[00:00:00] Speaker 00:
740 versus Mud Buddy.

[00:00:30] Speaker 00:
Mr. Wolfe, please proceed.

[00:00:33] Speaker 01:
Thank you, Your Honor.

[00:00:33] Speaker 01:
May it please report?

[00:00:35] Speaker 01:
Matthew Wolfe for Gator Tail.

[00:00:38] Speaker 01:
Sir, are these both used particularly for dynamite fishing?

[00:00:43] Speaker 01:
I can't say they have never been used for such a purpose, but I do some medical device work, and we would call that off-label in our parlance.

[00:00:52] Speaker 01:
As outlined in the brief, the jump from Saito to the claimed invention

[00:00:58] Speaker 01:
involved disregarding just about everything but the propeller shaft of Saito.

[00:01:02] Speaker 01:
So how did we get from such a radical reconfiguration of the primary prior art reference to a finding of obviousness?

[00:01:10] Speaker 01:
Well, we got there through four manifest legal errors.

[00:01:15] Speaker 01:
The first two are interrelated, and I'll touch on briefly.

[00:01:20] Speaker 01:
In addressing the clear and convincing burden and the deference due to the PTU, the court said, quote,

[00:01:27] Speaker 01:
It was troubled by the patents, it being the PTO, was troubled by the patents from the very beginning.

[00:01:35] Speaker 01:
In a similar vein, the district court described the PTO as having, quote, capitulated, end quote, and relented without explanation, end quote, when granting the claims originally and then upon reexamination.

[00:01:49] Speaker 01:
This is not the language of a district court granting deference to the PTO.

[00:01:55] Speaker 01:
or abiding by a clear and convincing standard for invalidity.

[00:01:59] Speaker 01:
Relatedly, the district court found the clear and convincing standard an easier threshold to cross based on perceived omissions by the PTO.

[00:02:09] Speaker 01:
For example, because KSR was not excited expressing certain papers, quote, the district court found, there is little in the 340 re-examination to convince the court that the PTO applied the proper legal standard, end quote.

[00:02:24] Speaker 01:
and that the court, quote, lacks any assurance that the PTO followed KSR.

[00:02:29] Speaker 01:
More directly, as to Tory, the secondary reference.

[00:02:33] Speaker 00:
You're arguing this almost as though the district court was required to review the PTO's determination on re-exam, and you feel that he did an inadequate job in doing so.

[00:02:46] Speaker 00:
But this isn't an appeal to us from a district court review of a re-exam.

[00:02:51] Speaker 00:
This is an appeal to us from a district court

[00:02:53] Speaker 00:
decision, isn't it after a bench trial?

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

[00:02:57] Speaker 00:
And so didn't he have an opportunity to assess the credibility, for example, of Dr. Matthews?

[00:03:05] Speaker 00:
I mean, that was, to me, what seemed to be a critical distinction between what occurred in re-exam, which occurs only on paper, with no opportunity for cross-examination, and in fact, no even physical presence of Dr. Matthews.

[00:03:19] Speaker 00:
It's all done by documentation.

[00:03:21] Speaker 00:
And so for the PTO to say on its face Dr. Matthew's assertions look reasonable and then to accept them, I mean, can't you see how it's certainly feasible that a district court making a credibility determination and if Mr. Matthews doesn't hold up under cross-examination, you could result in a different record.

[00:03:38] Speaker 00:
And that seems to be a little bit of what he said here.

[00:03:41] Speaker 00:
He may have also done all that other stuff you're saying, but if he

[00:03:45] Speaker 00:
if it's reasonable for him to have made the fact-findings he made about the credibility and or testimony of Dr. Matthews, doesn't that justify obviousness in his decision?

[00:03:56] Speaker 00:
Long-winded question, sorry.

[00:03:57] Speaker 01:
No, no, I understand.

[00:03:58] Speaker 01:
And I'll turn to Dr. Matthews in 30 seconds, because obviously that's a critical part.

[00:04:01] Speaker 01:
But just to put a period at the end of the sentence and to answer your first question, the district court at pages 50 to 53 roughly of its opinion goes time and time again says the standard is lower, the barrier is easier.

[00:04:14] Speaker 01:
I can overcome it because, and it lists reasons, and one of the reasons that expressly gave is because the PTO didn't cite KSR, not that it didn't follow it, not that it found error, but because the letters KSR doesn't appear.

[00:04:28] Speaker 01:
Similarly, the district court said it didn't consider Tory when Tory was

[00:04:33] Speaker 01:
A, on the face of the patent, and B, expressly in re-exam.

[00:04:36] Speaker 00:
So... Mr. Wolf, I believe Mr. Matthews said he looked at Sato with blinders on.

[00:04:41] Speaker 00:
He did, and let's... Expressly.

[00:04:42] Speaker 00:
So, I mean, if we're going to criticize the district court for not looking at Tory, let's get to Mr. Matthews.

[00:04:46] Speaker 00:
Absolutely.

[00:04:47] Speaker 01:
So, and I agree with you.

[00:04:49] Speaker 01:
I think that the pivot point for obviousness is this evaluation of Dr. Matthews.

[00:04:55] Speaker 01:
The threshold problem with the court's analysis of Dr. Matthews' credibility is that the district court didn't understand what Dr. Matthews was doing.

[00:05:02] Speaker 01:
in the PTO.

[00:05:04] Speaker 01:
Dr. Matthews said in the PTO, look, I get how the one in skill in the art, generally, you might consider moving the engine into the boat.

[00:05:13] Speaker 04:
When you say he didn't understand, he didn't agree with you.

[00:05:16] Speaker 01:
No, he didn't understand, Your Honor, respectfully.

[00:05:18] Speaker 04:
What you're just going to tell me now, did you tell him, the district court judge?

