[00:00:00] Speaker 03: women this morning i just want to be briefly on behalf of the panel and the half of the court we welcome keep dead dark from delaware and of the thing that uh... and we're delighted to happen thank you for a pleasure to be here first case this morning is fifteen one one seven seven in re aqua product bar [00:00:33] Speaker 05: May it please the Court? [00:00:35] Speaker 05: James Varney on behalf of the Attell & Acre Products. [00:00:38] Speaker 05: The Board's obviousness analysis for substitute claims 22 through 24 is improper because it failed to consider the claims as a whole. [00:00:45] Speaker 05: Instead, the Board focused on just a single limitation and ignored three other limitations that Acre had added to those substitute claims specifically to distinguish the prior art. [00:00:55] Speaker 03: Okay, well, starting off, I know you made an original argument on the Bergen question. [00:01:01] Speaker 03: So now, do you agree that the burden is on the patentee to establish patentability under the motion to amend? [00:01:09] Speaker 03: And if so, how did your client meet that burden? [00:01:12] Speaker 05: Your Honor, of course, we don't agree that the burden should be on the patentee, because we believe that 38 U.S.E. [00:01:21] Speaker 05: 316E clearly puts the burden on the petitioner. [00:01:24] Speaker 05: We made the point in our briefs that these are separate arguments. [00:01:27] Speaker 05: So we believe that we're entitled to a remand [00:01:30] Speaker 05: regardless of where the burden falls. [00:01:32] Speaker 05: I'm happy to address the burden argument first, if you would like. [00:01:35] Speaker 03: So assuming that you had the burden, how did you satisfy your burden? [00:01:40] Speaker 03: I mean, your complaint, as you just stated, they feel to consider the claims as a whole, including the other limitations that you've underlined. [00:01:49] Speaker 03: But where is the argument you made with respect to the patentability of that? [00:01:53] Speaker 05: So if your question is, did we waive those three limitations, my answer is no, we did not waive those three limitations. [00:02:00] Speaker 05: The touchstone for waiver is whether the lower tribunal was fairly on notice of the argument. [00:02:06] Speaker 05: One of the limitations, for instance, that we included in the substitute claims to distinguish the prior R was the controlled directional motion limitation. [00:02:16] Speaker 05: all three of the substitute claims, and it requires that the wheels or supports of the device control the directional movement. [00:02:22] Speaker 00: Is that the vector limitation? [00:02:23] Speaker 05: Well, that was another limitation. [00:02:25] Speaker 05: That was the one that the court focused on. [00:02:26] Speaker 05: But I'm talking about the three other limitations that we added that the board did not focus on. [00:02:32] Speaker 05: And one of those was the controlled directional motion limitation. [00:02:35] Speaker 05: That's completely different than the vector limitation. [00:02:38] Speaker 05: The controlled directional motion limitation requires that the wheels or supports of the device control the directional motion of the cleaner [00:02:46] Speaker 05: which is the opposite of random motion. [00:02:48] Speaker 05: That argument was made in our motion to amend. [00:02:51] Speaker 05: The limitation was underlined. [00:02:53] Speaker 05: We argued specifically in the motion to amend that the amendments to the claims were made to distinguish prior argument. [00:03:00] Speaker 00: I see the argument that you made, but what I don't see is any evidence or technical data or the other type of indicia that's normally used to support an amendment. [00:03:12] Speaker 00: I don't see that in the record. [00:03:13] Speaker 00: Can you point to that? [00:03:14] Speaker 05: Yes, Your Honor. [00:03:15] Speaker 05: We submitted a declaration in support of our motion to amend. [00:03:18] Speaker 05: It was the declaration of Mr. Ehrlich. [00:03:20] Speaker 05: And so for instance, if you look at, and Mr. Ehrlich is an inventor, but he's also a person of ordinary skill in the arts. [00:03:25] Speaker 05: So that certainly is evidence from a person of ordinary skill in the arts. [00:03:29] Speaker 05: Page 2805 of the Joint Appendix, which is part of Mr. Ehrlich's declaration, [00:03:35] Speaker 05: He stated in support of the motion to amend that Hankin and Myers and remember we're only talking about one combination here is the sole basis for the board's denial