[00:01:23] Speaker 04:
You're reserving four minutes.

[00:01:28] Speaker 03:
Yes, Your Honor.

[00:01:35] Speaker 03:
May it please the Court, Mark Holland on behalf of Appellant Eric Resch.

[00:01:39] Speaker 03:
Mr. Resch and his wife Janella Gonzalez Resch are here in the audience with us today.

[00:01:46] Speaker 03:
In addition to the materials in our brief, I would like to... Mr. Holland,

[00:01:52] Speaker 04:
I have a note on the front of your brief that says, can you point us to any portions of your brief that are not Ipsy Dixit?

[00:02:03] Speaker 04:
It's a rhetorical question.

[00:02:05] Speaker 04:
I understand.

[00:02:05] Speaker 04:
But you understand what I'm saying.

[00:02:07] Speaker 03:
I'm sorry, Your Honor.

[00:02:10] Speaker 03:
The material I was going to present today, I believe, may address your concern.

[00:02:16] Speaker 03:
All right.

[00:02:22] Speaker 03:
Chronology of this industry and the evidence that is in the record shows that this was a sleepy industry that had not had significant developments in this particular technology for decades.

[00:02:39] Speaker 03:
The appellees themselves point out that one of their

[00:02:46] Speaker 03:
references, the purity superspeed that they tried to use as a 102 reference had been in existence for more than 20 years prior to Mr. Resch inventing his technology.

[00:03:00] Speaker 03:
We have a picture of that in our reply brief at the top of page 24, the shape of that cross-section as it existed in 1971.

[00:03:08] Speaker 03:
In 1982,

[00:03:16] Speaker 03:
The third party, Chris Collins, filed his application that became the 117 patent.

[00:03:22] Speaker 03:
And that was more than 10 years before Mr. Resch filed his application.

[00:03:29] Speaker 03:
And in 1989, Purity modified its SuperScoop design to, as shown again on that same page, we have a sequence of photos showing the different designs of that SuperScoop.

[00:03:43] Speaker 03:
And in 89, they changed their design.

[00:03:46] Speaker 03:
The relevance of those three designs is that none of them showed that the people appreciated the problem that Mr. Resch came to appreciate.

[00:03:59] Speaker 03:
By coincidence, 1989, when SuperScoop made its change in design was the year that Mr. Resch became involved in the industry.

[00:04:09] Speaker 03:
He started cleaning pools for a living.

[00:04:18] Speaker 03:
and including the Collins products, the BR18 that's in the record that was in the patent that he filed.

[00:04:28] Speaker 03:
He realized what apparently nobody in the sleepy industry realized that there was a problem, that these tools did not in fact allow the debris to be scooped easily into the net.

[00:04:40] Speaker 03:
And as you normally move the tool through the swimming pool, it presented a flat face that actually

[00:04:48] Speaker 03:
blocked flow of the debris into the net.

[00:04:51] Speaker 03:
All of these products, the 1971 version of the SuperScoop, the 1982 product that became the 117 patent, and the BR18 product that was cited by the district court, and the 1989 version of the Purity SuperScoop had that same problem.

[00:05:10] Speaker 02:
When you say that as you normally use the product, I'm not familiar with these

[00:05:18] Speaker 02:
devices, so help me out here.

[00:05:22] Speaker 02:
Would you normally be pushing this device to scrape up the leads or pulling the device to scrape up the leads?

[00:05:29] Speaker 02:
Do you understand what I'm asking?

[00:05:31] Speaker 03:
I do.

[00:05:32] Speaker 03:
I do.

[00:05:33] Speaker 03:
The normal use

[00:05:35] Speaker 03:
that we're talking about is a pushing motion.

[00:05:38] Speaker 03:
And that's why the device that Mr. Resch invented is shaped the way it is shaped.

[00:05:43] Speaker 02:
So I stand on the side of the pool and I push toward the middle of the pool to try to collect the leaves.

[00:05:49] Speaker 02:
So the pole is like this and the net and scoop are down here, right?

[00:05:57] Speaker 02:
Why isn't then, isn't the art that contains

[00:06:03] Speaker 02:
slanted, something like Collins, I guess it is, that contains a slanted, seemingly smooth in the usual sense of the word, surface.

[00:06:12] Speaker 02:
Why isn't that exactly what you've invented?

[00:06:17] Speaker 03:
Well, we included drawings to illustrate that.

[00:06:19] Speaker 02:
I know.