[00:05:22] Speaker 01:
Your Honor, we said that the trial counsel said that Sato teaches a way, teaches a way

[00:05:31] Speaker 01:
from using a horizontal engine shaft.

[00:05:35] Speaker 01:
What the district court said, and the district court never confronted that.

[00:05:38] Speaker 01:
The fundamental question before the district court, I believe, was, does Sato teach away?

[00:05:43] Speaker 01:
In front of the teach away?

[00:05:45] Speaker 01:
Actually, it didn't.

[00:05:47] Speaker 01:
It cited it.

[00:05:48] Speaker 01:
It cited what my client said below.

[00:05:50] Speaker 01:
It teaches away.

[00:05:52] Speaker 01:
But then in the very next sentence, he seems to imply that KSR did away with the teach away doctrine.

[00:05:58] Speaker 02:
He doesn't actually say, I don't find... Does a horizontal shaft engine allow only one design solution?

[00:06:05] Speaker 01:
No, absolutely not.

[00:06:07] Speaker 01:
There are any number of design solutions one can have with a horizontal shaft engine.

[00:06:12] Speaker 02:
So the district court, and I believe... Doesn't your teaching away argument rest on that assumption?

[00:06:18] Speaker 01:
No, your honor, because at column one, line 41,

[00:06:24] Speaker 01:
Saito says, however, with this type of device, the horizontal axis is disposed, and then goes on to list four problems with the horizontal engine axis.

[00:06:34] Speaker 01:
Now, what's interesting is the fight below was whether Saito was right or wrong.

[00:06:39] Speaker 01:
And at the end of the day, everybody came to believe that Saito's criticisms in column one were wrong as a matter of engineering, that he was incorrect.

[00:06:49] Speaker 01:
But whether he was, as a matter of mechanical engineering, correct or not,

[00:06:52] Speaker 01:
is not the teaching away analysis that should have been done.

[00:06:56] Speaker 04:
If the analysis should have been just like to say... If one ordinary skill in your heart would understand that the language that you're talking about is incorrect, why would you pay attention to it?

[00:07:07] Speaker 01:
Well, Your Honor, first of all, that analysis was never done by the district court.

[00:07:11] Speaker 01:
I'm not aware of a case there may be one.

[00:07:12] Speaker 01:
You're talking in theory about what teaching away is all about.

[00:07:17] Speaker 04:
That's my question.

[00:07:18] Speaker 01:
I'm not aware of a case that says that in a clear situation of teaching away,

[00:07:22] Speaker 01:
If everybody knows that the science behind the teaching of the way is wrong, we can disregard it.

[00:07:26] Speaker 01:
There may be such a case.

[00:07:27] Speaker 01:
I'm not aware of it.

[00:07:28] Speaker 01:
Shouldn't there be?

[00:07:31] Speaker 01:
Well, no, Your Honor, because it's still the question is why would you combine these references?

[00:07:35] Speaker 04:
You have a reference out there in the Army.

[00:07:37] Speaker 04:
Everybody agrees it's wrong.

[00:07:38] Speaker 04:
But it doesn't teach away then, does it?

[00:07:41] Speaker 01:
If I say, I have a sports car, don't use red because red will get the cops on your tail.

[00:07:46] Speaker 01:
And it turns out that the statistics

[00:07:48] Speaker 01:
are that the police will pull you out.

[00:07:50] Speaker 01:
And everybody in Skilled in the Art knows that that's not true.

[00:07:54] Speaker 01:
How does it teach you that?

[00:07:55] Speaker 01:
Because as far as I know when you look at it... It's a bad teacher, right?

[00:07:59] Speaker 01:
Right.

[00:08:00] Speaker 04:
We have a new Santa law that says bad teachers can teach away.

[00:08:03] Speaker 01:
Well, that would be the new law that this court would need to create.

[00:08:05] Speaker 04:
You wouldn't want that law, would you?

[00:08:07] Speaker 01:
A bad lawyer?

[00:08:08] Speaker 01:
That would have to be... I would not, but that would have to be sent back for review.

[00:08:11] Speaker 01:
But the fundamental point... That's what you're asking for.

[00:08:13] Speaker 01:
No, what I'm asking for is a recognition that the district court

[00:08:16] Speaker 04:
did not actually do

[00:08:33] Speaker 04:
Judge Waller was suggesting then the fact that the district court hadn't done is what we usually call harmless error.

[00:08:38] Speaker 01:
For two reasons it's not harmless error, even if that were the law.

[00:08:42] Speaker 01:
The first is that the credibility determination the district court made as to Dr. Matthews was not that he said yes when he said the sun was red when it was actually yellow.

[00:08:53] Speaker 01:
It was the difference in testimony between what he said at the PTO and at deposition.

[00:08:58] Speaker 01:
The thing about the PTO though... I didn't think that the

[00:09:01] Speaker 04:
District Court's problem was the doctor was solely on the basis of teaching.

[00:09:06] Speaker 04:
I thought it also had to do with the fact that he had failed to tell the PTO what he told the court.

[00:09:12] Speaker 01:
But in paragraphs 11 and 12 of his declaration, he says expressly, one of skill in the art might see acts in a vacuum, but when one looks at seto, one teaches away.

[00:09:23] Speaker 01:
And the district court never grappled with that.

[00:09:25] Speaker 01:
The district court in essence said, Dr. Matthews, I don't trust you.

[00:09:28] Speaker 01:
You're not credible.

[00:09:29] Speaker 00:
When really what he was saying is... Well, he did say, you're not credible.

[00:09:32] Speaker 00:
I agree with that.

[00:09:33] Speaker 00:
But he also said he admitted at trial, say, to suffer from weight and balance issues.