of our motion to amend was the Hankin-Meyers combination. [00:03:47] Speaker 05: He stated Hankin and Myers were directed only to using random movement to clean while we were looking for the opposite a stable systematic controlled pattern of movement to avoid twisting of the cable as well as shorter cleaning operations. [00:04:02] Speaker 05: So that is evidence of [00:04:04] Speaker 05: distinguishing random motion devices such as Henkin and Myers from controlled directional devices, which is what our amended claims are directed to. [00:04:13] Speaker 05: Because remember, Henkin and Myers were specifically designed to be random motion devices. [00:04:19] Speaker 05: That's how they operate. [00:04:21] Speaker 05: And they had design elements included in them that contributed to the randomness. [00:04:27] Speaker 05: Because pools come in all different shapes. [00:04:29] Speaker 05: And so when you put one of these random devices in the pool, the theory is by randomly moving around, [00:04:34] Speaker 05: they will eventually hit all portions of the pool. [00:04:37] Speaker 05: Those types of devices, Henkin and Myers, did not want patterns. [00:04:41] Speaker 05: They did not want controlled directional patterns because if they did, they would get caught in a rut and they wouldn't clean the entirety of the pool. [00:04:48] Speaker 05: The amended claims are the opposite of that. [00:04:50] Speaker 05: They require controlled directional movement and the patent has six columns that speak directly to this concept of controlled directional movement. [00:04:58] Speaker 05: and 22 figures in the patent that show how you can configure the wheels. [00:05:03] Speaker 03: Doesn't the patent refer to it as controlled random movement? [00:05:06] Speaker 05: That's one type of movement, but the patent talks about three different types of movement, curvilinear, scalloped, and controlled random. [00:05:13] Speaker 05: These claims are directed not to controlled random, but to controlled directional. [00:05:18] Speaker 05: Controlled directional is speaking to the patent. [00:05:20] Speaker 05: If you look at the 22 figures in the patent that support this discussion in the patent, [00:05:27] Speaker 05: It shows curvilinear patterns and it shows how you can adjust the wheels or supports to achieve certain types of curvilinear patterns. [00:05:34] Speaker 05: It also talks about a different type of pattern, the scallops pattern, and it talks about how you can adjust the wheels or supports to achieve a scallops pattern. [00:05:41] Speaker 05: That is completely different than the random patterns that Henkin and Myers were based upon. [00:05:45] Speaker 05: That was the argument we were making in the motion to amend. [00:05:49] Speaker 05: In the motion to amend, we pointed out, we made these amendments to distinguish random devices like Henkin and Myers. [00:05:57] Speaker 05: Then we submitted the declaration to Mr. Ehrlich, who pointed out, and there's other places as well, for instance, A2789, [00:06:13] Speaker 05: where Mr. Ehrlich, again a person of ordinary skill in the art, is talking about Myers. [00:06:17] Speaker 05: And he says the Myers pattern apparatus is not intended for a controlled movement. [00:06:21] Speaker 05: It is premised upon the concept that random, uncontrolled pattern movement is essential to its operation. [00:06:26] Speaker 05: So these arguments were fairly presented to the board. [00:06:29] Speaker 05: The board simply didn't address them. [00:06:31] Speaker 04: In its obvious analysis... Well, you say that they didn't address it, but they do have one sentence, don't they? [00:06:37] Speaker 04: The consequently sentence? [00:06:38] Speaker 04: Yes, Your Honor. [00:06:39] Speaker 04: So isn't that a significant difference? [00:06:43] Speaker 04: It was in front of them and they did consider it and they said this stuff is all obvious. [00:06:48] Speaker 05: You're correct. [00:06:49] Speaker 05: They had a single sentence finding that said for the rest of these limitations, including the three that I've addressed here and the four wheels limitation and the filtered water jet limitation, [00:06:59] Speaker 05: We find that those are merely common sense. [00:07:03] Speaker 05: But it cited nothing in the record to support that. [00:07:05] Speaker 05: It did not cite to an expert declaration. [00:07:07] Speaker 05: It did not cite to a declaration from a person of ordinary skill in the art. [00:07:11] Speaker 05: It did not cite to any of the prior art. [00:07:13] Speaker 05: