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

[00:00:09] Speaker 05:
May it please the court?

[00:00:11] Speaker 05:
Good morning.

[00:00:12] Speaker 05:
My name is Pierre Yanni.

[00:00:13] Speaker 05:
I'm here representing the plaintiff appellant in Ventio in this matter.

[00:00:19] Speaker 05:
There's several issues up on appeal, and I'd just like to focus my time on two, possibly three of the issues.

[00:00:28] Speaker 05:
The first one is the holding of obviousness from the district court.

[00:00:36] Speaker 05:
And our argument there is basically that the prior art that was shown and how it was described and analyzed to the jury did not show every single element of the claimed invention.

[00:00:53] Speaker 05:
And basically, the defendant's expert utilized

[00:00:58] Speaker 05:
common sense or just personal experience to fill in some of the missing pieces.

[00:01:04] Speaker 05:
And a lot of that was basically uncorroborated testimony and without any real specific reference to a single piece of prior art.

[00:01:16] Speaker 05:
And the one piece of the claimed combination that clearly wasn't shown was the modernizing device

[00:01:25] Speaker 05:
And specifically, it's converting of a destination signal into a call report.

[00:01:30] Speaker 00:
Is it your view that it would be an error of law to ever conclude that obviousness is appropriate in a situation where there isn't prior art with regard to one of the elements?

[00:01:42] Speaker 05:
Well, it depends what the element is.

[00:01:45] Speaker 05:
And here, this was a significant aspect of the claimed invention.

[00:01:51] Speaker 00:
But you do appreciate that as a matter of law, you could have, for example, a one reference obviousness rejection, which by nature of what I'm describing would mean that not every element is in fact.

[00:02:02] Speaker 05:
That is technically correct.

[00:02:03] Speaker 00:
I just wanted to make sure you weren't arguing the legal point that the failure to find that additional element in the prior art was de facto.

[00:02:15] Speaker 05:
Not necessarily de facto, but there has to be some basis for

[00:02:19] Speaker 05:
including it in the combination.

[00:02:22] Speaker 05:
And even KSR says that when it talks about invalidating, it's kind of like piecing together the pieces of a puzzle.

[00:02:29] Speaker 05:
To me, that means the pieces of the puzzle have to be there somewhere, and someone then has to show you and guide you how those pieces fit together.

[00:02:38] Speaker 00:
Is this just your argument with regard to claim three, or is this an argument that you think applies more broadly to other claims as well?

[00:02:45] Speaker 05:
Well, this also applies to the independent claims as well.

[00:02:49] Speaker 05:
and specifically the ones that include that aspect of the modernizing device where it converts the destination signal from a certain signaling format into a call report, which itself is a completely different type of signaling format that's compatible with the existing old elevator technology.

[00:03:15] Speaker 05:
The other troubling aspect of the holding was that the discussion by the defendant's expert, which was adopted by the court was basically, well, even if that element is not in the prior art, it would have been within the knowledge or the ability of a person of ordinary skill to design it.

[00:03:39] Speaker 05:
And that argument hinged on the fact that, well, if you knew what the input was to this element,

[00:03:45] Speaker 05:
and you knew what the output was that you can then design it.

[00:03:50] Speaker 05:
And to me that is hindsight reconstruction because being able to identify what the inputs are and what the outputs are for a certain element is kind of working backwards from the invention.

[00:04:03] Speaker 01:
What if you have motivation though and you know what the inputs are and what the outputs are and there's motivation to make the conversion that you have here so that the

[00:04:12] Speaker 01:
the old system could talk to the new system.

[00:04:14] Speaker 05:
The only motivation that was presented was kind of vague and non-specialized.

[00:04:19] Speaker 05:
The only motivation that was really presented was that modernizing of elevator systems is a hot and up-and-coming field that can generate a lot of revenue.

[00:04:32] Speaker 05:
Therefore, elevator companies would focus their efforts on it.

[00:04:35] Speaker 05:
That was really the primary evidence.

[00:04:37] Speaker 01:
Is the program directed to modernizing elevators from one system to another?

[00:04:42] Speaker 05:
Yes, and there were a myriad number of ways of doing that, which had been known.

[00:04:47] Speaker 05:
And actually, it's not just modernizing by itself, but it's modernizing in a specific way to include this destination dispatch technology.