[00:06:20] Speaker 02:
And I didn't find the drawings were, I wasn't able to get a sense of exactly what you were saying about why that

[00:06:28] Speaker 02:
The Collins device doesn't work, assuming I'm pushing the device at an angle.

[00:06:33] Speaker 02:
And the net is here, and the front of the device is here.

[00:06:37] Speaker 02:
It seems like the Collins would work.

[00:06:39] Speaker 02:
Why doesn't it?

[00:06:40] Speaker 03:
OK.

[00:06:42] Speaker 03:
Let me move from one extreme to another.

[00:06:44] Speaker 03:
If you were pushing the Collins device horizontally, it would be, in effect, like a dustpan.

[00:06:54] Speaker 04:
Right.

[00:06:54] Speaker 03:
OK.

[00:06:55] Speaker 03:
But you don't push it horizontally.

[00:06:58] Speaker 03:
Because that would be the top of the water.

[00:07:00] Speaker 03:
You stand above the top of the water.

[00:07:02] Speaker 03:
And so to push that tool horizontally, you'd be six feet up above the water.

[00:07:08] Speaker 02:
I guess it depends on whether there's a pivot on the device around where the net is.

[00:07:13] Speaker 03:
There's no pivot.

[00:07:14] Speaker 03:
It's a pole.

[00:07:15] Speaker 03:
So it's a straight pole that reaches down.

[00:07:18] Speaker 03:
And I lower the entire pole, as shown in the drawings that we presented.

[00:07:23] Speaker 03:
And so as I put it down,

[00:07:24] Speaker 03:
not just to the water level, but further down into the water to the bottom of the pool where the debris is that I need to pick up.

[00:07:31] Speaker 02:
And so the angle of Collins gets steeper.

[00:07:34] Speaker 03:
Yes.

[00:07:34] Speaker 03:
And in a normal stroke, Collins becomes a vertical face or even more, depending on where you are in the pool.

[00:07:42] Speaker 02:
But that gets us to the question of claim construction.

[00:07:45] Speaker 02:
And this is where I started having trouble.

[00:07:47] Speaker 02:
If the claim construction, the key word is smooth,

[00:07:52] Speaker 02:
It's hard for me to see why Collins is not smooth.

[00:07:57] Speaker 02:
It has a slanted surface that doesn't seem to have any breaks in it.

[00:08:04] Speaker 02:
Now, admittedly, something that is being held up like that, as you say, looks like it wants to have something that's curved down at a steeper angle, maybe even curving up a little bit so that you can scoop like this.

[00:08:18] Speaker 02:
But why is Collins not smooth in the terms used in the patent?

[00:08:24] Speaker 03:
Well, the claim construction, I'm not certain that it is applicable to the issue that we're discussing here.

[00:08:31] Speaker 02:
It's pretty important, because that's what the whole invalidity question turns on.

[00:08:40] Speaker 03:
There's not a question of whether that surface is smooth.

[00:08:46] Speaker 03:
It's a question of whether

[00:08:47] Speaker 03:
it is relevant to claims one and claim eight to make them invalid.

[00:08:53] Speaker 03:
Claims one and claim eight, as we said in pages one through seven of our reply brief in significant detail, have this requirement of the normal movement through the pool.

[00:09:03] Speaker 03:
And the district court erred in saying exactly the opposite.

[00:09:07] Speaker 03:
District court erred in the reply brief, your honor, one to seven.

[00:09:11] Speaker 02:
I know.

[00:09:11] Speaker 02:
I'm just looking for the pen.

[00:09:13] Speaker 03:
I'm sorry.

[00:09:16] Speaker 03:
The district court held that there was no requirement of any orientation or relationship of that surface.

[00:09:24] Speaker 03:
And it is in both claims one and eight as the independent claims and therefore in all the dependent claims.

[00:09:30] Speaker 04:
Let me turn you to your unfelt need claim.

[00:09:38] Speaker 04:
You rely heavily on a declaration of Ms.

[00:09:41] Speaker 04:
Rush.

[00:09:45] Speaker 04:
The relevant paragraphs of that declaration say things like hundreds of people told me how useful this device was, or there were lines around the building to buy it.

[00:10:04] Speaker 04:
But there's no foundation of any sort for any of that testimony.

[00:10:09] Speaker 04:
There's no time, there's no place.

[00:10:12] Speaker 04:
There's no names or identification of participants.

[00:10:16] Speaker 04:
You need all that stuff in order to have a competent affidavit, do you not?