It simply cited the KSR and then concluded that the combination of Henkin and Myers was not beyond the skill of a person of ordinary skill in the art. [00:07:23] Speaker 05: The problem with that is the combination of Henkin and Myers does not include those three limitations. [00:07:27] Speaker 05: The PTO does not deny that. [00:07:28] Speaker 05: On appeal here today, the PTO does not deny that those three limitations are not in the Henkenmeier's combination. [00:07:36] Speaker 04: Is there a price to vacate, as you're asking? [00:07:39] Speaker 04: Do we have to find that there is not substantial evidence in the record to support their finding that the other three limitations were obvious? [00:07:46] Speaker 05: Yes, Your Honor, precisely. [00:07:48] Speaker 05: That would be one basis for remand. [00:07:49] Speaker 05: Of course, we also have the statutory argument. [00:07:52] Speaker 05: But I believe that under this state of the case as it is right now, with the PTO in their brief not disputing that these three limitations were not considered by the board and are not present in the combination that the board used, I think that calls for a remand. [00:08:09] Speaker 00: Doesn't the PTAB actually say that you failed to meet your burden in presenting those issues appropriately to the board? [00:08:21] Speaker 00: that you did so with respect to the vector limitation, but not with the other three limitations you're talking about, and that's why they didn't address them. [00:08:29] Speaker 05: Well, but obviousness required, in order for me to prove non-obviousness, now again, we don't think we bear that burden, but if we do, in order to prove non-obviousness, we can show up by showing that any one of the limitations is missing from the combination, or that the secondary factors, you know, rebut a premonition case, or that there was no motivation to combine. [00:08:48] Speaker 05: And so you're correct that the board did say we failed to meet our burden on that one limitation. [00:08:52] Speaker 05: But that's just one limitation. [00:08:53] Speaker 05: We had three other limitations that we were arguing are not present in the combination. [00:08:58] Speaker 05: And the PTO does not deny that. [00:09:00] Speaker 05: And so to go to your point. [00:09:02] Speaker 03: Can you point me to the motion to amend and where you made the argument with respect to those three other limitations? [00:09:06] Speaker 03: I know you referred to the declamation on the tab. [00:09:09] Speaker 03: Yes, Your Honor. [00:09:09] Speaker 05: So the motion to amend in the adjoined appendix begins at A2276. [00:09:13] Speaker 05: Right. [00:09:14] Speaker 05: Now first of all, on page A2280, [00:09:18] Speaker 05: We underline the added limitations. [00:09:23] Speaker 05: And then if you go to A2283, we explain that the amendment language relates to the directional positioning of the wheels. [00:09:32] Speaker 05: So that's the controlled directional limitation. [00:09:34] Speaker 05: And then we go on in the next paragraph and we explain. [00:09:38] Speaker 05: If you go to [00:09:41] Speaker 05: If you go to the bottom of that paragraph, it shows where the support comes from these amendments. [00:09:46] Speaker 05: And one of the supports comes from the controlled directional movement of the cleaner, citing to the various places. [00:09:52] Speaker 05: And then if you go to A 2285, we sort of summarize our argument. [00:09:57] Speaker 05: And we say the board's claim interpretation. [00:09:59] Speaker 05: And so this is the board's claim interpretation for the original claims. [00:10:03] Speaker 05: The board's claim interpretation may be fairly summarized as a determination that even totally random. [00:10:09] Speaker 05: Oh, I'm on page A22-85. [00:10:11] Speaker 05: And I'm in basically the second paragraph. [00:10:14] Speaker 03: Patentability of proposed substitute claims. [00:10:16] Speaker 03: And I'm on the second paragraph under that. [00:10:18] Speaker 05: And I'm on the second sentence of that paragraph. [00:10:20] Speaker 05: We argue the board's claim interpretation may be fairly summarized as a determination that even totally random movement [00:10:26] Speaker 05: falls within the scope of the claim because if the direction of movement is forward, that perforce becomes the front portion and thus the direction of movement. [00:10:34] Speaker 05: Without conceding that that interpretation is correct, the substitute claims eliminate any controversy about the front portion and movement of the