[00:09:38] Speaker 00:
I mean, Mr. Matthews provided a lot more testimony, not all of it, supportive of your cause in the district court.

[00:09:47] Speaker 00:
It was not before the PTO.

[00:09:49] Speaker 00:
And all of those things, the district court cites and talks about why, therefore, he doesn't

[00:09:55] Speaker 00:
find Mr. Matthew's expert testimony to be persuasive?

[00:09:59] Speaker 01:
Respectfully, Your Honor, I believe that if you factor in the prism, the different prism that Dr. Matthews used at the PTO, applying the teach-away doctrine to the more generic questions asked at trial, if you take that issue away, then there's nothing, there's no contradiction.

[00:10:17] Speaker 01:
There's nothing to, that the basis of the credibility determination evaporates at that point.

[00:10:22] Speaker 01:
Credibility determination, if it's based on, I just don't trust you.

[00:10:26] Speaker 01:
You obviously are in no position to review that.

[00:10:28] Speaker 01:
But the court expressly said what the basis of its credibility determination was.

[00:10:32] Speaker 01:
And the basis of the court's credibility determination was the court's misunderstanding of the law.

[00:10:37] Speaker 01:
Was the court's failure to analyze the teaching way dark?

[00:10:39] Speaker 04:
Well, it also was also what the presiding judge was talking to.

[00:10:41] Speaker 04:
The doctor had also said something to the effect of, oh, well, you could put a horizontal engine in there.

[00:10:47] Speaker 04:
It wouldn't be a problem with regard to SATO.

[00:10:51] Speaker 01:
But Sato says don't do that.

[00:10:53] Speaker 01:
And so we get back to Judge Wallach's question.

[00:10:55] Speaker 04:
My point is if we are going to disagree with you on the teachaway argument, then why isn't the district court correct?

[00:11:03] Speaker 01:
So then we get to the second basis.

[00:11:04] Speaker 01:
If you say that's not sufficient to say at least to the district court.

[00:11:07] Speaker 04:
I mean, imagine what would happen if the declaration from the good doctor had been put into the PTO that had his teachaway argument, but also said, oh, well, if you want

[00:11:18] Speaker 04:
modify Sato by putting a horizontal engine and go ahead and anybody in their heart could do that.

[00:11:24] Speaker 04:
Imagine what that declaration would have done to your case at the PTO.

[00:11:31] Speaker 04:
I thought that was really what the district court was saying.

[00:11:33] Speaker 01:
But, Your Honor, I believe that the PTO understood far better than the district court did the importance of the teachaway argument.

[00:11:40] Speaker 01:
Dr. Matthews didn't hide his cards in the declaration.

[00:11:43] Speaker 01:
I mean, essentially the district court disregarded the first two sentences

[00:11:46] Speaker 01:
of paragraph 11 of the declaration where he says, I get that one is still in the art and a vacuum might think to do this, but let's look at what Stato says.

[00:11:54] Speaker 01:
Now the district court may disagree with that, although he didn't say that.

[00:11:58] Speaker 01:
He doesn't put that analysis in there.

[00:12:00] Speaker 01:
But to say that somehow Dr. Matthews was dishonest or not credible because he was following the teachaway doctrine, we think if the reason the judge didn't believe Dr. Matthews is because the judge did not understand the relevant law that Dr. Matthews was applying.

[00:12:14] Speaker 01:
I do not believe that it was appropriate to make a credibility determination based on that and should be sent back and said, here's the law you're on, district court, now make a credibility determination.

[00:12:23] Speaker 01:
But let's go to perhaps the most important factor here, which is secondary considerations of non-obviousness.

[00:12:29] Speaker 00:
To be clear, you're into your rebuttal time.

[00:12:30] Speaker 00:
Use it at your peril.

[00:12:31] Speaker 01:
I will do it very quickly.

[00:12:33] Speaker 01:
Your Honor, this is the most important thing.

[00:12:34] Speaker 01:
The district court did not apply the Demico line of cases.

[00:12:38] Speaker 01:
Here, that was undisputed that the patented invention and the commercial product were co-extensive.

[00:12:45] Speaker 01:
Under DEMACO, that raises a presumption of a nexus.

[00:12:50] Speaker 01:
The district court found that, quote, it was unclear which characteristics led to commercial success, and that commercial success therefore is not pertinent.

[00:13:01] Speaker 01:
That turns the DEMACO presumption on its head.

[00:13:04] Speaker 01:
Once that nexus was established by presumption, it was up to the defendant, not the plaintiff, to show what was the cause.

[00:13:11] Speaker 01:
And by doing that, that alone dictates that reversal must occur.

[00:13:16] Speaker 01:
Very briefly on indefiniteness, Your Honor, the court did not point out what claim or term or limitation was indefinite.

[00:13:24] Speaker 01:
Without that, there can be no indefiniteness finding.

[00:13:27] Speaker 04:
And finally, on the written description issue... You said it was a propeller shaft extending at least 12 to 18 inches.

[00:13:33] Speaker 01:
The basis the court found in validating under written description was there was no maximum length prescribed.

[00:13:43] Speaker 01:
It wasn't a minimum length issue.

[00:13:44] Speaker 01:
That's an argument that defendants made.

[00:13:46] Speaker 01:
But the court found it was a maximum length issue.

[00:13:48] Speaker 04:
That's because extending at least 12 to 18 inches can also extend to 192 inches.

[00:13:54] Speaker 01:
Sure, absolutely.

[00:13:55] Speaker 01:
But the claim, the patent also doesn't talk about what material the engine was made of or what color it was.

[00:14:00] Speaker 04:
what its country of origin was.

[00:14:05] Speaker 01:
As a technical matter, yes.