[00:04:57] Speaker 05:
And that was also known in the prior art, but to a lesser extent.

[00:05:02] Speaker 05:
But the specific details of what the claim is talking about, that was converting from the destination signal format of the new technology

[00:05:11] Speaker 05:
to the call report of the existing technology, that piece is what was not known in the prior art.

[00:05:18] Speaker 05:
And the only discussion that was given was really in the nature of kind of very generalized, that while it was known to modernize, it was known to add the destination dispatch technology.

[00:05:31] Speaker 03:
It was more than that, that the approach in the prior art using the conventional technology and substituting one control system over another

[00:05:41] Speaker 03:
involved something that's quite similar to what was done in your patent with respect to the destination?

[00:05:47] Speaker 05:
Well, similar in a very, very general sense.

[00:05:51] Speaker 05:
But if you look at the closest piece of prior art on this, which was the Ovaska reference, which was actually in front of the patent office during the prosecution, that didn't show this kind of conversion.

[00:06:04] Speaker 05:
And it's not just a simple translation as it was characterized below.

[00:06:10] Speaker 00:
The translation is... But that's a question of fact, and we have a jury verdict on obviousness, and we have to presume all... It was a general verdict, right?

[00:06:20] Speaker 00:
You didn't ask... It was a general verdict, yes.

[00:06:22] Speaker 00:
You didn't ask for all these specific facts, and we have to presume them all.

[00:06:25] Speaker 00:
And so, whether it's a simple conversion or not, it was argued below to be simple by them.

[00:06:30] Speaker 00:
It was argued below by you not to be.

[00:06:33] Speaker 00:
The jury found in favor of them.

[00:06:37] Speaker 00:
How can I say that's not supported by substantive evidence?

[00:06:40] Speaker 00:
The way you're describing it is a quintessential fact finding about which there's disputed evidence.

[00:06:45] Speaker 05:
Yes, but it's the ultimate legal conclusion of obviousness.

[00:06:49] Speaker 00:
So the ultimate legal conclusion is not at issue.

[00:06:52] Speaker 00:
What's at issue is, would it have been simple to make that conversion?

[00:06:55] Speaker 00:
Would one of the skill in the art know based on the prior art references that disclose similar controls that this is simple?

[00:07:02] Speaker 00:
That's not the ultimate determination, is it?

[00:07:06] Speaker 00:
You think that's the ultimate determination and not one of the underlying facts?

[00:07:09] Speaker 00:
What the level of skill in the art is, what the prior art was that they knew about?

[00:07:14] Speaker 05:
That's all part of the underlying fact, yes.

[00:07:24] Speaker 05:
The second issue that I would like to talk about is the exclusion of the secondary considerations of non-obviousness.

[00:07:34] Speaker 05:
which severely prejudiced our ability to refute any kind of obviousness determination.

[00:07:44] Speaker 05:
You're talking about freely?

[00:07:46] Speaker 05:
That's part of it.

[00:07:48] Speaker 05:
The overarching issue is the court's insistence from the get-go that you need an expert to put on evidence to show

[00:07:56] Speaker 05:
that you as the patentee practice your own patent?

[00:07:59] Speaker 03:
Well, I don't think he said that.

[00:08:01] Speaker 03:
I think he said that you can put in evidence, but you can't use this guy as an expert to do a claim construction comparison based on a claim chart.

[00:08:15] Speaker 03:
But the fact you'd already examined freely about whether some of these limitations existed in your prior art, right?

[00:08:25] Speaker 05:
Well, Friedli, the testimony that was being developed with the inventor Friedli was to show how the patentee makes its own installations.

[00:08:36] Speaker 05:
And then the next step would be to show how that matches up with at least one claim of the patent, to show that the patentee actually practices their own patents.

[00:08:45] Speaker 03:
Yeah, but look, on page 38 of the blue brief, you say, Dr. Friedli adduced more than enough evidence from which the jury could have concluded

[00:08:52] Speaker 03:
that phased modernization practices the patents in suit.

[00:08:57] Speaker 03:
That is the testimonies he gave before he got to the claim chart.

[00:09:00] Speaker 03:
Yes.

[00:09:01] Speaker 03:
So you yourself said he put in enough evidence to reach the conclusion that your prior art practiced the patent, right?

