.

[00:41:41] Speaker 05:
I mean, that's not a bad argument.

[00:41:42] Speaker 05:
And if that is what their opinion had said, maybe this would feel like a really different case to me.

[00:41:48] Speaker 05:
But their opinion doesn't.

[00:41:49] Speaker 05:
And what about the fact that the two springs

[00:41:52] Speaker 05:
function completely differently in visit as opposed to Cuttsworth.

[00:41:57] Speaker 05:
One is a mechanical spring that works in a mechanical fashion to achieve the results, and the other is a spring that's used completely and utterly as an electrical spring.

[00:42:08] Speaker 05:
The movement is not only are you going to move it, but you're going to entirely change the function and nature of the use of the spring, and that's all just going to fall into the, yeah, it's a design choice.

[00:42:20] Speaker 04:
Yeah, I don't think it changes the function because it is a U-shaped spring and there's a knife edge that goes into it, so it would exert a spring force on there and provide the same mechanical biasing that's called for in the claim.

[00:42:33] Speaker 05:
The rest of the claim says, spring applies spring force against at least a portion of the brush holder component when the brush holder component is mounted to the mounting block.

[00:42:43] Speaker 05:
When the spring from Bisset is moved from the base to the mounting block, there's no evidence

[00:42:49] Speaker 05:
that the spring force is going to be satisfied.

[00:42:51] Speaker 05:
No evidence in this record.

[00:42:52] Speaker 05:
And if I'm wrong, you show me where it is.

[00:42:54] Speaker 04:
I don't think there's an explicit teaching.

[00:42:56] Speaker 04:
But when it's moved, the brush holder component still has a knife edge that slides in.

[00:43:02] Speaker 04:
And that spring would apply spring force to that component of the brush holder.

[00:43:06] Speaker 05:
And the problem with that is you may be right.

[00:43:09] Speaker 05:
And you may actually be able to convince the board of all of that.

[00:43:12] Speaker 05:
But the board didn't address it or analyze it or anything.

[00:43:17] Speaker 05:
How am I supposed to do that on appeal to replace, there are two words, design choice, with everything you just said about how the spring would or wouldn't operate if it were moved?

[00:43:28] Speaker 05:
I mean, we're changing the nature, at least as far as the disclosure goes, of the functioning of the spring.

[00:43:33] Speaker 05:
We're moving it to a different place.

[00:43:35] Speaker 05:
And there's the rest of that element that they don't explain.

[00:43:38] Speaker 05:
I don't know how I can read all that into the words design choice without any explanation.

[00:43:45] Speaker 04:
The only thing I can tell you, Your Honor, is that I think they addressed the party's arguments.

[00:43:50] Speaker 04:
And so the argument, as you're articulating it, might not have been presented before.

[00:43:54] Speaker 04:
No, it was.

[00:43:54] Speaker 05:
I went back and looked, because I was worried about that, too.

[00:43:56] Speaker 05:
It's in there.

[00:43:57] Speaker 05:
They expressly argued that the remainder of the claim requires spring applied, spring force against at least a force on the brush holder.

[00:44:05] Speaker 05:
They expressly said there's no evidence.

[00:44:08] Speaker 05:
They didn't say it wouldn't do it.

[00:44:09] Speaker 05:
They said there's no evidence at all that it would work that way if it was moved.

[00:44:12] Speaker 05:
because they don't have the burden of proof.

[00:44:13] Speaker 05:
So they didn't say it wouldn't, but they just said there's no evidence at all that it would do any of that if it were moved.

[00:44:19] Speaker 05:
So I did go back and look to ensure that the argument was raised.

[00:44:22] Speaker 05:
It was.

[00:44:22] Speaker 05:
I don't know.

[00:44:23] Speaker 05:
I should let you move on.

[00:44:24] Speaker 05:
We still have a lot of time.

[00:44:25] Speaker 02:
Can you talk to us about when your adversary was up and we were talking about the same thing, he said that in your petition for review, I think he cited A9596 and said you didn't have any of this rationale about the spring.

[00:44:38] Speaker 04:
I think we argued for the combination of the spring would be moved to the modified mounting block.

