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Gentlemen, on behalf of the panel, let me say that we're very pleased to be here sitting in Boston and especially at Northeastern Law School.

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Let me give you a little background on our court.

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We are one of the 13

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circuit courts of appeals on the same level as all the others.

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We differ from the others in that we are national, not regional, but we have specific jurisdiction, not general.

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It's part of the legal history of our statute, and we were created in 1982, that we sit from time to time outside of Washington.

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And every year we go somewhere and we decide where we'd like to go.

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And we get invitations to come from district courts and from law schools.

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And maybe we got a nice one from you.

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And in any event, we decided to come to Boston.

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We have sat in Boston, I think, probably four times, three of them at least, since I've been in the court, which is 25 years.

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A major jurisdiction is patent cases.

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When I joined the court, we had about a third of our cases being patent cases, and now they're well over 50% for various reasons.

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So we hear patent appeals from all over the country.

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We also hear suits from the Court of Federal Claims for money damages not based on tort against the government.

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federal government, and these include government contract cases, Fifth Amendment takings, Indian claims, quite an interesting collection.

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We hear suits from appeals from the Court of International Trade, dumping, not availing duties, customs.

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We hear, we have personnel appeals.

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We hear veterans' appeals from the Court of Veterans Claims.

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We hear, and I should have mentioned

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When I mentioned we hear cases from the Court of International Trade, Judge Wallach was in the Court of International Trade.

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We hear cases from the Merit Assistance Protection Board, from government employees.

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So we have quite an interesting collection of cases.

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Now today,

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And I mentioned that patent appeals are increasing.

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The others may be going down, but they're under a new system, statutory system enacted by Congress.

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A lot of issued patents are being re-examined in the patent office.

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Those are now coming back to us.

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So I'm sorry if you today were looking for diversity.

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But we have four argued cases.

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We have two government employee appeals that are combined and are submitted on the briefs and will not be argued.

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But we have four patent cases.

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One is from the district court.

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And the other three are from the patent office involving review of issued patents.

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So we'll have an opportunity to interact with you, if you like, afterwards at lunch and you can ask us any questions.

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But now we have cases to hear.

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And so let us proceed.

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For the first case, which is Southwire Company versus Fellowwire,

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15-1117, Mr. Bradley.

[00:04:08] Speaker 01:
May it please the Court.

[00:04:10] Speaker 01:
In ruling that META anticipates the claims, the Board erred in three key respects.

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First, the Board applied an incorrect legal standard in determining that combining META with an admitted prior art could constitute an anticipation

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and it cannot.

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Second, the board entirely disregarded the claim requirement that the pulling looper can permeate the sheath of a THHN cable to become available at the outer surface of the cable when it's pulled.

[00:04:42] Speaker 01:
The board didn't address it.

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The examiner, for his part, ruled that it was inherent, but provided no analysis.

[00:04:49] Speaker 02:
But the basic issue here is a cable

[00:04:52] Speaker 02:
lubrication that permeates the material.

[00:05:00] Speaker 02:
It's basically all there in Mater, isn't it?

[00:05:02] Speaker 01:
It's not at all, Your Honor.

[00:05:04] Speaker 01:
The prior art that we overcame, that has been in existence for decades, involved externally lubricating cables and pulling them through conduit and dirty enclosures.

[00:05:15] Speaker 01:
This invention changed the industry by internally lubricating, by applying a lubricant during the manufacturing process, interjecting it into the nylon in the right levels, the right concentrations, such that when it's pulled, the lubricant permeates the sheet and becomes available at the outer surface.

[00:05:35] Speaker 01:
The testimony that's in the record is that it works like magic, and it really changed the industry.

[00:05:39] Speaker 01:
So it's not just simply lubricating any old nylon.

[00:05:43] Speaker 03:
Let me ask you this.

[00:05:44] Speaker 03:
At 18 in the red break, Cerro argues that the central, simply put, the central argument, Southwire now advances on appeal, were never properly before the board below, and the board rightly did not consider them.