[00:09:10] Speaker 05:
But that was really the predicate to being then able to walk through the claim element by element and then to show

[00:09:19] Speaker 05:
here's where it matches up and therefore what we install practices our own patents.

[00:09:24] Speaker 03:
Okay, but your statement that you weren't allowed to put on evidence to show that you were practicing prior art is not true.

[00:09:31] Speaker 03:
You did put on evidence.

[00:09:32] Speaker 03:
You say in your own brief that it was sufficient.

[00:09:35] Speaker 03:
It's just when he got to the claim chart that he said, no, that's the judge said, no, that's an effort.

[00:09:39] Speaker 03:
It's not practicing the prior art, it's practicing our own patent.

[00:09:43] Speaker 05:
Practicing your own patent.

[00:09:44] Speaker 05:
Yeah.

[00:09:44] Speaker 05:
And it's the second part.

[00:09:46] Speaker 05:
So he was allowed to testify factually.

[00:09:48] Speaker 05:
We did this, this, this, this.

[00:09:50] Speaker 05:
It's the second part matching that up to the claim elements or the claim chart.

[00:09:55] Speaker 03:
So you did get to put in evidence that your installations practiced the path.

[00:10:01] Speaker 05:
No, we put in evidence of factually what the installations do.

[00:10:05] Speaker 00:
I'm confused.

[00:10:06] Speaker 00:
You're fighting Judge Steich on whether or not you could put in what mounted to expert testimony.

[00:10:12] Speaker 00:
I don't see how it could be wrong when the district court said no.

[00:10:19] Speaker 00:
I really thought that your argument had to do with his exclusion on motion, eliminate two and three of commercial success and, uh, copying evidence.

[00:10:30] Speaker 00:
And you're quibbling with judge Dyko for something that I'm having trouble understanding where it gets you or why you're saying it and why you aren't moving on to what I thought I understood your actual argument.

[00:10:41] Speaker 05:
Yeah, the, the, the judge, the district court basically set as a preliminary matter.

[00:10:45] Speaker 05:
before you can introduce any evidence of copying or commercial success, you have to show that you practice your own patent.

[00:10:53] Speaker 03:
Right.

[00:10:53] Speaker 03:
And you're saying that you produced enough evidence to do that.

[00:10:57] Speaker 03:
So why didn't you ask him to allow you to put in evidence of Nexus once, in your view, you established that your installations practiced the patent?

[00:11:07] Speaker 05:
Well, he didn't allow us to complete the second part.

[00:11:11] Speaker 05:
of showing that we actually practice.

[00:11:15] Speaker 01:
Could you ask him, after you submitted the evidence of how that your commercialization worked, and then he prevented you from having your expert do the element by element analysis.

[00:11:33] Speaker 01:
At that point, did you try to put on your evidence of secondary considerations on the basis that the jury had before the claims

[00:11:41] Speaker 01:
And the jury had before it a description of how your commercialization worked.

[00:11:46] Speaker 05:
After we had Dr. Friedli present the factual evidence of how the installations are done, there was a sidebar discussion with the court.

[00:11:56] Speaker 05:
And the judge said, if you're going to have him talk about how this matches up with the claims, I'm sure the other side is going to object.

[00:12:06] Speaker 05:
And I'm going to sustain it.

[00:12:08] Speaker 05:
And so if you can't do it, then you shouldn't try it.

[00:12:12] Speaker 00:
That doesn't have anything to do with, you're not answering Judge Stoll's question, and you're sort of going away from the point that I was trying to help you get to.

[00:12:19] Speaker 00:
That has nothing to do with, did you ask, can we now, despite not having an expert match it up, can we now introduce our commercial success evidence and copying evidence?

[00:12:31] Speaker 00:
Why were you precluded from doing it?

[00:12:33] Speaker 05:
The decisions on the motions in Luminate 2 and 3 had excluded

[00:12:37] Speaker 00:
Well, I read the whole transcript.

[00:12:39] Speaker 00:
He first said, I'm going to grant motions to eliminate two and three.

[00:12:41] Speaker 00:
Then you convinced him, Mr. Friedle, I don't know if I'm saying his name right.

[00:12:46] Speaker 00:
What is his name?

[00:12:47] Speaker 05:
Friedle.

[00:12:47] Speaker 05:
Friedle.