[00:44:44] Speaker 04:
And during the course of the proceedings, they raised additional arguments, and we responded to those.

[00:44:49] Speaker 04:
But I think in the petition, we argued for the combination of the modified mounting block to include the spring.

[00:44:58] Speaker 06:
Can I move you to mounting guac?

[00:45:00] Speaker 04:
Sure.

[00:45:02] Speaker 06:
Because even under the broadest reasonable interpretation, as Mr. Courtney pointed out, we need reasonableness.

[00:45:08] Speaker 06:
And it seems to me there's a lot in the specification, including the use of the word fixed.

[00:45:14] Speaker 06:
And everything they're talking about is bolting and pins and keys, all of which connotes fixed location.

[00:45:25] Speaker 04:
Sure.

[00:45:25] Speaker 04:
So I think.

[00:45:25] Speaker 06:
What's wrong with that?

[00:45:27] Speaker 04:
I think there are.

[00:45:28] Speaker 04:
a couple of points to consider there.

[00:45:30] Speaker 04:
First, and let's focus on the 354 patent, which is appeal 1315.

[00:45:38] Speaker 04:
The use of the word fixed in the patent is in quotations.

[00:45:43] Speaker 04:
It's in quotations.

[00:45:45] Speaker 04:
It's quote fixed in the patent.

[00:45:48] Speaker 04:
And the board first noted, and this would be at the bottom of A9 of the 1315 decision, the board made.

[00:46:01] Speaker 04:
The board said when a word or term is not used functionally but is referred to as a word or term itself, it is either italicized or enclosed in quotation marks.

[00:46:09] Speaker 04:
And so they had the fact that it's shrouded in quotation marks makes the use of it in that passage not to be taken literally.

[00:46:17] Speaker 04:
So it's one of the things they pointed out.

[00:46:18] Speaker 04:
It was unclear.

[00:46:19] Speaker 04:
And we're talking about disclaimer.

[00:46:21] Speaker 04:
He argued for disclaimer in the patent.

[00:46:23] Speaker 04:
And so if the word fixed is in quotation marks, I don't know how that can rise to the level of disclaimer.

[00:46:29] Speaker 04:
discussed on A9 and its footnote, too, in the 1315 appeal.

[00:46:34] Speaker 04:
But there's another part of the board.

[00:46:36] Speaker 06:
Is it really a disclaimer?

[00:46:37] Speaker 06:
Are we really doing a disclaimer analysis?

[00:46:39] Speaker 06:
I mean, is it clear that mounting block?

[00:46:43] Speaker 06:
You'd need a disclaimer if it was absolutely clear that any ordinary or plain meaning of mounting block excludes fixed.

[00:46:51] Speaker 06:
And so therefore, you need an absolute.

[00:46:55] Speaker 04:
I think the argument Mr. Courtney raised was a disclaimer.

[00:46:57] Speaker 04:
And I was rebutting that.

[00:46:59] Speaker 04:
If it is a disclaimer, the use of the quotations, I think, doesn't rise to the level of disclaimer.

[00:47:04] Speaker 06:
What about the reference to bolts and everything else when we're talking about this?

[00:47:07] Speaker 04:
I think that's one embodiment.

[00:47:08] Speaker 04:
And so if you go to page A8 of the board's decision in the 1315 appeal, they say midway through the page, they talk about

[00:47:24] Speaker 04:
In fact, the specification makes a point of not limiting the attachment of the mount to any particular method, fixed or not fixed.

[00:47:41] Speaker 04:
And I think the parenthetical here is important.

[00:47:44] Speaker 04:
It says, or other attachment scheme may be used to secure the lower mount block 16 to a mount base near a moving conductive surface.

[00:47:51] Speaker 04:
in position to move relative to a conductive surface.

[00:47:54] Speaker 04:
So if the lower mounting block is capable of moving, I don't know what the fixed limitation adds to it.

[00:48:00] Speaker 04:
And the board goes on to this page to say, Cutsforth has pointed to an embodiment, some embodiments, but they don't cover all embodiments.