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They were therefore waived below.

[00:06:00] Speaker 03:
Where in the proceedings below did you argue that Meta did not disclose permeating?

[00:06:05] Speaker 03:
Give me a JA site, please.

[00:06:07] Speaker 01:
In A 2252.

[00:06:12] Speaker 01:
We argued and made clear that META did not even disclose adding the lubricant to the nylon jacket at all.

[00:06:20] Speaker 01:
And if the lubricant is not introduced into the nylon jacket at all, then the force is not permeating, it wasn't even there.

[00:06:29] Speaker 01:
We argued consistently to the board that adding the claimed lubricant into a nylon cable jacket material

[00:06:39] Speaker 01:
is not disclosed by META.

[00:06:41] Speaker 01:
And if you don't introduce the lubricant into the nylon at all, well of course it's not going to permeate to the outer sheath when it's pulled.

[00:06:49] Speaker 01:
META does not even disclose anything about the cables.

[00:06:52] Speaker 01:
It mentions the word cable, but it never talks about pulling forces, what may happen to the lubricant as it's pulled.

[00:06:59] Speaker 01:
This is absolutely arguable.

[00:07:02] Speaker 02:
Mr. Gravey, you or your firm may not have argued or prosecuted this patent, but obviously the Patent Office found META as being very relevant.

[00:07:15] Speaker 02:
Whatever we decide on it, the Patent Office thought it was relevant in re-examination.

[00:07:21] Speaker 02:
META is buried in the middle of 150 or 200 references and the duty of disclosure requires

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bringing to the Patent Office attention relevant reference.

[00:07:37] Speaker 02:
Is that comprising, properly complying with a duty to bury it in a hundred plus references?

[00:07:44] Speaker 01:
I think META has really very, very limited relevance at all to the claims it issues.

[00:07:50] Speaker 01:
META at most talks about introducing small clients.

[00:07:53] Speaker 02:
Well, you may be right.

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that the Patent Office loses.

[00:07:56] Speaker 02:
We'll eventually decide that.

[00:07:58] Speaker 02:
So what I'm saying is, META was obvious.

[00:08:00] Speaker 02:
They made the rejection.

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And I'm just calling attention to the fact that META wasn't singled out, apparently, in the prosecution.

[00:08:11] Speaker 02:
It was buried there.

[00:08:14] Speaker 02:
We'll call on the references.

[00:08:16] Speaker 01:
You're speaking about the original prosecution where it was signed?

[00:08:18] Speaker 01:
Right, yeah.

[00:08:19] Speaker 01:
From our perspective, from South Park's perspective, it just wasn't relevant.

[00:08:23] Speaker 01:
It was just another reference that mentioned lubricants.

[00:08:27] Speaker 01:
And META is talking about processing lubricants for films.

[00:08:31] Speaker 01:
And it doesn't say anything about cables.

[00:08:33] Speaker 01:
It mentions the word cable later in the specification, but it doesn't say anything about it.

[00:08:38] Speaker 02:
In other words, it's really crowded up.

[00:08:40] Speaker 01:
It is a crowded art to some extent.

[00:08:42] Speaker 02:
This isn't really springing forth as a substantial, new, and clearly unobvious invention.

[00:08:50] Speaker 01:
That's not true at all, Your Honor.

[00:08:51] Speaker 01:
And first of all, we are talking about anticipation here.

[00:08:54] Speaker 01:
But this invention was a giant leap forward.

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For decades, people in the industry had been externally lubricating these cables on the job site.

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It created a mess.

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It was expensive.

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It was time consuming.

[00:09:10] Speaker 01:
Southwire created this invention.

[00:09:13] Speaker 01:
It eliminated all of that.

[00:09:15] Speaker 01:
It has taken over the industry, which is why we have CERO and Next Encore.

[00:09:19] Speaker 01:
We have competitors coming in, challenging this patent that Southwire came up with, saying it's in dollars.