[00:14:09] Speaker 01:
It wouldn't work, but if you could somehow make it work, it would infringe.

[00:14:15] Speaker 01:
And then finally, on the engine mounting plate issue, the court again misconstrued it, misconstrued the relevant standard.

[00:14:21] Speaker 01:
Simply put, Dr. Matthews said the engine mounting plate was expressly in Figure 4.

[00:14:27] Speaker 01:
The experts for defendants said, we can't really tell.

[00:14:30] Speaker 01:
The district court said it was insolubly ambiguous.

[00:14:34] Speaker 01:
Well, if something's insolubly ambiguous, that doesn't satisfy a clear and convincing standard.

[00:14:38] Speaker 01:
Again, this entire case falls, it has to be remanded on the basis of misapplied presumption.

[00:14:44] Speaker 01:
Thank you.

[00:14:48] Speaker 00:
Who's first?

[00:14:49] Speaker 02:
Mr. Strait?

[00:14:52] Speaker 02:
Mr. Murl and I will divide the allocated time.

[00:14:55] Speaker 02:
I'll focus on obviousness and Mr. Murl will focus on indefiniteness and lack of written description.

[00:15:00] Speaker 02:
May it please the court.

[00:15:01] Speaker 02:
The district court properly determined that the gator tail combination patents are invalid as obvious.

[00:15:07] Speaker 02:
It applied the correct legal standard throughout, recognized the presumption of validity, and made its findings explicit and supported by clear and convincing evidence.

[00:15:15] Speaker 02:
Mud buddy respectfully request that this court affirm the judgment of the district court.

[00:15:19] Speaker 02:
I want to focus on

[00:15:20] Speaker 02:
several issues that were only really raised in the reply brief and in the argument here today.

[00:15:25] Speaker 02:
First, the district court applied the exact proper standard and the degree of deference necessary.

[00:15:32] Speaker 02:
Second, the SATO patent does not teach away.

[00:15:35] Speaker 02:
Third, there was an obvious motivation to combine a horizontal shaft engine with the short tail design that's at issue.

[00:15:43] Speaker 02:
And finally, the court properly evaluated the secondary consideration.

[00:15:48] Speaker 02:
The clear and convincing standard does not change.

[00:15:51] Speaker 02:
It's the same standard.

[00:15:52] Speaker 02:
And it is through that standard that the court recognizes the presumption of validity.

[00:15:57] Speaker 02:
That's the way the difference is paid to those prior decisions of the Patent Office.

[00:16:02] Speaker 02:
But as the Supreme Court in Microsoft said, if the Patent Office doesn't have all of the material facts, it's considered judgment loses force.

[00:16:10] Speaker 02:
Here, the Patent Office did not have all the material facts, including Tory, Scavenger, Honda,

[00:16:17] Speaker 02:
It also didn't have the inventor's pre-patent filing, pre-litigation admission in a senior project that the only major design specification is to incorporate a horizontal drive unit onto the existing go-devil hull.

[00:16:31] Speaker 00:
What precisely was the prior art upon which the district court based its decision of obviousness?

[00:16:38] Speaker 02:
So the district court listed all of the prior art that was not objected to in terms of being prior art.

[00:16:43] Speaker 02:
It then went on to identify specific

[00:16:46] Speaker 02:
pieces of prior art that it felt were the most pertinent to the obviousness determination.

[00:16:51] Speaker 00:
See, that's not helpful.

[00:16:53] Speaker 00:
District courts don't just articulate 20 pieces of prior art and now they run them all obvious.

[00:16:58] Speaker 00:
Figure out how to put them together.

[00:16:59] Speaker 00:
I really got a sense that this opinion was only about Sado and maybe Tory, but I wasn't even sure if it was Sado plus Tory or Sado and Tory.

[00:17:07] Speaker 00:
I mean, tell me, what was the precise nature of the district court's conclusion?

[00:17:11] Speaker 00:
What patent precisely rendered these

[00:17:14] Speaker 02:
And I think the court specifically focused on Sato.

[00:17:17] Speaker 02:
That was what he walked through in detail, carefully focused on Sato.

[00:17:21] Speaker 00:
And contrary to the arguments that have been made here, Sato... All that other stuff you articulated, all that other prior art about Mr. Inventor's so-and-so statement and his PhD or whatever else it was, none of those, it seems to me, formed any basis that I can see

[00:17:37] Speaker 00:
in this opinion for the district court's conclusion of obviousness?

[00:17:41] Speaker 02:
For example, sorry, for example, the district court would use other pieces of art to show, for example, a timing belt was known in the prior art or other pieces of art.

[00:17:51] Speaker 02:
There's no question, Your Honor, the focus of the opinion was Sado and Tory.

[00:17:56] Speaker 04:
There's no real challenges to what that other prior art teaches.

[00:17:59] Speaker 04:
That's right.

[00:18:00] Speaker 02:
That's right, Your Honor.

[00:18:01] Speaker 04:
Like the presiding judge is saying, and I agree with his, I think you're starting off by saying, oh, well,

[00:18:06] Speaker 04:
world of difference here.

[00:18:07] Speaker 04:
The district court considered whole lots of things that the patent office did, therefore the district court judge was okay to be critical of the patent office.

[00:18:16] Speaker 04:
That's not going to wash.

[00:18:17] Speaker 04:
I mean, the problem here is to show that Sato doesn't teach a way.

[00:18:22] Speaker 02:
And I don't think the court was critical of the patent office.

[00:18:26] Speaker 02:
What he was critical of was Dr. Matthews not providing complete information to the Patent Office.

[00:18:31] Speaker 04:
And then at trial, the credibility issue was that Dr. Matthews... The whole problem is if Sato teaches away from strapping a horizontal engine into Sato's invention, then your case is over because Sato is going to disappear.