[00:48:09] Speaker 04:
So in the embodiments where the mounting block moves.

[00:48:10] Speaker 02:
What in the real world would moving relative to a conductive surface mean?

[00:48:16] Speaker 02:
Just describe to me what happens in the structure.

[00:48:20] Speaker 02:
I know what happens if you're mounting it and you're bolting it to something tight and fixed.

[00:48:26] Speaker 02:
And that's the construction that your adversaries are arguing for.

[00:48:30] Speaker 02:
I'm just asking in my own mind, what does putting it in a position to move relative to a conductive surface, what does that mean?

[00:48:38] Speaker 04:
I think it means that the mounting block can be attached to something and part of it can be movable.

[00:48:44] Speaker 02:
Part of what?

[00:48:45] Speaker 04:
Part of the mounting block can be movable.

[00:48:48] Speaker 04:
And in the mounting block in the... Where would you move it to?

[00:48:50] Speaker 02:
What would be the purpose?

[00:48:52] Speaker 04:
I think one example is in the mounting block in the patent, there's an upper mounting block and a lower mounting block, and they can move relative to each other.

[00:49:02] Speaker 05:
One thing I'm confused about, this is not necessarily you, but I want to ask you what your thoughts are.

[00:49:08] Speaker 05:
I thought I understood cuts forth to stand here and tell us there's a disclaimer, and that's why we should find fixed.

[00:49:15] Speaker 05:
I didn't catch it at the time, but now as I'm sitting here, it's like I went back to their brief and I thought that they argued there was no disclaimer.

[00:49:21] Speaker 05:
But nonetheless, the board could make this structural decision.

[00:49:24] Speaker 05:
Did they argue disclaimer or not before?

[00:49:27] Speaker 04:
I believe the first time I heard it was today.

[00:49:31] Speaker 04:
I don't recall seeing it in their brief.

[00:49:37] Speaker 04:
And that's what the broadest reasonable interpretation, I think, still has to be consistent with the specification and cannot read out embodiments.

[00:49:43] Speaker 04:
So the board found with respect to

[00:49:45] Speaker 04:
If you incorporate the word fixed, it would, in their opinion, read out certain embodiments from the specification.

[00:49:51] Speaker 02:
And while we're on the claim construction issue, I think one- I mentioned the embodiment of which, of the one that's positioned relative to move relative?

[00:49:57] Speaker 04:
The one where it says, yeah, and positioned to move relative to the conductive surface, or the one where the mounting block- Well, you're moving relative, aren't you?

[00:50:05] Speaker 02:
Haven't you still fixed the thing tight, so two tightly fixed things are moved relative to one another?

[00:50:12] Speaker 04:
I don't think that's required by the claim.

[00:50:15] Speaker 02:
I'm just trying to get at it.

[00:50:17] Speaker 02:
You're reading an awful lot into a position to move relative to a conducting surface.

[00:50:23] Speaker 04:
I think part of the board's opinion is that they weren't sure what fixed meant, because does fixed mean that you can't fix it and then unscrew it, take it off, and put it back on?

[00:50:34] Speaker 04:
So they were concerned with the use of the word fixed, limiting it to some specific embodiment.

[00:50:41] Speaker 04:
And they pointed to the use of the word secure sometimes, and they didn't.

[00:50:46] Speaker 02:
And why is the prior art under the claim construction of the board fixed?

[00:50:54] Speaker 04:
Under our opinion, the prior art still is fixed.

[00:50:57] Speaker 04:
The Cartman mounting block, I believe, is fixed.

[00:51:00] Speaker 04:
There are screws that come in that hit the mounting block, and it's tightened up against a clamp.

[00:51:04] Speaker 04:
So we argued down below that it is fixed.

[00:51:07] Speaker 04:
They've asked you to reverse.

[00:51:09] Speaker 04:
I don't think you can reverse on any of the claim construction issues.

[00:51:11] Speaker 04:
I think you could vacate and remand, because we made the argument under Cuttsford's claim constructions that these were disclosed.

[00:51:18] Speaker 04:
The board never reached the claim construction arguments under Cuttsford's position.