apparatus. [00:10:42] Speaker 05: And so we're making the point there that we amended the claims to distinguish random movement devices. [00:10:48] Speaker 05: We had basically lost the claim construction argument on the original claims because of this front portion argument. [00:10:54] Speaker 05: The board disagreed with us on that. [00:10:55] Speaker 05: And we said, fine. [00:10:56] Speaker 05: Now we're going to amend the claims. [00:10:58] Speaker 05: And we're specifically going to put in a directional control limitation that distinguishes random movement. [00:11:03] Speaker 05: We made that argument right there in the motion to amend. [00:11:06] Speaker 05: And then further, if you look on page 82286, [00:11:11] Speaker 05: Where in the second paragraph there we're talking about Henkin and we point out at the bottom of that paragraph that the movement of the Henkin apparatus is random. [00:11:20] Speaker 05: If you go to page A2287 we're talking about the prior art in general and we're talking about on the second full paragraph in 1999, although some cleaners may have included a water discharge conduit, they had negligible propulsive force and or created a random movement [00:11:37] Speaker 05: If you go to page A2289, we're specifically distinguishing Myers, which is one of the two references, and we say, it's of note that Myers' configuration not only intends uncontrolled and erratic movement, it may not even move in the direction opposite of the Jed drives. [00:11:56] Speaker 05: And then, next sentence down, the 183 patent is directed to a controlled movement cleaning apparatus. [00:12:02] Speaker 05: So I think we've fairly put the board on notice that we were making this argument. [00:12:05] Speaker 04: isn't that although in the context of trying to support the one limitation that the board focused on. [00:12:12] Speaker 04: You don't ever anywhere, at least help me if I'm wrong, say even in a sentence, plus there are these other limitations that are in our amended claim. [00:12:21] Speaker 04: You can see them underlined, but we're not going to argue them right now that they're there. [00:12:25] Speaker 04: You don't ever say that, do you? [00:12:27] Speaker 05: I think, while I respectfully disagree, Your Honor, I think we are saying that we are trying to distinguish random motion devices [00:12:34] Speaker 05: through the limitations that we've made. [00:12:36] Speaker 05: And that's the basic argument we were making. [00:12:38] Speaker 05: It goes on in the Earl of Declaration. [00:12:40] Speaker 05: I can cite them more places in the oral argument. [00:12:41] Speaker 05: It's all in our briefs. [00:12:42] Speaker 05: I wanted to mention one other limitation, the four wheels limitation. [00:12:45] Speaker 05: There the board specifically brought it up during oral arguments. [00:12:48] Speaker 05: So clearly it was on notice of that argument. [00:12:51] Speaker 05: Four wheels limitations in claim 23. [00:12:52] Speaker 05: Hankin only discloses three wheels. [00:12:55] Speaker 05: And it specifically explains that the three wheel design is there to randomize the motion. [00:12:59] Speaker 05: The three wheel design is a critical feature of Hankin. [00:13:03] Speaker 05: During oral argument, the board asked Petitioner's Council, what about this four wheels design? [00:13:07] Speaker 05: And Petitioner, this four wheels limitation. [00:13:09] Speaker 05: And Petitioner's Council conceded that neither Hankin nor Myers has the four wheels. [00:13:14] Speaker 05: So there's your evidence that the board was on notice of the argument, which is the threshold for determining whether there's waiver. [00:13:19] Speaker 00: Well, the PTAS said that it's aqua's burden to present technical facts and reasoning about each feature, believe, distinguish, or the prior art. [00:13:28] Speaker 00: And that you only did that with respect to the vector limitation. [00:13:33] Speaker 05: I would just respectfully disagree with the board. [00:13:35] Speaker 00: I think I've gone through where he made the argument. [00:13:44] Speaker 05: That's where it is, Your Honor. [00:13:48] Speaker 05: It was the declaration of Mr. Erlich. [00:13:51] Speaker 05: And I only cited you a couple but our brief goes to all the places where he talked about the difference between random and controlled and that's technical because it's a very technical and distinct difference between how these things operate. [00:14:03] Speaker 05: We achieved something that the random devices weren't able to achieve and we made a huge improvement