[00:09:25] Speaker 00:
But it's looking at... Returning to Judge Wallach's question about waiver, the site that you directed us to at 2252 is the appellant's rebuttal brief to the board.

[00:09:37] Speaker 00:
Is it enough for the appellant to raise in their rebuttal brief to the board an issue they didn't raise in their initial brief for doing the case?

[00:09:46] Speaker 03:
And let me add on top of that, because I want to follow up.

[00:09:49] Speaker 03:
I've looked at where you've got here.

[00:09:51] Speaker 03:
But what you're saying is, well, Metta doesn't mention any of this stuff.

[00:10:00] Speaker 03:
Where is your permeating or migrating argument?

[00:10:04] Speaker 01:
In the brief to the board,

[00:10:06] Speaker 01:
We did not specifically argue that it's permeating.

[00:10:09] Speaker 01:
What we did, we didn't have to get there because there was no need.

[00:10:12] Speaker 01:
We said at every stage, in both the original appeal brief and again in the rebuttal brief, that meta does not disclose anything pertinent about cables.

[00:10:22] Speaker 01:
It doesn't disclose anything pertinent about introducing a lubricant into a cable.

[00:10:27] Speaker 01:
And if that's true, then

[00:10:29] Speaker 01:
We don't have to go forward to the next step and say, and because the lubricant's not in the cable, it obviously doesn't permeate to the outer sheath when it's pulled.

[00:10:38] Speaker 01:
Meta doesn't talk about any of that, and we made that clear both in the original appeal brief and in the pre-fuddle brief at every stage, that Meta does not teach anything meaningful

[00:10:48] Speaker 01:
about a cable or THHN cable.

[00:10:50] Speaker 01:
And introducing a weaver can is just not disclosed in META.

[00:10:53] Speaker 01:
And here, again, we're talking about does META anticipate?

[00:10:57] Speaker 01:
Not is it obvious?

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Does it anticipate?

[00:11:00] Speaker 00:
Where did you make, show me the best place in your original brief as opposed to your rebuttal brief where you believe you raised the THHN cable argument that you're now making.

[00:11:11] Speaker 01:
On A2190?

[00:11:29] Speaker 01:
The statements were general but encompassing.

[00:11:33] Speaker 01:
On A2190 at the beginning of the first full paragraph, it says that META teaches nothing about the claimed manufacturing process for these coins.

[00:11:41] Speaker 01:
And it goes on and says, although META mentions cable as a possible application,

[00:11:46] Speaker 01:
Meta concentration on film doesn't disclose the steps for processing a THHN cable.

[00:11:53] Speaker 00:
You say Meta teaches nothing regarding a pulling force of the claimed THHN cable, but that's not the same as saying Meta doesn't actually disclose the THHN cable.

[00:12:06] Speaker 00:
Your statements here are somewhat different it seems to me than

[00:12:11] Speaker 00:
the arguments you're making now.

[00:12:12] Speaker 00:
You have a stronger case for the arguments you're making now in your rebuttal brief before the board, but I'm just a little bit nervous that possibly you can preserve some of these issues.

[00:12:21] Speaker 00:
So show me, which sentence do you think makes it clear to the board below that you were arguing that even if META is construed as applying to cable,

[00:12:32] Speaker 00:
it never expressly discloses THHN cable and that there are good reasons why thermal heat, I don't remember, thermal heat something or other cable might be different than other kinds of cable.

[00:12:44] Speaker 00:
The arguments you're making now to us are precise and scientific and clear about why the THHN in particular matters as opposed to all forms of cable.

[00:12:56] Speaker 00:
And I certainly don't see any degree of specificity mirroring your current briefs

[00:13:02] Speaker 00:
in the brief to the board.

[00:13:04] Speaker 00:
And so I'm nervous that you didn't preserve the issue.

[00:13:07] Speaker 00:
So show me where you think is your best argument.

[00:13:10] Speaker 01:
The best argument I think is in 2190, A2190, there's a paragraph that begins second, the second sentence of that that says META teaches nothing regarding pulling force of the claim THHN cable.