[00:51:22] Speaker 04:
So to the extent any of the claim construction issues are reversed here, I think they would have to be sent back down to the board to consider them under the fixed limitation.

[00:51:30] Speaker 04:
And I think under the fixed limitation, the board would find,

[00:51:33] Speaker 04:
the Cartman clamp is fixed because the screws are tightened down and it's fixed in place.

[00:51:38] Speaker 04:
That's what we believe is required by fixed.

[00:51:41] Speaker 04:
And that's why the board had a little confusion as to what exactly was meant by fixed.

[00:51:44] Speaker 04:
And I think an important point was that there was an opportunity to amend here.

[00:51:48] Speaker 04:
And that opportunity was foregone.

[00:51:49] Speaker 04:
They could have amended to claim fixed.

[00:51:52] Speaker 06:
Well, that doesn't kind of resolve the whole issue.

[00:51:54] Speaker 06:
I mean, that's all going forward.

[00:51:56] Speaker 06:
But that wouldn't certainly change what's going on here.

[00:52:01] Speaker 06:
It's not a cost-free decision.

[00:52:06] Speaker 04:
You are correct.

[00:52:11] Speaker 04:
With respect to the beam, I think the board properly found that there's no reason to limit it to a rigid structure or a straight structure.

[00:52:22] Speaker 05:
I think... Well, you say no reason to limit it to rigid.

[00:52:24] Speaker 05:
They certainly didn't put the word rigid in the construction.

[00:52:27] Speaker 05:
However, they did say it has to be a support structure, right?

[00:52:29] Speaker 05:
A rubber band couldn't be a support structure.

[00:52:32] Speaker 04:
I wholeheartedly agree with you.

[00:52:33] Speaker 05:
I mean, there's pictures of all the different things that could be... Their construction does import into it a notion of rigidity sufficient to perform the function of the beam.

[00:52:42] Speaker 05:
I agree with that.

[00:52:43] Speaker 04:
Okay.

[00:52:44] Speaker 04:
I agree with that.

[00:52:45] Speaker 04:
And I think there's no testimony that even under the Ohm state, it has some flexibility, but it's still a support structure.

[00:52:52] Speaker 04:
And when their expert was questioned about it, he couldn't identify how much deflection there would be.

[00:52:58] Speaker 04:
And with respect to it being straight, I think the board really hit on the point you made earlier, Judge Moore.

[00:53:04] Speaker 04:
When you look at the beam, it's not straight in all directions.

[00:53:06] Speaker 04:
So in which direction is it straight?

[00:53:08] Speaker 04:
For the first time on reply, Cutsworth has said, well, it's straight in the perpendicular direction along its axis.

[00:53:16] Speaker 04:
That's the first time we've ever heard that argument.

[00:53:17] Speaker 04:
It came up in a reply.

[00:53:18] Speaker 04:
It could have been presented to the board.

[00:53:20] Speaker 06:
And do you agree with Mr. Courtney's response to Judge Moore about just the play of the various different things?

[00:53:26] Speaker 06:
If we were to agree with their side on the projection and the brush catch, then even if we were to disagree on the beam case, would it be reversed?

[00:53:38] Speaker 06:
With respect to- I think that's what I understood was the play there between the various.

[00:53:43] Speaker 04:
Well, let me find my notes on that.

[00:53:48] Speaker 04:
Yeah, with respect to the projection, that affects the Olmstead reference only.

[00:53:53] Speaker 04:
And with respect to the brush catch is Kroll's, right?

[00:54:00] Speaker 04:
Yeah, brush catch.

[00:54:02] Speaker 06:
The mounting block.

[00:54:05] Speaker 04:
Brush catch coupled to the beam affects the Kroll's reference.

[00:54:07] Speaker 04:
So if you were to find on both of those in Cuttsford's favor, you could vacate and remand for consideration under their claim construction.

[00:54:16] Speaker 02:
I mean, in terms of the projecting from, isn't that a 102 rejection?

[00:54:22] Speaker 04:
It is a 102 rejection only for the Olmstead reference, though.