in the art [00:14:07] Speaker 05: because we went away from random. [00:14:10] Speaker 05: We went to a controlled directional patterns, curvilinear or scallops, which is entirely different than Henkin. [00:14:16] Speaker 05: That's a technical distinction, a technical feature. [00:14:18] Speaker 05: We presented the arguments in our motion. [00:14:20] Speaker 05: We presented technical evidence in our petition, excuse me, in the supporting declaration. [00:14:24] Speaker 05: We raised it at the oral argument. [00:14:26] Speaker 05: We had demonstrative exhibits that talked about the difference between random and controlled direction. [00:14:31] Speaker 05: The board just failed to address it. [00:14:32] Speaker 05: Likewise with the four wheels limitation. [00:14:35] Speaker 03: Obviously, I'm almost out of time. [00:14:50] Speaker 01: Good morning. [00:14:52] Speaker 01: First, I'd like to respond to a couple of points made by Mr. Barney. [00:14:57] Speaker 01: The USPTO has never admitted that the filtered water limitation, the controlled motion limitation, [00:15:04] Speaker 01: and the four-wheels limitation is not in the prior art. [00:15:08] Speaker 01: That was something that he had mentioned a few times. [00:15:10] Speaker 01: And I think as Judge Stark pointed out, the controlled directional movement argument was made tied to the vector limitation. [00:15:18] Speaker 01: The board in Idle Free, which Mike Prasoffy, proxicon, agreed with the board's interpretation in Idle Free, says specifically that you are supposed to come forward with technical features. [00:15:30] Speaker 01: You're supposed to come forward with construction of the new claim limitations [00:15:33] Speaker 01: in order to persuade the board that the claims are patentable. [00:15:37] Speaker 01: Despite this specific guidance from the board, Aqua Products did not provide the new claim construction. [00:15:43] Speaker 01: They talk about how they're trying to distinguish the controlled movement, but they didn't even give a construction of what that controlled movement means. [00:15:51] Speaker 01: or how that would differentiate. [00:15:53] Speaker 03: Wait a minute, I mean Mr. Barney pointed us to, I mean they've got 15 pages for their motion to amend, and he did point us to various statements that talked about the prior art, talked about how there's just random movement and no control, and here you've got control. [00:16:08] Speaker 03: I mean that's something, right? [00:16:10] Speaker 01: I don't think that is sufficient to say that they [00:16:16] Speaker 01: you know, it is tied to the vector and also the statements that were made don't specifically call out, here is the limitation that we are putting forth, here is the reason why it's not shown in the prior art, here is what controlled movement means, because they're distinguishing controlled and random, but the, you know, the board is saying that the Henkin has a vector when you can adjust the vector and you can adjust the jet stream to control the motion, and the board [00:16:45] Speaker 01: specifically pointed to, parts of Henkin would say that the board, you know, that Henkin specifically teaches a selected angle, specifically teaches allowing the car to climb vertical surfaces and this was made in the original, you know, when they were talking about the original claims and Aqua Products is not challenging the original claims here. [00:17:10] Speaker 01: So the board wasn't persuaded the first time and now in the new [00:17:15] Speaker 03: Is it your view, let me put that back a minute, is it your view, I mean there's a little confusion at least in my mind between a substantive discussion on the vector claim, the clause there, and then these separate little underlined pieces which include control the directional movement. [00:17:32] Speaker 03: So as I understood Mr. Barney's argument, that went to really the control limitation. [00:17:41] Speaker 03: Is it your position that all of this discussion and the board's opinion [00:17:45] Speaker 03: with regards to the vector limitation subsumed the questions with respect to control? [00:17:53] Speaker 01: I think they are intertwined because you are having, I mean they're saying they're using their jet stream and that's another thing, you know the Declaration talks a lot about the jet stream but the jet stream is not in the claims, that's not the language that they use. [00:18:06] Speaker 01: So even a lot of the language in the Declaration is not addressed to the exact claim limitations that they