[00:18:47] Speaker 04:
I don't think that that... Are you going to make an argument?

[00:18:49] Speaker 04:
I mean, your adversary has made, I think, a very fine argument as to why Sato should be taken off the table.

[00:18:55] Speaker 04:
And you're rebutting that, I believe, as the time ticks off.

[00:18:59] Speaker 02:
Yes.

[00:19:00] Speaker 02:
And Your Honor, I don't think Sato is the only way to get to the obviousness determination.

[00:19:04] Speaker 02:
The Court also used... I mean, you better take some time to take it off the table.

[00:19:08] Speaker 02:
Okay.

[00:19:08] Speaker 02:
Well, so Sato itself, first of all, whether a reference teaches away is a fact question.

[00:19:14] Speaker 02:
and the court expressly considered Gatortails teaching away on it.

[00:19:17] Speaker 04:
So I was saying it was clearly erroneous, so move on.

[00:19:20] Speaker 02:
Okay, and what the Gatortails asking the court to do is to disregard those fact findings, what was critical at the trial court level.

[00:19:31] Speaker 04:
So why didn't the district court say Sato didn't teach away?

[00:19:36] Speaker 02:
The court expressly, page 40 of the opinion, considered the argument that it taught away and rejected the argument.

[00:19:41] Speaker 02:
He did consider it.

[00:19:42] Speaker 04:
And I think- How do we know how he rejected it?

[00:19:45] Speaker 04:
If he said, oh, I consider it, but I reject it.

[00:19:47] Speaker 04:
I think that's part of what your adversary's argument is.

[00:19:51] Speaker 04:
You know, this is not kangaroo court.

[00:19:54] Speaker 02:
You're supposed to say why things are- But part of what we see here on appeal are arguments that Sato expressly teaches away when it does not.

[00:20:02] Speaker 02:
The claims... Well, why don't you tell us?

[00:20:04] Speaker 04:
I mean, they're all here.

[00:20:06] Speaker 04:
Tell me why Sado doesn't think alike.

[00:20:08] Speaker 02:
First of all, Gator Tail selectively cites portions of the background of the invention that criticize horizontal shaft engines.

[00:20:17] Speaker 02:
However, Sado also critiques vertical shaft engines, and that's at column one, lines 24 to 26.

[00:20:24] Speaker 02:
That would then be teaching away from his own patent.

[00:20:28] Speaker 02:
No, his goal was to address the issues with both.

[00:20:32] Speaker 02:
And when you get to the claims of Sado, nothing in those claims say you must use a vertical shaft engine.

[00:20:38] Speaker 02:
And the testimony at trial from the experts was a support bracket in the claims could be for either vertical or horizontal engines.

[00:20:46] Speaker 02:
That's the only thing Gator Tail cites in the claims themselves is this support bracket for the engine.

[00:20:51] Speaker 02:
Dr. Gares testified, and this is at page 22 of GoDevil's brief,

[00:20:54] Speaker 02:
The advantage to a horizontal drive engine is that you mount the motor to any point that the designer finds convenient.

[00:21:01] Speaker 02:
But then importantly, what Sato does and what Dr. Matthews provided at trial was the motivation to combine Sato and a horizontal shaft engine.

[00:21:11] Speaker 02:
And therefore, Dr. Matthews, DataTel's own expert, provided both the testimony that Sato does not teach away and provides the motivation to combine.

[00:21:20] Speaker 04:
So you're saying that Dr. Matthews' testimony is inconsistent with the teach away theory.

[00:21:24] Speaker 02:
Exactly.

[00:21:25] Speaker 02:
That's exactly what we're saying.

[00:21:26] Speaker 02:
And what happened was he tried to return to his discredited declaration that he gave to the PTO at trial.

[00:21:32] Speaker 02:
But on cross-examination, when confronted with his deposition testimony, he had to claim that he was obviously wrong in his deposition.

[00:21:39] Speaker 02:
And what he said was, I think that a mechanical engineer would look at SATO and say, we've got way too much structure hanging out behind the boat.

[00:21:47] Speaker 02:
And so this vertical crankshaft design in SATO is just not going to work in a mudboat application.

[00:21:53] Speaker 02:
we need a horizontal crankshaft engine.

[00:21:56] Speaker 02:
That's at page 2172 of the appendix.

[00:22:00] Speaker 02:
Critical testimony, because it provides not only to Sato not teach away, it gives us a motivation to combine a horizontal shaft engine with the short tail design of Sato.

[00:22:09] Speaker 02:
The key to Sato is the short tail design.

[00:22:12] Speaker 00:
So let me see if I understand.

[00:22:17] Speaker 00:
If we disagree with you that Sato teaches away and that

[00:22:23] Speaker 00:
we find there's a clear error in the district court's fact-finding about, I don't find the teaching away.

[00:22:29] Speaker 00:
Do you lose?

[00:22:31] Speaker 02:
I don't think so, Your Honor, because as pointed out, we also have TORI that the court separately reviewed, started with TORI, said looking at TORI, belt-driven mud motor, and the only elements that were missing from it that are found in the prior art are an elongated drive shaft.

[00:22:49] Speaker 00:
But let me ask you a question which

[00:22:52] Speaker 00:
I'm going to define for you as I think helpful to you.

[00:22:55] Speaker 00:
I just want to start that out so you don't kind of reject it out of hand.

[00:22:59] Speaker 00:
But I don't know.

[00:23:00] Speaker 00:
So I understood FATO to the extent it taught away as teaching away because you don't want this long thing.

[00:23:06] Speaker 00:
I mean, my technology understanding here is quite minimal.