[00:54:25] Speaker 04:
There are two references for purposes of the 906 patent.

[00:54:29] Speaker 04:
There's two 102 rejections.

[00:54:31] Speaker 02:
But you don't think we can reverse?

[00:54:35] Speaker 04:
I don't think you can reverse because they didn't consider the... We made the argument that it does project out.

[00:54:44] Speaker 04:
under their construction down below, I believe.

[00:54:46] Speaker 04:
And I don't think that the board made a finding under their construction.

[00:54:52] Speaker 02:
The ramp, is what you're talking about, projected out?

[00:54:54] Speaker 02:
Yes.

[00:54:55] Speaker 02:
And we say it doesn't project out.

[00:54:56] Speaker 02:
If it projects anyway, it projects down.

[00:55:00] Speaker 04:
I think you could make that finding, but I think the board did not consider that construction in arriving at its finding.

[00:55:14] Speaker 05:
I think the only thing that you didn't hit on was selectively coupled.

[00:55:17] Speaker 05:
Do you want to go there for a sec?

[00:55:19] Speaker 04:
Sure.

[00:55:19] Speaker 04:
So selectively coupling is an interesting one.

[00:55:22] Speaker 04:
I don't think that the claim differentiation.

[00:55:24] Speaker 05:
One other thing before we move on.

[00:55:28] Speaker 05:
When you said we should remand to consider anticipation under their claim construction, did you ever argue that below, alternatively, that even under their construction, the claims would be anticipated?

[00:55:40] Speaker 04:
We did argue that below.

[00:55:41] Speaker 04:
I don't know if we argued it for all of the claim constructions.

[00:55:44] Speaker 04:
I'd have to look at it.

[00:55:45] Speaker 04:
But I know, for example, on the beam, we argued that the Cartman beam was fit, or was a, excuse me.

[00:55:54] Speaker 05:
If you didn't do it for projection, for example, because I think that maybe you didn't for all of them, like you're saying.

[00:56:01] Speaker 05:
So that wouldn't be remanded for them to reconsider the Olmstead reference in light of the new construction of projected if you didn't argue anything different, right?

[00:56:11] Speaker 04:
That's correct.

[00:56:11] Speaker 04:
To an extent, we did not argue it.

[00:56:13] Speaker 04:
But I believe that for the majority of them, I believe we did argue them.

[00:56:25] Speaker 02:
I think you were going to respond to Judge Moore's question about what's going on between selective coupling and coupling.

[00:56:31] Speaker 04:
Yeah, selective coupling.

[00:56:32] Speaker 04:
So the board at A10 of the 1315 appeal noted that,

[00:56:41] Speaker 04:
They rejected the notion that there must be a specific predetermined way in which the brush holder component is coupled to the mounting block.

[00:56:49] Speaker 02:
And we know that's what they said.

[00:56:52] Speaker 02:
What's the difference between coupling on the one hand in the independent claim and selectively coupling in the dependent claim?

[00:56:59] Speaker 02:
Have to be different.

[00:57:01] Speaker 04:
Then I'm having trouble.

[00:57:03] Speaker 04:
I know that they do have to be different.

[00:57:05] Speaker 04:
So for coupling in the independent claim means that it's capable of coupling.

[00:57:08] Speaker 04:
It doesn't specify the manner in which it couples.

[00:57:11] Speaker 04:
It's really describing only the mounting block.

[00:57:15] Speaker 02:
Cable and main coupled.

[00:57:16] Speaker 02:
Cable and main coupled.

[00:57:16] Speaker 02:
Yeah, it's either coupled or non-coupled.

[00:57:19] Speaker 04:
And so what the board found is in the specification of the Cutzferth patent, it's this over-the-center locking mechanism.

[00:57:25] Speaker 04:
There's a position where it's not coupled at all.

[00:57:28] Speaker 04:
So the brush holder's in my hand.

[00:57:30] Speaker 04:
I put it on.

[00:57:30] Speaker 04:
It's coupled in a disengaged position.

[00:57:33] Speaker 02:
It's like an off-and-on switch on electricity, right?