[00:13:23] Speaker 01:
And that sentence again focuses on the pulling forces, but it's again referencing the THHN cable.

[00:13:29] Speaker 01:
And one reason

[00:13:31] Speaker 03:
That's your best?

[00:13:33] Speaker 01:
One reason that I can think of at the moment.

[00:13:36] Speaker 01:
We say at the very end of that same paragraph that META does not teach anything meaningful about a cable or a THHN cable.

[00:13:44] Speaker 01:
That's another, I think, a good spot where we made clear that it doesn't talk about cables.

[00:13:49] Speaker 01:
And then we separately said, or THHN cables.

[00:13:52] Speaker 01:
We added that modifier.

[00:13:54] Speaker 01:
It was clear all along that META does not disclose this.

[00:13:57] Speaker 01:
No party had argued that it did.

[00:14:00] Speaker 00:
The examiner had also rejected these claims on obviousness, didn't he?

[00:14:10] Speaker 00:
The claim one, the one that bafflingly to me was limited by the board to an analysis on anticipation.

[00:14:18] Speaker 00:
sidestepped the obviousness rejection, is that right?

[00:14:22] Speaker 01:
There was an argument by Cerro that Metta alone rendered it obvious, but the board did not address that one either, and the rest were all combinations.

[00:14:29] Speaker 00:
It wasn't just an argument by Cerro, the examiner had in fact found the claim obvious, correct?

[00:14:35] Speaker 00:
In light of Metta.

[00:14:37] Speaker 01:
in light of meta in combination with certain other references.

[00:14:40] Speaker 01:
There was no finding by the examiner or board that meta alone rendered the claim obvious.

[00:14:46] Speaker 01:
It was all, the only time we addressed meta was on just straight anticipation.

[00:14:49] Speaker 00:
Because your main argument to us is this is a Jefferson claim and as such the THHN reference in the claim which comes of course in the preamble is nonetheless a limitation because it's stating the prior art, right?

[00:15:06] Speaker 01:
That is correct.

[00:15:08] Speaker 01:
It appears both in the preamble and provides an antecedent basis for later recitations.

[00:15:12] Speaker 00:
Yeah, which is your argument for why it's a limitation.

[00:15:15] Speaker 01:
Right, and there's no dispute.

[00:15:16] Speaker 00:
But if it's a Jepson claim and it appears in the preamble, that is an admission by the applicant that it is part of the prior art.

[00:15:24] Speaker 00:
I'm going now to the obviousness notion.

[00:15:27] Speaker 00:
I don't know what good it necessarily does your client if we vacate and remain on the technicality of anticipation when there is a teed up

[00:15:35] Speaker 00:
obviousness rejection that for whatever bizarre reason the board just didn't address.

[00:15:42] Speaker 01:
I do implore the court not to presume or predispose of an obviousness argument as the court's well aware.

[00:15:49] Speaker 01:
The test is quite different.

[00:15:50] Speaker 01:
We can introduce evidence about secondary considerations about how important the suspension is then.

[00:15:57] Speaker 00:
But you in fact already did that.

[00:16:00] Speaker 00:
You had that opportunity for the other claims that issue here.

[00:16:04] Speaker 01:
And they were not resolved.

[00:16:06] Speaker 01:
The board never made any finding on them.

[00:16:08] Speaker 01:
It's not right for this court to address them.

[00:16:11] Speaker 00:
other than claim one on obviousness?

[00:16:14] Speaker 01:
On grounds other than the claim one, excuse me, than the anticipation ground.

[00:16:18] Speaker 01:
The only ground the board has addressed and made any findings as to is the anticipation ground.

[00:16:25] Speaker 01:
And that's just, they got the law wrong.

[00:16:27] Speaker 01:
The case that we point to that I highlight to your honor in the court is Roe v. Roe.

[00:16:33] Speaker 01:
And in that case, there was a Jepson-style claim.

[00:16:37] Speaker 01:
And the preamble recited a balloon angioplasty catheter.