[00:23:09] Speaker 00:
But you want this long thing, you know, getting in the muck and the mud and bouncing off whatever, I don't know, land, you know, because it was really long.

[00:23:17] Speaker 00:
I'm admitting my technology is awful.

[00:23:20] Speaker 00:
So Sado, I thought, went to the vertical drive shaft to avoid having this long thing that was hitting up against us.

[00:23:29] Speaker 00:
So couldn't it be fair to say that Dr. Matthews and others said that while Sado thought away from the long thing, and he may have defined that in terms of horizontal versus vertical,

[00:23:43] Speaker 00:
when a skill in the art understood that there were ways to use a horizontal that didn't involve that long thing that banged up against everything.

[00:23:52] Speaker 02:
And thank you, Arne.

[00:23:53] Speaker 02:
What?

[00:23:54] Speaker 00:
Thank you for the most mutilated version of technology I think I've ever given.

[00:23:59] Speaker 02:
The way Dr. Garris explained that at trial that I think was the most helpful, SATO tried to solve both problems.

[00:24:06] Speaker 02:
A vertical shaft engine that was too close to the boat

[00:24:09] Speaker 02:
and a long tail engine that was too far away.

[00:24:12] Speaker 00:
Did Sato discuss weight and the problem with having all that weight off the back end?

[00:24:16] Speaker 02:
He didn't and I think that's one of the issues that is at issue with his patent is when anybody looks at it including Dr. Matthews they say

[00:24:24] Speaker 02:
That's an obvious problem and an obvious way to address that problem would be to use the horizontal shaft engine and help you move some of that weight off of the back of the boat.

[00:24:33] Speaker 02:
But once again, in the claims themselves, there's nothing in those claims that says you must use a vertical shaft engine.

[00:24:40] Speaker 02:
It's absent from the claims.

[00:24:41] Speaker 02:
All the claims talk about is a support structure and that can be used for either vertical or horizontal.

[00:24:47] Speaker 02:
The key to SATO

[00:24:49] Speaker 02:
was this short tail design that solved the problems of both too close to the boat and too far away from the boat.

[00:24:56] Speaker 02:
I think it's also important that the district court found the clear motivations to combine these references.

[00:25:04] Speaker 02:
The horizontal drive helped Sato balance problems.

[00:25:07] Speaker 02:
It was an obvious motivation.

[00:25:08] Speaker 02:
And then he walked through the obvious choices to help Tory to get to the result that the gator tail patents refer to.

[00:25:19] Speaker 02:
There's a suggestion in the reply brief that MudBuddy and its experts have conceded teaching away.

[00:25:26] Speaker 02:
And that's just simply not accurate.

[00:25:27] Speaker 02:
If you look at Dr. Todd's testimony, page 6801 of the appendix, he intuitively followed the KSR test.

[00:25:34] Speaker 00:
And when asked about teaching away, he said, OK, you are 36 minutes into his time.

[00:25:38] Speaker 02:
36 seconds.

[00:25:40] Speaker 00:
Second.

[00:25:41] Speaker 00:
Thank you.

[00:25:41] Speaker 00:
36 seconds.

[00:25:41] Speaker 00:
It might feel like 36 minutes to some of us, into his time.

[00:25:45] Speaker 00:
So are you going to stop now and let him have his time?

[00:25:46] Speaker 00:
Yes, I am.

[00:25:47] Speaker 00:
Thank you.

[00:25:53] Speaker 00:
You get your full time, since he stopped so politely and sat down right away.

[00:25:57] Speaker 03:
May it please the court, my name is John Murrell.

[00:25:59] Speaker 03:
I represent GoDevil.

[00:26:02] Speaker 03:
I'd like to briefly address the issues with regard to lack of written description.

[00:26:06] Speaker 04:
That's their names for these companies.

[00:26:07] Speaker 03:
And we've got Mud Buddy, GoDevil, and Gator Tail.

[00:26:10] Speaker 00:
Well, hey, you got a wolf representing a gator.

[00:26:12] Speaker 00:
I don't know what to do about that.

[00:26:15] Speaker 03:
It has caused me quite a bit of confusion myself over the last few years.

[00:26:20] Speaker 03:
specifically with regard to lack of written description, lack of enablement.

[00:26:24] Speaker 03:
The engine mailing plate, that is a term that was, there's no dispute, it was added by amendment to the claims long after the original application was filed.

[00:26:36] Speaker 03:
Engine mailing plate does not appear anywhere in the specification.

[00:26:41] Speaker 03:
In fact, when the application was filed, something entirely contrary was suggested in the specification.

[00:26:47] Speaker 03:
It says that the horizontal shaft engine is vertically mounted, suggesting that the vertical face of the horizontal shaft engine was bolted directly to the back of the drive housing.

[00:27:00] Speaker 03:
The argument that an engine mounting plate was inherently contained in the specification, when the specification says something completely different

[00:27:10] Speaker 03:
simply does not stand to reason.

[00:27:12] Speaker 03:
It's also a factual determination that was made by the trial court.

[00:27:16] Speaker 03:
He concluded that he looked at the vertical mounting language.

[00:27:20] Speaker 03:
He looked at the arguments on engine mounting plate.

[00:27:23] Speaker 03:
He looked at this fight over the diagrams.

[00:27:26] Speaker 03:
And after weighing all of that evidence, he concluded as a factual matter that engine mounting plate was not enabled or described in the application.

[00:27:36] Speaker 03:
For that reason, and I should also add, that's only subject to review for clear error.

[00:27:42] Speaker 03:
And Gator Tail comes into this courtroom and simply wants to retry that issue, re-urge all of these same arguments about the meaning of these diagrams using the testimony of their trial witness, Dr. Matthews, who's already been discredited as a witness, whose credibility has been called into question as a witness by the district court with regard to indefiniteness.