[00:57:36] Speaker 04:
Then you slide it, and it's coupled in the engaged position.

[00:57:39] Speaker 02:
And Cuttsford, in its... Right, by the way, if you have, if I'm right, it's like a light switch on the wall.

[00:57:45] Speaker 02:
It's on or off.

[00:57:47] Speaker 02:
If it's on, it's coupled.

[00:57:48] Speaker 02:
If it's off, it's not.

[00:57:50] Speaker 04:
No, that's not correct, Your Honor.

[00:57:51] Speaker 04:
Why not?

[00:57:52] Speaker 04:
If you go to Cuttsford... Why not?

[00:57:55] Speaker 02:
Why shouldn't I be looking at coupled?

[00:57:58] Speaker 02:
Not selectively coupled, coupled.

[00:58:02] Speaker 04:
Yeah, but for coupling, yeah, it's either on or off.

[00:58:05] Speaker 02:
Yeah, on or off.

[00:58:05] Speaker 02:
Right.

[00:58:05] Speaker 02:
So you're on or off.

[00:58:06] Speaker 02:
So I have a light switch, right, and it says coupled on or off.

[00:58:11] Speaker 02:
And I have another light switch.

[00:58:12] Speaker 02:
It says this one is selectively coupled.

[00:58:16] Speaker 02:
It's not coupled on or off.

[00:58:17] Speaker 02:
It's somehow coupled differently.

[00:58:19] Speaker 04:
Well, we're not dealing with light switches, and I think if we look at... I know we're not, but it's just my hypothetical.

[00:58:24] Speaker 02:
What's the difference in this case?

[00:58:27] Speaker 04:
I think if you look at

[00:58:28] Speaker 04:
the patent.

[00:58:29] Speaker 02:
Selectly coupled has to mean more than just coupled or not coupled, which is what coupled means in the independent block.

[00:58:36] Speaker 04:
That's correct.

[00:58:36] Speaker 04:
So in the way that this works and described in the patent, when it's pushed all the way on, that over-the-center locking mechanism extends and it couples it.

[00:58:46] Speaker 04:
You can undo it and it's disengaged but still coupled to the mounting block.

[00:58:52] Speaker 04:
And if you go to

[00:58:55] Speaker 04:
Page 20 of Cuttsford's reply brief for the 13-15 proceeding.

[00:59:02] Speaker 04:
I think you'll see this illustrator.

[00:59:07] Speaker 04:
And if you're at that page, there are a set of three figures that are indicated there.

[00:59:13] Speaker 04:
And on the left-hand side, it illustrates the mounting block in green.

[00:59:19] Speaker 04:
And in the middle position is the disengaged position.

[00:59:22] Speaker 04:
As Cuttsford even admits in the parenthetical down below, the mounting block and brush holder are coupled together in the disengaged position.

[00:59:30] Speaker 04:
So it's slid on, it's not engaged, but it's coupled.

[00:59:34] Speaker 05:
And then I don't mean to derail you, but just to ask another procedural type question.

[00:59:39] Speaker 05:
If we disagreed with you on this, we'd have to vacate and remand.

[00:59:43] Speaker 05:
We couldn't reverse because you separately argued obviousness that the board didn't address.

[00:59:47] Speaker 05:
Is that right?

[00:59:48] Speaker 04:
Yeah, there were a number of grounds the board didn't address.

[00:59:50] Speaker 05:
Keep going.

[00:59:52] Speaker 05:
I didn't mean to derail you.

[00:59:53] Speaker 04:
Sorry.

[00:59:54] Speaker 04:
But if you look at that diagram, the third figure shows it is coupled in the engaged position.

[01:00:00] Speaker 04:
So what the board found was selecting between coupling states.

[01:00:03] Speaker 04:
So you have it's coupled, it's disengaged, you slide the handle, it's still coupled, but now it's engaged.

[01:00:08] Speaker 04:
So those are the coupling states that it was talking about.

[01:00:12] Speaker 04:
And so I think under Judge Clevenger, the point you were trying to make about the independent claim being broader

[01:00:19] Speaker 04:
This requires it to have two different coupling states.