[00:16:41] Speaker 01:
And the prior showed everything, except for that preamble.

[00:16:46] Speaker 01:
And this court said that cannot be anticipation.

[00:16:49] Speaker 00:
I guess your comment a minute ago was a little confusing to me, only because looking back at my notes, I see the board may not have affirmed the examiner's rejections of claim one as obvious.

[00:17:04] Speaker 00:
But they did go through and affirm the rejections of claims four, five, nine, and 10 as obvious.

[00:17:10] Speaker 00:
Given that four is simply a dependent claim, wouldn't you have introduced all of your secondary consideration evidence pursuant to that process?

[00:17:22] Speaker 01:
I believe, Your Honor, that I'll clarify.

[00:17:25] Speaker 01:
In this case, in the Sarrow Appeal, there's no obvious in this case.

[00:17:28] Speaker 01:
The 4, 5, 9, and 10, that's in the next appeal encore.

[00:17:33] Speaker 00:
This one is... One cotton, two appeals, two re-exams.

[00:17:36] Speaker 00:
Yes.

[00:17:37] Speaker 01:
I'm doing my best to keep it straight.

[00:17:38] Speaker 01:
I am into my rebuttal time, and I'd like to reserve the remainder of my time.

[00:17:42] Speaker 02:
We will save that for you.

[00:17:43] Speaker 02:
In fact, give you two minutes of rebuttal time.

[00:17:46] Speaker 01:
Thank you, Your Honor.

[00:17:47] Speaker 02:
Mr. Steadman.

[00:17:49] Speaker 02:
Before you begin, Mr. Steadman, you have a cross-appeal and we think it's not a proper cross-appeal because it's another argument for sustaining the judgment.

[00:18:02] Speaker 02:
And so you're perfectly entitled to make the argument here, but we're not going to give you a second argument to have the last word on sustaining the judgment.

[00:18:16] Speaker 02:
And I personally didn't read your second brief because you're appellee.

[00:18:22] Speaker 02:
So please proceed but consider that you have one argument time, 15 minutes.

[00:18:28] Speaker 03:
Thank you, Your Honor.

[00:18:29] Speaker 03:
I didn't miss any rebuttal time.

[00:18:31] Speaker 03:
Good morning, inmate.

[00:18:34] Speaker 03:
I'm Paul Sedmon from DLA Piper for Sarah Weier.

[00:18:39] Speaker 03:
We did argue that both of the arguments are waived.

[00:18:42] Speaker 03:
Both of the arguments, the main arguments on appeal, are waived and we stand by that.

[00:18:46] Speaker 03:
I'm happy to answer questions about that.

[00:18:48] Speaker 03:
But if there are no particular questions as to that, I think that our time would be best spent addressing the question that counsel raised at the end of his argument, and that is, did the...

[00:19:00] Speaker 02:
This is an anticipation rejection.

[00:19:04] Speaker 02:
All of the limitations of the claim must be in one reference.

[00:19:08] Speaker 02:
META doesn't disclose nylon, does it?

[00:19:11] Speaker 03:
META does disclose nylon, Your Honor.

[00:19:14] Speaker 03:
If you look at META, in column four, which is the key portion about... Can you tell us what page in the appendix, please?

[00:19:26] Speaker 03:
I can.

[00:19:26] Speaker 03:
It's appendix page A178.

[00:19:29] Speaker 03:
Column 4, line 21.

[00:19:34] Speaker 03:
According to the method of the present invention, the above described siloxane blend B is added to the thermoplastic resin A and serves as a surface modifier therefore and so forth.

[00:19:46] Speaker 03:
If you then turn to the prior page and look at column 1, line 47, which is the very beginning sentence of detailed description of the invention, the thermoplastic resin

[00:19:59] Speaker 03:
that constitute the complement A of the invention are preferably polyolefins, but can be other thermoplastic resins as well, such as nylons.

[00:20:10] Speaker 03:
So nylon is specifically disclosed as a non-preferred found in meta as what can be the thermoplastic resin.