use. [00:18:13] Speaker 03: Can I ask you a very fundamental basic question? [00:18:15] Speaker 03: Sure. [00:18:15] Speaker 03: Does the 15 page limit on the motion to amend, are declarations extra? [00:18:21] Speaker 03: Do they, I mean, the board accepts the declarations attached to the motion to amend? [00:18:26] Speaker 03: And that's outside of the page limit? [00:18:27] Speaker 03: Is that the way the system works? [00:18:29] Speaker 03: Is this a basic question? [00:18:31] Speaker 01: So, I mean, there is a rule that says that you, the arguments have to be made in the motion. [00:18:38] Speaker 01: That is rule 42-23. [00:18:39] Speaker 03: You said the declarations are accepted as part of the submission, right? [00:18:44] Speaker 03: Or no? [00:18:44] Speaker 01: Well, the arguments are supposed to be made in the motion, and you can't just say, oh, as we say in our declaration, you have to lay out what your argument is. [00:18:54] Speaker 01: So the declaration is accepted, but you can't just put everything in the declaration and not explain the argument in the motion. [00:19:06] Speaker 01: Because the rule says you have to make the arguments in the motion. [00:19:10] Speaker 01: and then rule 42.6A3B prohibits incorporating, just simple incorporating, you know, arguments from one document into the other. [00:19:20] Speaker 01: So there is a requirement that in the motion itself, you have to explain your argument. [00:19:25] Speaker 04: And sometime after this case, the PTAS decided that 15 pages just wasn't enough, isn't that right? [00:19:31] Speaker 01: That's correct. [00:19:32] Speaker 01: They didn't ask for more pages in this case. [00:19:35] Speaker 01: And I do think that, you know, [00:19:38] Speaker 01: didn't use their pages wisely. [00:19:40] Speaker 01: They repeated a lot of basic arguments about the licensing and the background instead of coming forward. [00:19:47] Speaker 03: What is the board's procedure? [00:19:47] Speaker 03: When it was 15 pages, they could move for additional pages? [00:19:52] Speaker 01: There's two things you can do. [00:19:53] Speaker 01: You can move for additional pages or you can move to put your claims in an appendix and have it not count. [00:19:59] Speaker 01: And those are two things that the board has granted in certain cases. [00:20:05] Speaker 01: So I don't think that the 15 pages is actually an issue here because they didn't ask for more pages in whichever way that they could have. [00:20:14] Speaker 03: Now the board did treat, I think Judge Stark pointed out that there is a sentence in the board's opinion so it looks like they did treat the additional limitations. [00:20:22] Speaker 03: There's this consequently sentence saying that anything else would be common sense and there's a finite difference, whatever that sentence is. [00:20:30] Speaker 03: So it does appear [00:20:31] Speaker 03: that the board may have accepted these other limitations as something that was before it and were in play, and it had to deal with them, right? [00:20:40] Speaker 01: I don't agree with that reading of what the board said. [00:20:46] Speaker 01: If we actually look at the board's statement in that case, the board [00:21:01] Speaker 01: So when the board says, if we look at, so it's on 851 of the record, you know, the board talks about the resultant vector having the same purpose. [00:21:13] Speaker 01: You know, the board, so this whole page is directed to the resultant vector, you know, the henkin showing the downward thrust, henkin showing the propelling forward, henkin showing climbing vertical surfaces, working itself out of corners, and so then the next, [00:21:30] Speaker 01: paragraph, okay, they say that the patent owner said that they don't recognize that they're solving the problem, and then as discussed with respect to the original claims, we disagree. [00:21:44] Speaker 01: Henkin uses a downward result in force for substantially the same purpose, and then consequently we respect [00:21:51] Speaker 01: we find with respect to the additional limitations. [00:21:54] Speaker 01: So I believe the additional limitations is actually talking about just the resultant force vector, because that is the only limitation that was being argued. [00:22:01] Speaker 04: So in your view, the other three limitations that are pointed to on appeal here were not considered by the PCAP? [00:22:09] Speaker 01: Yes, because they weren't argued. [00:22:10] Speaker 01: Nowhere is four wheels in their motion. [00:22:14] Speaker 01: Nowhere is filtered water in