[01:00:21] Speaker 04:
The independent claim could be just one coupling state where it's on or off, attached in a different mechanism.

[01:00:32] Speaker 01:
And what is selecting?

[01:00:34] Speaker 01:
The fact that you've selected that?

[01:00:36] Speaker 04:
You've selected between coupling states.

[01:00:38] Speaker 04:
So in the middle figure there, you'll see that the beam is kind of in an up position.

[01:00:44] Speaker 04:
And the end of it is still engaged with the mounting block.

[01:00:47] Speaker 04:
So there's an upper beam 18, it looks like, that's kind of fixed in a V position that's hinged.

[01:00:55] Speaker 04:
So this is still coupled to the mounting block, but it's disengaged.

[01:00:59] Speaker 04:
And when you slide the handle that's not pictured, it actually spreads out and locks into place.

[01:01:03] Speaker 04:
And so that would be coupled in the engaged position.

[01:01:05] Speaker 04:
So these two right figures on page 20 of Kutzer's reply brief illustrate the two coupling states that the board talked about, selecting between coupling states, disengaged or engaged.

[01:01:19] Speaker 04:
And this is a read based on the specification of the pattern.

[01:01:32] Speaker 04:
One of the last issues I'd like to address is kind of the projection extending from.

[01:01:38] Speaker 04:
Come back to it.

[01:01:38] Speaker 04:
And part of the issue is we've heard that projection is something that must jut out.

[01:01:43] Speaker 04:
But there's also the extending from language.

[01:01:45] Speaker 04:
And so I'm not sure.

[01:01:47] Speaker 04:
from Hudson's construction, what jutting out really adds.

[01:01:49] Speaker 04:
It talks about something that does extend from a surface.

[01:01:52] Speaker 04:
And I think the board properly found, in the Olmstead reference at least, that it extends from that horizontal surface, upward from that horizontal surface.

[01:02:01] Speaker 05:
Not convinced.

[01:02:03] Speaker 05:
Embedding something within is just not projecting.

[01:02:07] Speaker 05:
When you dig a hole out and put it in so it's surface level, or worse yet, below surface level, it's hard for me to conclude it's projecting just because you dug the hole.

[01:02:17] Speaker 04:
I mean, there was an example of something that was described as projecting out in the Cutspur's patent, and it was a little pin, but it didn't project out from its surroundings.

[01:02:25] Speaker 04:
There were walls all around it.

[01:02:26] Speaker 04:
So I guess for me, it's hard to understand what projecting out means under their construction.

[01:02:30] Speaker 04:
If it was projecting out from one surface, but there were walls around it, would that still be projecting out?

[01:02:38] Speaker 04:
I don't understand the limitation of what projecting means in their mind.

[01:02:42] Speaker 04:
And I think what you're saying is if those

[01:02:44] Speaker 04:
walls weren't there on the side, if it ended there, it would be projecting out.

[01:02:47] Speaker 04:
Is that correct?

[01:02:51] Speaker 05:
I just don't, if you embed something within and it actually, I just don't see how it can meet the definition of projection.

[01:02:58] Speaker 05:
I don't see anything, at least I don't see anything in the patent that redefines it the way I did for Bean, for example.

[01:03:07] Speaker 06:
Thank you.

[01:03:23] Speaker 07:
I may please the court.

[01:03:24] Speaker 07:
I'd like to first address something that came up.

[01:03:26] Speaker 07:
I think I may be responsible for this, and I apologize for it.

[01:03:29] Speaker 07:
We are not arguing disclaimer as to mounting block.

[01:03:31] Speaker 05:
If I said that.

[01:03:32] Speaker 05:
If I said that, you said, there's a disclaimer right here at this column, this line number.

[01:03:37] Speaker 07:
And I will own that, Judge Moore.

[01:03:39] Speaker 07:
And I apologize to MPI for that.

[01:03:42] Speaker 07:
That is a misstatement on my part.

[01:03:45] Speaker 07:
I do want to talk about, Judge Clevender, you had some questions about what it means to move relative to a conductive surface.