[00:12:48] Speaker 00:
Friedle.

[00:12:48] Speaker 00:
Mr. Friedle can testify and show that our commercial embodiment falls within our own claims and therefore will meet the nexus requirement.

[00:12:57] Speaker 00:
Then you went ahead and you adduced what you argue in the brief to be sufficient testimony to establish that.

[00:13:04] Speaker 00:
And it's my reading of the transcripts that the district court said, okay, well then I'll hold off on Motion and Lemonade 3 until you go ahead and do that and see.

[00:13:14] Speaker 00:
So I don't know that I interpret this record as him having granted that Motion and Lemonade precluding you from introducing commercial success and copying evidence.

[00:13:24] Speaker 00:
Where did he grant that Motion and Lemonade?

[00:13:27] Speaker 05:
Well, he basically did that in the sidebar discussion where after we had presented

[00:13:33] Speaker 05:
the factual background of what is done.

[00:13:36] Speaker 05:
We were then going to match it up with the claim language.

[00:13:39] Speaker 00:
You didn't need to match it up with the claim language.

[00:13:41] Speaker 00:
That doesn't have anything to do with whether or not you can introduce the commercial success and the copying evidence.

[00:13:47] Speaker 00:
That's what I don't understand.

[00:13:48] Speaker 00:
Your argument in the brief to us is Friedli testified and his testimony was sufficient to establish the necessary nexus.

[00:13:57] Speaker 00:
If you believe that, if that's your argument to us, if that's your argument below,

[00:14:02] Speaker 00:
Why aren't you asking then, or why aren't you moving forward and just putting on your commercial success and copying?

[00:14:07] Speaker 00:
There's no ruling that I can see of the district court precluding you from doing that.

[00:14:11] Speaker 05:
Well, the district court was looking to have an expert show how the factual aspects of the implementation matched up.

[00:14:23] Speaker 03:
He didn't say that you have to have an expert.

[00:14:26] Speaker 03:
All he said was that if Friedlich is going to do the claim chart element by element comparison,

[00:14:31] Speaker 03:
He's not qualified as an expert.

[00:14:32] Speaker 03:
He can't do that.

[00:14:34] Speaker 03:
But he allowed for you to testify as to your installations and to testify that elements in the patent were present in those installations.

[00:14:45] Speaker 03:
You say in your brief that that was sufficient to establish that you were practicing the patent.

[00:14:51] Speaker 03:
And yet, you didn't come back and say, well, now that we've put in that evidence, please let us put in the evidence

[00:14:57] Speaker 03:
copying and commercial success, correct?

[00:15:00] Speaker 03:
Well, my understanding from the... Is that correct?

[00:15:03] Speaker 05:
Well, my understanding from the discussion at Sidebar was that he had made his determination right there confirming what he had said... What language in the Sidebar?

[00:15:13] Speaker 03:
The Sidebar is directed to whether he can testify as an expert in doing a claim by client element by element analysis.

[00:15:20] Speaker 05:
And his underlying position was, you need an expert in order to be able to first introduce this.

[00:15:29] Speaker 05:
That was the operating principle.

[00:15:32] Speaker 03:
All right.

[00:15:35] Speaker 03:
Thank you.

[00:15:35] Speaker 03:
We'll give you two minutes for revolving.

[00:15:43] Speaker 03:
Mr. Schmidt.

[00:15:57] Speaker 02:
I'm going to rely primarily on our briefs, but I'd like to touch on the obviousness and our cross-appeal on the inequitable conduct issue.

[00:16:08] Speaker 02:
The obviousness issue really has two aspects, the factual piece and the legal conclusion.

[00:16:14] Speaker 02:
The factual issue, of course, is whether there was substantial evidence to support the jury's presumed findings that all of the ground factors were met.

[00:16:25] Speaker 02:
And Mr. Yanni argues that we didn't corroborate it with documentary evidence.

[00:16:31] Speaker 02:
And I would direct the court's attention, first of all, to the Schroeder article, which was exhibit 56 of trial.

[00:16:39] Speaker 02:
And I asked the inventor, I said, in this article, Dr. Schroeder was suggesting exactly what you did in your patent, wasn't he?

[00:16:50] Speaker 02:
And the answer to that was yes.

[00:16:53] Speaker 02:
So that's one good piece of prior art.