[00:28:04] Speaker 03:
Now, I did not hear this.

[00:28:06] Speaker 03:
in the presentation on oral argument, but I do, it was raised in Gator Tales brief.

[00:28:11] Speaker 03:
There was a suggestion that the appellees did not have the procedural, it was procedurally improper for the defendants, the appellees, to raise the issue of lack of written description, lack of enablement with regard to the segmented propeller shaft.

[00:28:28] Speaker 03:
I do want to respond to that briefly and I would respectfully refer the court

[00:28:32] Speaker 03:
to the United States Supreme Court decisions in Union Pacific 558, United States 67, also the Bloom decision 457, US 132.

[00:28:43] Speaker 03:
Those cases both clearly make the point that we do not have to file our own cross appeal to raise issues in support of the trial court judgment.

[00:28:54] Speaker 03:
So I just want to address that.

[00:28:55] Speaker 03:
I wanted to address that.

[00:28:56] Speaker 03:
I did not want to leave it unresponded to with regard to indefiniteness.

[00:29:00] Speaker 03:
gator tail argues that, well, the specifications teach away from long tails.

[00:29:06] Speaker 03:
That's what they said in their brief.

[00:29:08] Speaker 03:
Now, if I understood correctly an oral argument, I believe in response to Judge Clevenger's questions, I believe it was stated that a propeller shaft of 192 inches would infringe the patents.

[00:29:23] Speaker 03:
So I'm not sure where that leaves us.

[00:29:25] Speaker 03:
It almost sounds to me as though there's a confession here that

[00:29:30] Speaker 03:
They are indefinite.

[00:29:31] Speaker 03:
That's been our argument all along, that the scope of the claims in light of the specification places no limit on shaft length, does not define any minimum or maximum length of a drive housing, and the variability in those two configura- it allows for an infinite number of configurations.

[00:29:54] Speaker 03:
There's no definiteness to these patents at all.

[00:29:58] Speaker 00:
Why?

[00:29:59] Speaker 00:
Why does- I don't-

[00:30:00] Speaker 00:
I don't understand that argument.

[00:30:02] Speaker 00:
So it says at least 12 inches.

[00:30:05] Speaker 00:
So what?

[00:30:05] Speaker 00:
Why does that make it indefinite?

[00:30:06] Speaker 00:
It says 12 or more.

[00:30:08] Speaker 00:
So what if it's 192 inches?

[00:30:10] Speaker ?:
So what?

[00:30:11] Speaker 03:
Because it's the combination, Your Honor.

[00:30:13] Speaker 04:
You claim it's a short tail patent.

[00:30:17] Speaker 04:
Your argument is this patent is designed for short tails, not long tails.

[00:30:22] Speaker 04:
192 inches is not a short tail.

[00:30:25] Speaker 03:
And they argued in connection with claim construction.

[00:30:29] Speaker 04:
But the patent isn't strictly restricted to a short tail.

[00:30:31] Speaker 03:
They sought this expansive construction at the markman hearing, and they got it.

[00:30:35] Speaker 03:
They won that.

[00:30:36] Speaker 03:
But now, when we reach the invalidity stage, they want to pull back from that and say, wait a minute, our patents don't extend to all of these other designs.

[00:30:45] Speaker 00:
No, that's a different question than indefiniteness.

[00:30:47] Speaker 00:
I'm not buying your indefiniteness argument.

[00:30:50] Speaker 00:
And you're morphing it now into something else, and I'm not buying it.

[00:30:53] Speaker 00:
But I don't understand why a claim that says at least 12 inches, at least 18 inches is indefinite.

[00:30:59] Speaker 00:
I don't understand.

[00:31:01] Speaker 03:
And let me be clear, Your Honor.

[00:31:02] Speaker 03:
It's not merely the length of the propeller shaft.

[00:31:06] Speaker 03:
It is a combination of things.

[00:31:08] Speaker 03:
It is the length of the propeller shaft.

[00:31:11] Speaker 00:
It is also the... Well, no, indefiniteness.

[00:31:15] Speaker 00:
What is indefinite about this claim?

[00:31:17] Speaker 03:
Tell me the precise claim language that is indefinite and not subject to reasonable certainty.

[00:31:31] Speaker 03:
with the length of the propeller shaft.

[00:31:33] Speaker 00:
Why?

[00:31:34] Speaker 00:
So you can use any length.

[00:31:35] Speaker 00:
So what?

[00:31:36] Speaker 00:
That means it's not limited.

[00:31:37] Speaker 03:
But as we illustrated in our brief, that would extend to the traditional long tail.

[00:31:43] Speaker 00:
Okay, so then maybe it's obvious.

[00:31:45] Speaker 00:
But why does that make it indefinite?

[00:31:46] Speaker 03:
Because it does not reasonably convey the scope of the invention as required by nautilus.

[00:31:52] Speaker 00:
Sure it does.

[00:31:53] Speaker 00:
The scope of the invention is any length is good.

[00:31:56] Speaker 00:
That's what he asked for.

[00:31:57] Speaker 00:
That's what he applied for.

[00:31:58] Speaker 00:
That's what he got.

[00:31:59] Speaker 03:
But it's not just the length.

[00:32:00] Speaker 03:
It allows you to move the drive housing up the transom, just like GoDevil did when it thought it was designing away from these.

[00:32:08] Speaker 00:
He don't.

[00:32:08] Speaker 00:
So again, go after him for novelty and obviousness.

[00:32:11] Speaker 00:
I don't see how that has anything to do with indefiniteness.

[00:32:14] Speaker 03:
Well, I recognize you disagree with me, Your Honor.

[00:32:17] Speaker 03:
I would say that I would also add they can't

[00:32:20] Speaker 03:
have it both ways.