[00:10:22] Speaker 03:
Yes, Your Honor.

[00:10:22] Speaker 03:
In the context of the motion that we were presented with and the time that was present, and it was summary judgment, we put together the best information that we could.

[00:10:34] Speaker 04:
So you put together an incompetent affidavit, in other words.

[00:10:40] Speaker 03:
I would argue that in the circumstances that... Well, it either is or it isn't.

[00:10:46] Speaker 04:
You're the judge.

[00:10:47] Speaker 03:
Yeah, that's true.

[00:10:48] Speaker 03:
If you judge it as incompetent, then that's your judgment.

[00:10:52] Speaker 04:
You're not arguing that there's any foundational basis for the testimony, is there?

[00:11:02] Speaker 03:
To that level of detail, I believe it was in the... Any level of detail.

[00:11:09] Speaker 03:
Your Honor, there is one compelling fact beyond.

[00:11:11] Speaker 03:
There are at least two more facts that I wanted to make sure and talk about today with you.

[00:11:17] Speaker 03:
The Australian patent that is the only new piece of evidence that was not before the patent examiner that the district court relied upon as saying that it also showed what the Collins 117 patent showed is actually not as material as the 117 patent.

[00:11:38] Speaker 03:
The Australian patent has a frame member that has a slope surface on it.

[00:11:46] Speaker 03:
And instead, the Resch device is a separate member that clips onto a frame member.

[00:11:54] Speaker 03:
And the separate member is where the slope element occurs.

[00:11:59] Speaker 03:
The Australian patent does not have a U-shaped element that can be clipped onto a frame.

[00:12:06] Speaker 03:
Instead, the net of the Australian patent is connected to that sloped frame by screws from underneath.

[00:12:14] Speaker 03:
For all those reasons, the Australian patent is not as relevant.

[00:12:17] Speaker 03:
But it does indicate one thing in terms of non-obviousness.

[00:12:22] Speaker 03:
It was filed slightly more than a year before Mr. Resch filed, and it shows basically the same functional structure that Judge Bryson was inquiring about.

[00:12:34] Speaker 03:
front shape like the 117 Collins patent.

[00:12:41] Speaker 03:
It has that same orientation so that as you push down to the bottom of the pool, you're going to end up with that vertical face where the debris can't go into the net.

[00:12:51] Speaker 03:
What that indicates is that, again, over these decades, leading up to Mr. Resch's invention, the purity company, the Collins development, and now the Australian filing,

[00:13:04] Speaker 03:
None of them appreciated that they needed to address that and fix that.

[00:13:09] Speaker 03:
They were all apparently unaware of that problem.

[00:13:15] Speaker 03:
This is relevant to KSR analysis because KSR says that a patent's subject matter can be proved obvious by noting that there existed at the time of invention a known problem.

[00:13:31] Speaker 03:
Well, this problem was not known.

[00:13:34] Speaker 03:
It had been in the industry for decades until Mr. Resch got there using these decades old tools.

[00:13:40] Speaker 03:
You know you're in your rebuttal time.

[00:13:42] Speaker 03:
Thank you, your honor.

[00:13:44] Speaker 03:
I will make one last point.

[00:13:47] Speaker 03:
Perhaps the most damning evidence to show that this is not an obvious invention is that the appellees, shortly after Mr. Resch brought his patent, his product to market, made an offer to buy the patent and to buy his business.

[00:14:02] Speaker 03:
that to me is tantamount to an admission that because they had been in the industry, they knew the products, they knew these decades old designs that had been out there, they looked at his new product and they recognized that it was new and it was different and it was worth buying, they made that offer to him.

[00:14:18] Speaker 03:
Thank you, your honor.

[00:14:30] Speaker 01:
May it please the court, Joshua Stoll on behalf of the appellee.

[00:14:34] Speaker 01:
In this case, this court should affirm the district court's finding of obviousness of the asserted claims.

[00:14:40] Speaker 01:
The issue before the district court was whether a person of ordinary skill in the art would find it obvious to modify the plastic rim that's clipped on the front of the BR-18 physical rake to have a smooth surface like shown in the Australian patent or in the Collins patent.

[00:14:57] Speaker 01:
That was the question that the district court was addressing.

[00:15:00] Speaker 01:
Mr. Resch had admitted that the BR 18 included every claim limitation except the smooth surface, and that's in the record at 254 to 255, or 2054 to 2055.