[00:16:55] Speaker 02:
Our own expert went through the operative paragraph, which was on appendix page A14541, and explained how each of these things matched up with what was in the patent claims.

[00:17:09] Speaker 01:
And one of the arguments that's being made today is about the temporarily limitation.

[00:17:14] Speaker 01:
Can you answer where does the prior art show a modernization device that is only temporarily connected?

[00:17:22] Speaker 02:
That was an aspect of the prior art overlay modernization technique in general.

[00:17:28] Speaker 02:
That when you put the overlay in, it temporarily operated the new equipment with the old equipment.

[00:17:34] Speaker 02:
And when it was finished, you took out the overlay because it was no longer needed.

[00:17:39] Speaker 02:
Now the new equipment would operate with the old equipment.

[00:17:43] Speaker 02:
There was no rebuttal to that whatsoever.

[00:17:45] Speaker 01:
What is your best site in the record for that?

[00:17:46] Speaker 02:
That would be Mr. McClendon's

[00:17:48] Speaker 02:
expert testimony based upon his own experience.

[00:17:51] Speaker 01:
Is there a particular reference that does it, or is it just the expert?

[00:17:53] Speaker 02:
Not at hand, I don't know.

[00:17:56] Speaker 02:
The ovascopad, which was another piece of prior art, which our expert went through in great detail and identified this pink egg item in the reference as a modernizing device, as the overlay, and he explained

[00:18:18] Speaker 02:
that that was taken out after the modernization was finished.

[00:18:23] Speaker 00:
Would you mind addressing Appellant's arguments about the exclusion of the secondary consideration evidence?

[00:18:31] Speaker 02:
Sure.

[00:18:33] Speaker 02:
What Judge Andrews did in the limiting motions was to, as the court has indicated, was to say to Inventio, if you can put on evidence, factual evidence,

[00:18:48] Speaker 02:
that these commercial items practiced the patent, then I'll reconsider.

[00:18:58] Speaker 02:
And what I was expecting to happen at trial was once he supposedly did that, I don't agree that he did that, but he says that he did that, then I expected them to put on their commercial people to say, here is the commercial success of these particular things, and here's how it matches up

[00:19:17] Speaker 02:
with the features in the claim, not comparing it to the claim language, but just saying people buy this because it has an overlay or a modernizing device or some interface device.

[00:19:29] Speaker 00:
So you don't think they were excluded from putting on evidence of commercial success and copying?

[00:19:34] Speaker 02:
No, no.

[00:19:34] Speaker 00:
Well, then why?

[00:19:35] Speaker 00:
I mean, I kind of agree with your reading of the record, quite frankly, but when I read this district court's actual opinion on Jay Mullen in response to the motion for a new trial,

[00:19:47] Speaker 00:
When they bring up the exclusion of their secondary consideration evidence, he doesn't say what you and I both think this record suggests, which is they were free to put it on.

[00:19:59] Speaker 00:
They chose not to, and they didn't bring it back up.

[00:20:02] Speaker 00:
Instead, what he says is exclusion was proper because, quote, plaintiff failed to address this issue in any of his expert reports and thus the evidence was properly barred.

[00:20:15] Speaker 00:
Yeah.

[00:20:15] Speaker 00:
You know, you and I might read the record one way, but when the judge says affirmatively the record is the other way, that is really tough.

[00:20:23] Speaker 00:
What do we do about that?

[00:20:25] Speaker 02:
Well, let's focus on that for a moment then.

[00:20:30] Speaker 02:
The issue was really before the district court, whether or not in this particular case, expert testimony was required to establish the nexus between the commercial success and what is in the patent claim.

[00:20:44] Speaker 02:
And he excluded that.

[00:20:45] Speaker 02:
principally because Inventio had not been timely in disclosing that.

[00:20:49] Speaker 00:
Oh, it was lay filed.

[00:20:50] Speaker 00:
It was lay filed.

[00:20:51] Speaker 00:
And that's not an issue.

[00:20:52] Speaker 00:
You're not even appealing that, right?

[00:20:54] Speaker 02:
Well, and that was not an abuse of discretion to do that.

[00:20:57] Speaker 00:
But they're not appealing it.

[00:20:58] Speaker 00:
We don't have to decide whether it was an abuse of discretion because they're not appealing it.