[01:03:50] Speaker 07:
And here we're talking about the term mounting block.

[01:03:52] Speaker 07:
I think what that means is these brush holders can be mounted, their mounting block can be put on sort of a swingable arm.

[01:04:00] Speaker 07:
You swing it out of place and you've got to work on it and move things around and you swing it back into place, turn the machine back on and get back to work.

[01:04:06] Speaker 07:
I think that's at least one example of what moving relative to a conductive surface might be.

[01:04:12] Speaker 07:
I do want to take a minute and talk about selective coupling.

[01:04:15] Speaker 07:
We had some conversation about that right at the end of my adversary's presentation.

[01:04:20] Speaker 07:
I think the patent is absolutely clear as to what selective coupling is.

[01:04:22] Speaker 07:
Selective coupling is where you couple in a manner that selects where the brush is going to go.

[01:04:27] Speaker 07:
Alignment is very important in these devices.

[01:04:29] Speaker 07:
You've got to get that graphite brush lined right into place.

[01:04:31] Speaker 07:
That's what selective coupling is.

[01:04:33] Speaker 02:
What do you do with the argument of your adversary based on your page 20 of your reply brief?

[01:04:38] Speaker 07:
I think page 20 of our reply brief describes this selective coupling absolutely.

[01:04:42] Speaker 07:
It shows how the brush goes from the brush holder

[01:04:48] Speaker 07:
On the left, it's not shown at all.

[01:04:49] Speaker 07:
And by the time you get to the right, it has been selectively coupled.

[01:04:52] Speaker 07:
The brush is precisely positioned.

[01:04:54] Speaker 07:
That position is dictated by the physical configuration of the components.

[01:04:57] Speaker 07:
It will never come into selective coupling in any other position.

[01:05:01] Speaker 07:
Every time you use it, the brush goes to the same place.

[01:05:05] Speaker 07:
And that is, at one point, I thought.

[01:05:07] Speaker 02:
His argument is that your drawing shows a couple that has coupled in two states, engaged or disengaged.

[01:05:15] Speaker 02:
And so you can select.

[01:05:17] Speaker 02:
to be coupled engaged, or you can select to be coupled disengaged.

[01:05:20] Speaker 02:
I think that was his argument.

[01:05:23] Speaker 07:
His argument sounded like that, I think.

[01:05:25] Speaker 02:
And the drawings seem to demonstrate that.

[01:05:28] Speaker 07:
Respectfully, I disagree.

[01:05:29] Speaker 02:
This is to try to find some meaning for the dependent claim.

[01:05:35] Speaker 07:
That's right.

[01:05:36] Speaker 07:
Right.

[01:05:37] Speaker 07:
And I think the board's attempt to find meaning was to embrace this selecting between coupling states.

[01:05:41] Speaker 07:
I think that's a circular notion.

[01:05:45] Speaker 07:
coupled or uncoupled.

[01:05:46] Speaker 07:
That's what's shown here.

[01:05:47] Speaker 07:
They're coupled or uncoupled.

[01:05:49] Speaker 07:
There aren't states.

[01:05:50] Speaker 07:
Selectively coupled, you now have a gloss, a narrower notion of what coupling is.

[01:05:55] Speaker 07:
You've brought these things into alignment.

[01:05:57] Speaker 07:
I do want to touch briefly on the 018 patent.

[01:06:00] Speaker 07:
I think the 018 patent towards analysis, this so-called design choice analysis, is the embodiment of hindsight and failure to lay out.

[01:06:08] Speaker 07:
It's KSR requires, and as this court required, I do want to make sure we talk about it.

[01:06:11] Speaker 07:
Kinetic concepts, 1368.

[01:06:14] Speaker 07:
This court went into detail that there's a need to show the reasons why things come into combination.

[01:06:20] Speaker 07:
It's not sufficient to just say, well, it could be done.

[01:06:22] Speaker 07:
I see my time is up.

[01:06:24] Speaker 06:
It is.

[01:06:25] Speaker 06:
Thank you.

[01:06:25] Speaker 06:
We thank all sides and the cases are submitted.