[00:15:14] Speaker 01:
Orrick had presented evidence that a person of skill in the art would have found it obvious to modify the front surface of the BR18 to have a smooth surface.

[00:15:23] Speaker 01:
There were no manufacturing hurdles in the industry to doing that.

[00:15:28] Speaker 01:
Plastic extrusions are very easy to make, very cheap to make, and so there was expert testimony that a person of ordinary skill in the art would have found it obvious to modify that shape to be really any shape that you want, including a smooth shape.

[00:15:41] Speaker 01:
Mr. Resch and his experts did not offer any sort of rebuttal to that evidence.

[00:15:48] Speaker 01:
The only basis for which Mr. Resch argued non-obviousness at the district court was that there was a presumption of validity.

[00:15:55] Speaker 01:
There's no factual evidence that a person of ordinary skill in the art would not have known how to modify the extrusion to have a smooth front surface.

[00:16:08] Speaker 01:
In terms of the orientation of the rake that's been argued here, first off, the panel recognized that there's no evidence of the record regarding

[00:16:17] Speaker 01:
the orientation of Collins or the Australian patent in Resch's brief at 14 to 17 and 47 to 51 where he discusses this.

[00:16:26] Speaker 01:
There's no evidence cited to support the contentions about how the device would tilt when it's used in the water.

[00:16:33] Speaker 01:
Similarly, at the reply brief at pages one through seven, there's no evidence supporting these contentions about how Collins would be tilted if it were used in a... I asked counsel.

[00:16:44] Speaker 04:
Even though it was a rhetorical question, I meant that it's a Dixon.

[00:16:48] Speaker 01:
Thank you, Your Honor.

[00:16:50] Speaker 01:
There's a reason for that.

[00:16:52] Speaker 01:
In fact, there is evidence in the record that the prior art references do satisfy those claims.

[00:16:57] Speaker 01:
The Australian patent is a good example.

[00:16:59] Speaker 01:
Figure 3A shows the device moving through the water, and there's a flow pattern shown going over the front of the Australian rake.

[00:17:06] Speaker 01:
During his deposition, Mr. Resch admitted that that accurately reflected how the water would flow over the front surface of the rake as it was moved through the water, and that's at appendix 1455 to 1456.

[00:17:18] Speaker 01:
So the evidence in the record is that the rakes do direct debris as required in the patent as they're moved through the water.

[00:17:27] Speaker 01:
Also, again, there's no dispute that the BR18 meets that limitation.

[00:17:32] Speaker 01:
So our primary reference here meets all the limitations in the patent except the smooth surface.

[00:17:37] Speaker 01:
And the smooth surface has been found not only in the pool arts, but there are a number of other arts such as dust pans, snow shovels,

[00:17:45] Speaker 01:
pooper-scoopers where smooth surfaces were used for scooping debris.

[00:17:50] Speaker 00:
Can I ask you about the judgment?

[00:17:51] Speaker 00:
I just want to clear this up.

[00:17:52] Speaker 00:
Sure.

[00:17:53] Speaker 00:
Do you agree that it only invalidates claims one and eight?

[00:17:55] Speaker 00:
It doesn't invalidate the entire patent?

[00:17:58] Speaker 01:
It invalidates the asserted claims in the case.

[00:18:01] Speaker 01:
So that would be one, two, and six through eight.

[00:18:04] Speaker 00:
But not the entire patent.

[00:18:06] Speaker 00:
That's correct.

[00:18:07] Speaker 00:
So that last sentence that calls the patent invalid has to be read in context.

[00:18:12] Speaker 00:
Honestly, I just want to make sure.

[00:18:15] Speaker 00:
I mean, assuming we agree with you, we don't need to remand to have the judgment corrected to make it clear.

[00:18:22] Speaker 00:
But you agree that it doesn't invalidate the entire patent.

[00:18:24] Speaker 01:
That's correct.

[00:18:25] Speaker 01:
Dependent claims 3, 4, and 5 were not asserted in the case.

[00:18:29] Speaker 01:
And we agree with you that those are not invalid.

[00:18:33] Speaker 01:
In terms of the secondary considerations, there was not invalidated.

[00:18:38] Speaker 02:
Sorry, Your Honor.

[00:18:39] Speaker 02:
They were not invalidated.

[00:18:40] Speaker 02:
You may think they're invalid, but... Right, right.

[00:18:42] Speaker 01:
Sorry, Your Honor.

[00:18:44] Speaker 01:
In terms of the secondary consideration... Claim 9, I guess, is the other one.