[00:21:01] Speaker 02:
Correct.

[00:21:01] Speaker 02:
But I'm addressing the point that you made there that he felt that because of the circumstances of the case, because you're basically doing an infringement analysis that is comparing what was in the commercial product to what was in the patent claim,

[00:21:16] Speaker 02:
that expert testimony was necessary.

[00:21:18] Speaker 02:
But he did give them that.

[00:21:19] Speaker 02:
And he said, if you could put on facts, then I'll reconsider.

[00:21:22] Speaker 02:
The problem that Inventio created for themselves was they never pursued that.

[00:21:27] Speaker 02:
They never went up on sidebar and said, all right, we've put on evidence now.

[00:21:32] Speaker 02:
Let's put our commercial people to talk about the connection between the two.

[00:21:38] Speaker 02:
And that's what they didn't do.

[00:21:39] Speaker 02:
And that's really the problem in the argument.

[00:21:43] Speaker 02:
It wasn't excluded.

[00:21:44] Speaker 02:
They just didn't take the next step.

[00:21:46] Speaker 00:
So they created the problem.

[00:21:47] Speaker 00:
But the judge says it was excluded.

[00:21:48] Speaker 00:
He said, thus the evidence was properly barred.

[00:21:51] Speaker 00:
The judge says he excluded the evidence.

[00:21:53] Speaker 00:
They say he excluded the evidence.

[00:21:55] Speaker 00:
They certainly came in here thinking ultimately he had excluded it.

[00:21:59] Speaker 00:
And his own statement is that he did.

[00:22:02] Speaker 00:
It was properly barred.

[00:22:04] Speaker 00:
So what do we do with this?

[00:22:08] Speaker 00:
Do we conclude, like, for example, is it your view that in every single case, expert testimony is required?

[00:22:15] Speaker 02:
No.

[00:22:16] Speaker 02:
There are simple cases where it would not be required.

[00:22:19] Speaker 02:
But this case, it would be required as evidenced by the fact that we both had very qualified experts that talked to infringement and validity.

[00:22:27] Speaker 02:
That was just one factor.

[00:22:29] Speaker 00:
And the technology was probably... Maybe his decision here on this evidentiary issue would have been

[00:22:36] Speaker 00:
much better insulated had it said this is complex technology and having heard Mr. Friedle, I can't conclude that he met the bar that's necessary to establish Nexus.

[00:22:49] Speaker 00:
This is complex technology.

[00:22:50] Speaker 00:
You needed to have an expert.

[00:22:52] Speaker 00:
They didn't, therefore, it's properly excluded.

[00:22:55] Speaker 00:
Is it your position that I should

[00:22:57] Speaker 00:
We sort of read that in to his analysis, even though he doesn't say that.

[00:23:01] Speaker 02:
Well, I think we ought to read what he said on the record, too, in arriving at that, particularly in the Eliminate Motion.

[00:23:08] Speaker 02:
That was where he said he thought expert testimony would be necessary in this particular case.

[00:23:13] Speaker 01:
But if we come to the copy... Did he say that it would be necessary in this particular case because of complex technology?

[00:23:18] Speaker 01:
Yes.

[00:23:18] Speaker 01:
Or because you must have expert testimony whenever you do

[00:23:23] Speaker 01:
an infringement analysis or an analysis of comparing the claims to something.

[00:23:28] Speaker 02:
No, I think it was because of the complexity of the technology in this case.

[00:23:32] Speaker 01:
Did he expressly say that?

[00:23:34] Speaker 02:
He said he thought there would have to be an infringement analysis, and that would require expert testing.

[00:23:41] Speaker 02:
And I think we could infer from that.

[00:23:42] Speaker 02:
That was why he was saying it, because both sides had to put on experts in order to establish infringement or non-infringement.

[00:23:49] Speaker 02:
If we come to what would it be?

[00:23:51] Speaker 02:
I guess the question is,

[00:23:53] Speaker 03:
In addition to the ruling that Judge Moore is referring to, there seems to have been a waiver in this record for the failure to offer the nexus testimony, that is the commercial success and the copying, on the theory that the testimony, the lay testimony, if you will, freely, was sufficient to establish the nexus and a failure to ask for an instruction on that point.

[00:24:23] Speaker 03:
I would agree with you.