[00:32:22] Speaker 03:
If the court agrees with Gatortail that these claims provide the certainty necessary to pass the Nautilus test, then there's a complete lack of enablement or written description of these same designs.

[00:32:38] Speaker 03:
There is nothing in the specification that enables... Enablement is not on appeal to us.

[00:32:43] Speaker 00:
I didn't miss something, did I?

[00:32:44] Speaker 00:
I think only written description, right?

[00:32:46] Speaker 00:
Written description and indefiniteness.

[00:32:48] Speaker 03:
Okay, I'll limit it to written description.

[00:32:50] Speaker 03:
It's a factual finding and the judge, the written description argument, if you decide the indefiniteness argument in their favor, then there's nothing that describes... You can't make a written description argument on the length.

[00:33:06] Speaker 04:
The length issue is an indefiniteness argument, nautilus argument.

[00:33:10] Speaker 03:
Well, what we made was a written description argument with respect to the segmented propeller shaft

[00:33:16] Speaker 03:
and U-joint connection that allows all of these different configurations, which Judge Moore referred to.

[00:33:23] Speaker 03:
If you find that those are, am I, I'm sorry, am I misreading this?

[00:33:28] Speaker 03:
Am I out of time?

[00:33:29] Speaker 00:
Yeah, you're out of time.

[00:33:31] Speaker 00:
But it's okay.

[00:33:32] Speaker 00:
We'll give Mr. Wolfe a little bit of rebuttal time, which I bet he'll appreciate.

[00:33:35] Speaker 00:
So you keep, the longer you go, the more time he gets.

[00:33:38] Speaker 00:
Well, in that case, I'll have a seat.

[00:33:41] Speaker 00:
Thank you very much.

[00:33:44] Speaker 00:
So at two minutes, he's over by about two to his rebuttal time.

[00:33:49] Speaker 01:
Thank you.

[00:33:49] Speaker 01:
I want to leave the court with three important thoughts, hopefully very brief thoughts.

[00:33:55] Speaker 01:
The first, at page 40 of the district court's opinion, which is the appendix 40, the district court writes, gator tail, of course, vigorously refutes this conclusion, emphasizing repeatedly that Saito rejected and taught away from using a horizontal shaft engine.

[00:34:09] Speaker 01:
That's our argument.

[00:34:11] Speaker 01:
In short, the court is not persuaded by gator tails arguments because they rely on the same rigid application of the teaching suggestion or motivation that test rejected by the Supreme Court.

[00:34:21] Speaker 01:
That is the sum total of the district court's analysis of the teach away argument.

[00:34:26] Speaker 01:
Council said that teaching away is a factual determination entitled a clearly erroneous review.

[00:34:31] Speaker 01:
That's absolutely true.

[00:34:32] Speaker 01:
But what I just read to you didn't contain a single factual finding.

[00:34:36] Speaker 01:
In fact, I would say it's based on a legal premise

[00:34:39] Speaker 01:
that KSO overruled teachaway doctrine, that is simply untrue.

[00:34:44] Speaker 01:
Secondly, on the notion of secondary considerations, you heard nothing from counsel, just like you heard nothing from the district court, about the presumption that Demicoe and all of its progenies say is entitled to a patent like this one, where it is undisputed there is co-extensivity, if that were a word, between the claims and the commercial product.

[00:35:06] Speaker 01:
It was defendant's burden to overcome that presumption.

[00:35:10] Speaker 01:
When the district court threw up its hands and said, I don't know, that should have entitled us to the presumption, should have entitled us to the benefits of the commercial success and other secondary considerations.

[00:35:24] Speaker 01:
Instead, the district court said it is therefore not pertinent.

[00:35:27] Speaker 01:
That is 180 degrees off what the law is under DEMACO and elsewhere.

[00:35:32] Speaker 01:
Finally,

[00:35:33] Speaker 01:
When I talk about the metal plate issue, the mounting plate issue, both the district court and defendants misconstrued the lead argument made by Gator Tail in this case.

[00:35:44] Speaker 01:
And that lead argument is that figure four combined with the language expressly, not inherently, expressly disclosed that engine mounting plate.

[00:35:54] Speaker 01:
And what did the court say?

[00:35:55] Speaker 01:
The only response the court made was in footnote 41 where it said the situation is ambiguous.

[00:36:01] Speaker 01:
It can't tell whether it is expressly disclosed or not.

[00:36:05] Speaker 01:
It is axiomatic, Your Honors, that if something is ambiguous, it is not clear and convincing.

[00:36:13] Speaker 01:
They spent most of the time in the brief, and the district court spent all of its time, except in that footnote, talking about inherencies.

[00:36:22] Speaker 04:
The dealing experts disagreed as to whether or not the patent itself taught the existence of the plate.

[00:36:29] Speaker 01:
They were 90 degrees opposed, not 180 degrees opposed.

[00:36:32] Speaker 01:
Dr. Matthews said, it's there.

[00:36:36] Speaker 04:
Why can't, aren't we forced to presume that the district court chose one expert over the other?

[00:36:40] Speaker 01:
But Dr. Garrison, Dr. Cuney said, it could be there, we can't tell.

[00:36:45] Speaker 01:
The district court did adopt.

[00:36:48] Speaker 01:
what defendant's expert said, and that was it's ambiguous.

[00:36:51] Speaker 01:
Well, ambiguous isn't clear and convincing.

[00:36:55] Speaker 00:
All right, Mr. Wolf, I think we have to wrap up.

[00:36:57] Speaker 00:
Thank you very much for your time, Your Honor.

[00:36:58] Speaker 00:
Thank both counsels for their argument.

[00:37:00] Speaker 00:
The case is taken under submission.