their motion. [00:22:17] Speaker 01: And the controls [00:22:19] Speaker 01: discussion is only with respect to intertwined with the resultant vector. [00:22:28] Speaker 04: I think the board... I don't know how I understand how that could be the right process. [00:22:33] Speaker 04: All of the amendments were underlined. [00:22:36] Speaker 04: Right. [00:22:37] Speaker 04: So the board had notice of them. [00:22:40] Speaker 04: And the motion to substitute claims comes during a trial phase at which [00:22:46] Speaker 04: All of these concepts were in play. [00:22:49] Speaker 04: These substitute claims are certainly responsive to the grounds of unpatentability that were at issue in the trial phase. [00:22:57] Speaker 04: How can it be that the Board at the end of all that can just simply ignore the other three proposed limitations? [00:23:04] Speaker 01: Is there a burden to say patentability? [00:23:07] Speaker 01: Well, one of the claims, the filtered water claim, was already in the original claims. [00:23:12] Speaker 01: and they're not fighting the original claim so clearly that's not going to be a patentable limitation and the four wheels that seems pretty obvious and they never mention that in their motion their burden to show why that makes it patentable and they chose not to I'm scanning the motion and it seems to me that there's quite a bit of mention for the wheels well front wheels but not four wheels [00:23:43] Speaker 00: Well, it does mention the rear wheels. [00:23:45] Speaker 00: If you've got rear wheels, you must have front wheels. [00:23:50] Speaker 01: They do mention both front wheels and rear wheels, but they never talk about the four wheels and four wheels distinguishing over three wheels and why four wheels is better than four wheels. [00:24:03] Speaker 03: Four wheels is better than three wheels. [00:24:06] Speaker 01: Sorry, yes, exactly. [00:24:09] Speaker 04: in proxy con uh... this court uh... as you know allowed among other things that reference that was not used at the basis for the institution but the idea are to still be at issue in the trial phase correct and in doing that the court said that among other things that particular piece of prior art was very much a part of the entire proceeding and therefore the patentee in that instance was not taken by surprise by the board's reliance on that piece of prior art [00:24:39] Speaker 04: Don't those concepts, if applied here, benefit the patentee such that these other limitations were at issue throughout the trial phase and there could have been no surprise to the board that the patentee was relying on them in their motion to amend? [00:24:54] Speaker 01: I don't think the issue is if the board was surprised. [00:24:56] Speaker 01: I think the issue is that it's their burden to show patentability and the board, you know, the board made a general statement that they didn't meet the burden. [00:25:04] Speaker 01: I don't think the board has to address every limitation. [00:25:09] Speaker 01: I mean, I think the board just has to respond to the argument made by the patent owner. [00:25:13] Speaker 01: The board did fully respond to the argument made by the patent owner, and the board found you didn't meet your burden. [00:25:19] Speaker 00: In follow-up to Judge Stark's question, you criticize the penholder for not making a claim construction [00:25:29] Speaker 00: argument or proposing claim construction and then you go on and say that they they admitted to the or Accepted the claim construction that had already been Put forth crap. [00:25:42] Speaker 00: So if they did that then why is there if they're saying the current claim construction is fine with us Why is it that you want them to to to submit additional claim construction? [00:25:54] Speaker 01: well, for the claims that they added. [00:25:56] Speaker 01: The board didn't construe the claims that they added, so those weren't part of the original claims. [00:26:13] Speaker 01: In this case, the board responded to all of the arguments that Aqua Products made regarding possibility of the [00:26:21] Speaker 01: of the substitute claims and ultimately found that they didn't meet their burden. [00:26:25] Speaker 01: It's an abusive discretion standard here, and that's all that was required of the board when they denied the motion. [00:26:32] Speaker 01: Therefore, there's no further questions. [00:26:35] Speaker 01: I'll concede the rest of the time. [00:26:48] Speaker 05: Thank you. [00:26:48] Speaker 05: Thank you. [00:26:48] Speaker 05: A few points, if I