[00:18:47] Speaker 02:
What's that?

[00:18:47] Speaker 02:
Claim 9.

[00:18:48] Speaker 01:
That's correct.

[00:18:49] Speaker 01:
Claim 9, Your Honor.

[00:18:50] Speaker 01:
In terms of the secondary considerations, again, there was never any nexus established between the secondary considerations that were alleged in this case and the allegedly novel smooth scooping surface.

[00:19:02] Speaker 01:
as alleged earlier and as the district court noted, it was really kind of hearsay and anecdotal testimony that lots of people had expressed an interest over the rakes.

[00:19:17] Speaker 01:
However, the inventor himself- It wasn't alleged, Mr. Stowell, it was noted.

[00:19:21] Speaker 01:
It was noted, thanks.

[00:19:23] Speaker 01:
Thank you.

[00:19:24] Speaker 01:
In terms of the actual reasons for the sale, the inventor himself admitted there were a number of reasons that the rakes sold.

[00:19:31] Speaker 01:
They were rugged and durable.

[00:19:33] Speaker 01:
This is in the declaration submitted in opposition to the summary judgment of invalidity.

[00:19:38] Speaker 01:
Also, customer service, coloring, a lot of different reasons that the rake sold beyond the smooth surface.

[00:19:46] Speaker 01:
In fact, there was no evidence of record that the smooth surface had any impact on the sales.

[00:19:53] Speaker 01:
There's also a claim construction issue raised and also this issue of alleged false evidence.

[00:20:00] Speaker 01:
My opponent didn't discuss those and so I'll rest unless you have any questions on those particular issues.

[00:20:07] Speaker 01:
Thank you for the time.

[00:20:13] Speaker 04:
Mr. Hall, you have a couple minutes left there.

[00:20:16] Speaker 04:
Thank you, Your Honor.

[00:20:18] Speaker 03:
I want to come back to the KSR standard that should control here and the history that I recited of the prior art and the actions by Appelli that this technology, these tools that had been in place had been there for decades and nobody had identified this problem until Mr. Resch got into the industry and he was frustrated with that old technology.

[00:20:47] Speaker 03:
As soon as it was the last point I made earlier, as soon as he introduced it, the appellees came and asked if they could buy his company and buy his patent.

[00:20:56] Speaker 03:
That's what would have happened for a person of ordinary skill in the art.

[00:21:00] Speaker 03:
This was new.

[00:21:02] Speaker 03:
This was different.

[00:21:03] Speaker 03:
That reaction by the appellees should carry, almost independently of everything else, should carry the question of obviousness and allow us to go to trial.

[00:21:10] Speaker 02:
Is there anything in the record as to how much was offered for the company and the patent?

[00:21:14] Speaker 03:
I don't recall if it is in the...

[00:21:17] Speaker 02:
It would seem to me that that might be very important in distinguishing between a case in which one was really quite concerned that the patent might have great force as opposed to a case in which the patent can be eliminated simply for nuisance value.

[00:21:35] Speaker 03:
Well, there was no question of infringement at that time.

[00:21:38] Speaker 03:
They had their own prior old dusty design that they were selling.

[00:21:43] Speaker 03:
And they were excited about whatever the price was.

[00:21:46] Speaker 02:
It would be expensive to have a patent fight over validity and maybe they offered to buy the company in order to avoid that expense.

[00:21:54] Speaker 03:
This was 20 years ago, Your Honor.

[00:21:57] Speaker 03:
This was when he first came out.

[00:21:58] Speaker 03:
There was nothing else like it on the market.

[00:22:00] Speaker 03:
But he had a patent.

[00:22:03] Speaker 03:
He had patent pending and he may have had a patent at the point in time of the offer, but the

[00:22:10] Speaker 03:
The point is it was very early and he hadn't built the company up and he hadn't generated the sales yet but when they saw it because they were at the trade shows right beside him and they were that excited that they made that offer.

[00:22:23] Speaker 03:
The KSOR standard about the problem being a known problem I don't think is met here and so we're in exception to that and also Pelley's brief where they say there was no known design need or market pressure.

[00:22:37] Speaker 03:
People were happy with the old product that had the problem.

[00:22:39] Speaker 03:
Mr. Resch came in and he was not happy.

[00:22:41] Speaker 03:
He's the one that saw the problem, made the design, and fixed it.

[00:22:45] Speaker 03:
Thank you, Your Honor.

[00:22:46] Speaker 03:
Thank you, Counsel.