[00:24:25] Speaker 03:
Yes.

[00:24:26] Speaker 03:
If we looked at what- He didn't address that issue.

[00:24:29] Speaker 03:
No, he didn't.

[00:24:30] Speaker 03:
He didn't.

[00:24:31] Speaker 03:
The final decision.

[00:24:32] Speaker 03:
No.

[00:24:32] Speaker 02:
But I think that's the ultimate result of what happened here.

[00:24:39] Speaker 00:
Did you argue that to us in your brief?

[00:24:41] Speaker 00:
Did you argue that they waived the right to challenge

[00:24:48] Speaker 00:
The inadmissibility of commercial success and copying evidence because they didn't subsequently raise it again after putting on Mr. Fridley.

[00:24:58] Speaker 00:
I don't see you making a waiver argument anywhere in your brief.

[00:25:01] Speaker 02:
Did not make a waiver argument.

[00:25:04] Speaker 03:
The result of that is, what's the- I thought you argued in your brief that they failed to ask for an instruction on this.

[00:25:12] Speaker 02:
Correct.

[00:25:14] Speaker 02:
So what Mr. Yarny told the court was, well,

[00:25:18] Speaker 02:
Let us put on the evidence and if the jury finds that there is no nexus and no commercial success, then we'll live with that.

[00:25:26] Speaker 02:
Well, all right, that's fine, but then instruct the jury what the effect will be on obviousness if there is commercial success and if there is copying from whatever was in the record.

[00:25:39] Speaker 02:
Mr. Yaddy says that there was enough in the record.

[00:25:41] Speaker 03:
I thought you were arguing in your brief that the failure to ask for the instruction was a bar.

[00:25:48] Speaker 02:
That would be a waiver.

[00:25:51] Speaker 02:
That was their omission.

[00:25:54] Speaker 02:
I mean, my feeling has always been if you want the jury to come back and tell you something, you have to ask for it.

[00:26:00] Speaker 02:
And in this case, that would have been instructions, which would have been very easy to put in.

[00:26:04] Speaker 02:
The fourth element of the Graham analysis is secondary considerations.

[00:26:09] Speaker 02:
Here they all are.

[00:26:10] Speaker 02:
And if you find that there's evidence to support them, then you can take them into account in deciding obviously.

[00:26:16] Speaker 03:
Okay, so would it be fair to say that you didn't argue that there was a waiver for the failure to put in the evidence, but you argued that there was a waiver for failure to ask for the instruction?

[00:26:25] Speaker 02:
That's correct.

[00:26:27] Speaker 02:
That's correct.

[00:26:28] Speaker 02:
Now, the upshot of all this is it has to be prejudicial also.

[00:26:32] Speaker 02:
Would it have made any difference to the outcome of the case?

[00:26:36] Speaker 02:
Copying, we know, is only equivocal evidence of a secondary consideration.

[00:26:43] Speaker 02:
And there really wasn't any evidence in this case of copying at all.

[00:26:48] Speaker 01:
Haven't our cases said that secondary considerations are important to obviousness?

[00:26:54] Speaker 01:
You would have us just ignore that evidence?

[00:26:56] Speaker 02:
No, you can't ignore it.

[00:26:58] Speaker 02:
You always have to consider it if it's present.

[00:27:00] Speaker 02:
But this court has also said that copying is only equivocal evidence of a secondary consideration.

[00:27:09] Speaker 02:
And as to the commercial success.

[00:27:11] Speaker 02:
there was no evidence put on in this case at all that there was any connection between what was in those commercial units and the commercial success of those units.

[00:27:20] Speaker 02:
So that would have been very easy to put on because they had their commercial witness up there.

[00:27:30] Speaker 02:
I'd like to address just for a moment the inequitable conduct issue.

[00:27:35] Speaker 02:
That is that the district court

[00:27:39] Speaker 02:
He used his discretion in making a clearly erroneous factual issue error and an error of law.

[00:27:49] Speaker 02:
The factual issue had to do with assessing whether or not there was a fictitious or false disclosure of a mode.

[00:27:57] Speaker 02:
And the only evidence in the case about that was that the patent says that the converter 361

[00:28:06] Speaker 02:
which is the critical item that does the conversion function that's in the claim for the modernizing device, was not only commercially available, but it was proven in the electronics industry.