may? [00:26:50] Speaker 05: First of all, I want to clear up something. [00:26:52] Speaker 05: The vector limitation has absolutely nothing to do with the controlled directional limitation. [00:26:58] Speaker 05: The controlled directional limitation says that the wheels or supports must control the directional motion. [00:27:04] Speaker 05: And that's the court, that's the board's claim construction. [00:27:06] Speaker 05: If you go to A49, the board never faulted us for not putting forth a claim construction. [00:27:11] Speaker 05: The board construed that limitation. [00:27:13] Speaker 05: A49, the board recognizes and correctly discerns [00:27:18] Speaker 05: If you look at the paragraph at the top of A49, the board is talking about substitute claim 22, and at the bottom there of that paragraph it says thus, substitute claim 22 recites that the supports, the supports, which is the wheels or supports, [00:27:33] Speaker 05: The supports control the directional movement, although the apparatus may be propelled by the water jet. [00:27:40] Speaker 05: So the water jet is propelling, the supports are controlling, and then substitute claim 24 recites that such control was supplied by the wheels rather than support. [00:27:50] Speaker 05: So support is the broader term, wheels is the narrower term. [00:27:53] Speaker 05: It has nothing whatsoever to do with the jet, and it has nothing to do with the vector. [00:27:57] Speaker 05: It has to do with the wheels. [00:27:58] Speaker 05: And so I disagree strongly that they were intertwined in any way. [00:28:01] Speaker 05: They were separate arguments. [00:28:03] Speaker 05: The second point I would like to make is that the board, you got it exactly right Judge Stark, the board did not find waiver here. [00:28:11] Speaker 05: The board purported to make a finding that these limitations were present in the combination of Henkin and Myers, which the PTO did not dispute in their brief. [00:28:20] Speaker 05: They had an opportunity to point to where on Henkin and Myers those limitations are satisfied. [00:28:24] Speaker 05: They chose not to, which I take to mean they don't dispute it. [00:28:27] Speaker 03: Isn't waiver kind of an odd term to be used in this context? [00:28:30] Speaker 03: I mean, if the board concludes, essentially, you haven't made a sufficient argument, the burden is yours, and you haven't made the argument, that's not really waiver, right? [00:28:42] Speaker 05: Well, that's the argument they made. [00:28:45] Speaker 05: The PTO made the argument in their red brief at the end that we waived these arguments. [00:28:50] Speaker 05: And so I'm responding to what they said. [00:28:51] Speaker 05: We didn't waive the arguments. [00:28:52] Speaker 05: We made the argument to preserve them. [00:28:54] Speaker 05: Waiver is a low bar. [00:28:56] Speaker 05: And the four wheels limitation shows that the board was on notice of the four wheels limitation because they raised it and they asked for... At least you would concede, I think, uncertainty here as to whether you actually argued the other limitation. [00:29:09] Speaker 04: To the extent there is uncertainty, how does the 12-month statutory deadline that the board is under factor in? [00:29:17] Speaker 04: Shouldn't you have to be just explicitly clear about what you're arguing so that they can meet their obligations? [00:29:22] Speaker 05: I would say no, Your Honor. [00:29:24] Speaker 05: I mean, we have to be clear, of course. [00:29:26] Speaker 05: You always have to be clear as a litigant. [00:29:27] Speaker 05: But we had 15 pages. [00:29:28] Speaker 05: We had a 15-page limit to not only make the amendments to the claims, show where there is support in the written description for those amendments, show that new matter was not added, and then try to distinguish those claims against all known prior art. [00:29:40] Speaker 05: 15 pages. [00:29:41] Speaker 05: So I would think if we're going to start talking about the equities, clearly the equities are weighing against the PTO in our favor because we didn't have the, and it was a very confusing sort of time in terms of who bears the burden. [00:29:53] Speaker 05: I know we didn't address the burden very often during this argument, but let me just say I am aware that other cases have been argued with respect to 316E, and we would respectfully ask that if those cases go against the PTO, that we get a remand on that basis as well. [00:30:11] Speaker 03: Thank you. [00:30:11] Speaker 03: We thank both Constable and the Cases for the minutes.