[00:28:17] Speaker 02:
And the only evidence in the case was that that was not so.

[00:28:20] Speaker 02:
It was not commercially available.

[00:28:22] Speaker 02:
It was not proven in the industry.

[00:28:25] Speaker 02:
And even the inventor said that at that time, there was not a converter that could do the conversion of the destination signal to the call report.

[00:28:35] Speaker 02:
So that was clearly erroneous.

[00:28:38] Speaker 02:
The legal error that the court made was grafting onto this court's principle in the consolidated aluminum case that the inventor has to know that the mode that's disclosed is false or fictitious.

[00:28:51] Speaker 02:
And I suggest that that really throws that principle, which has to do with the equivalent of deceptive intent,

[00:29:01] Speaker 02:
into the area of actual deceptive intent.

[00:29:04] Speaker 02:
Because if you know that something is false, you can infer from that that there's deceptive intent.

[00:29:11] Speaker 02:
So I suggest that grafting that additional requirement of knowledge onto the requirement for the consolidated aluminum principle, which was error because that's a very specialized principle.

[00:29:27] Speaker 02:
It's only come up once.

[00:29:29] Speaker 02:
And given the change in the AIA, it may never come up again, but in this case it's applicable because there was intentional withholding of the best mode and there was a false mode or fictitious mode discussed.

[00:29:42] Speaker 03:
I'll reserve the rest of my time for rebuttal.

[00:29:44] Speaker 03:
Okay, thank you, Mr. Schmidt, Mr. Yann.

[00:30:02] Speaker 05:
In response to the point about whether the district court ever initially determined whether this was or was not complex technology and then therefore was expert testimony required or not in this connection, that analysis was never made.

[00:30:17] Speaker 05:
If you read the trial transcript and if you read the court's opinion, the starting point is an expert is needed therefore.

[00:30:26] Speaker 05:
that there was no pre-analysis of whether this merits an expert or not in terms of the complexity of the technology.

[00:30:36] Speaker 05:
The point about whether there was a waiver or not of being able to present this evidence, that concept is nowhere discussed in the district court's opinion because I believe the district court didn't think that there was a waiver because if you go back and look at the

[00:30:56] Speaker 05:
the pre-trial conference, the discussion around the motions in Lumine 2 and 3, as well as the trial discussion at Sidebar, pages 9345 through about 9348 in the appendix, it's pretty clear.

[00:31:16] Speaker 05:
I asked the court, I said, now we've put on Dr. Friedle, I'm going to have him do this.

[00:31:22] Speaker 05:
And he said, well, they're going to start objecting.

[00:31:24] Speaker 05:
I'm going to sustain it.

[00:31:26] Speaker 03:
But this is just testimony using the claim chart.

[00:31:31] Speaker 03:
Yes, which was the gatekeeper.

[00:31:33] Speaker 03:
Which is the only thing that got excluded.

[00:31:36] Speaker 03:
Excuse me?

[00:31:37] Speaker 03:
The only thing he excluded at that point.

[00:31:39] Speaker 05:
Yes, but that was then the gatekeeper to having anyone testify about the copying and the commercial success.

[00:31:48] Speaker 05:
And motion to eliminate number two, which was granted full stop,

[00:31:52] Speaker 05:
excluded that testimony as well.

[00:31:55] Speaker 05:
And then on the copying, I heard that Mr. Schmidt say that, well, it wouldn't have made a difference in this case.

[00:32:06] Speaker 05:
The evidence on this was quite substantial, and because it was designated confidential by Tissenkrupp, I don't know to what extent I can even bring that up right now,

[00:32:20] Speaker 05:
And also out of time.

[00:32:22] Speaker 05:
Yeah.

[00:32:23] Speaker 05:
But I would ask the court to reconsider that in the totality.

[00:32:28] Speaker 03:
Thank you, Mr. Yannick.

[00:32:29] Speaker 03:
Thank you.

[00:32:29] Speaker 03:
Mr. Schmidt, I think you have a little over a minute here.

[00:32:32] Speaker 02:
Oh, he didn't?

[00:32:33] Speaker 03:
Pardon me?

[00:32:35] Speaker 02:
OK, thank you.

[00:32:40] Speaker 03:
I thank both counsel.

[00:32:41] Speaker 03:
The case is submitted.