[00:20:18] Speaker 00:
Where does meta disclose the THHN cable?

[00:20:23] Speaker 03:
That's a good question and one that you will only get to if you get past the waiver argument.

[00:20:29] Speaker 03:
Going back to column four, after it says that you can put the siloxane blend B into the thermoplastic resin A to serve as a surface modifier, it then talks about how that might be used.

[00:20:43] Speaker 03:
Line number three.

[00:20:45] Speaker 03:
I am at line number 28.

[00:20:46] Speaker 03:
This method is particularly applicable to the production of cast film or blown film, but also finds utility in sheet molding, extrusion blow molding,

[00:20:58] Speaker 03:
injection stretch blow molding, injection molding, pipe, wire, or cable extrusion, and so forth.

[00:21:06] Speaker 03:
If you have a nylon pipe covered cable or wire, that's certainly within the ambit of THHN.

[00:21:13] Speaker 03:
It doesn't use that designator specifically, but it does say that.

[00:21:18] Speaker 03:
Now, if you go to the preamble of these claims that we've been looking at, and because the claims are amended, you have to look at them in self-wise briefs, the amended claims.

[00:21:29] Speaker 03:
For example, on page 11 of their brief, I tend to focus on claim 9, which is the one that has the same thing in it, but we can look at any of them.

[00:21:42] Speaker 03:
In claim 9, it says, in ATHH and electrical cable,

[00:21:48] Speaker 03:
of the type comprising a conductor core and a sheath surrounding said conductor core in which the sheath has at least its exterior portion formed of a nylon material.

[00:21:59] Speaker 03:
That is exactly, precisely what is disclosed in META, a cable with its outer sheath made of nylon material.

[00:22:08] Speaker 00:
No, but a THHN electrical cable is a precise type.

[00:22:13] Speaker 00:
a species of cable.

[00:22:14] Speaker 00:
It is not identically any nylon cable with a sheath.

[00:22:19] Speaker 00:
It is a precise kind of cable.

[00:22:23] Speaker 00:
Thermal, heat resistant, whatever, whatever, whatever.

[00:22:25] Speaker 00:
I don't remember what the acronym stands for.

[00:22:27] Speaker 00:
But it is a particular type of cable.

[00:22:33] Speaker 00:
And that is a claim limitation.

[00:22:35] Speaker 00:
And for anticipation, every single limitation has to be present in the accused device.

[00:22:42] Speaker 00:
every single limitation has to be present in the prior art reference and so I'm struggling with where THHN cable is in the prior art reference.

[00:22:54] Speaker 03:
I think perhaps the council and their brief have confused that issue by making THHN be more precise than it actually is.

[00:23:03] Speaker 03:
It is simply a commercial designation.

[00:23:05] Speaker 03:
If you look at their own patent, the 024 patent, Collins 6,

[00:23:10] Speaker 03:
where it's talking about what THHN cable is.

[00:23:16] Speaker 03:
As you go down to line 17, column 6, line 17, it's talking about type THHN or THWN2 conductors are usually annealed soft copper insulated with a tough heat resistant and moisture resistant polyvinyl chloride

[00:23:39] Speaker 03:
over which a polyamide layer, specifically nylon, is applied.

[00:23:44] Speaker 03:
They're talking about what it usually is.

[00:23:46] Speaker 03:
The patent itself is talking about what it usually is and the only thing that is specific and called out by the patent specification as being specific to THHN is the polyamide layer, specifically nylon.

[00:24:02] Speaker 03:
Unless you're willing to read in from the specification to the claims limitations that are described only as being usually there.

[00:24:12] Speaker 00:
I don't understand.

[00:24:14] Speaker 00:
It seems to me that you're asking us to make fact findings about what the nature or the characteristics are of THHN cables

[00:24:24] Speaker 00:
and then to conclude based on those fact findings, which we can't make as an appellate court, that something identical or similar or close enough is disclosed in meta.

[00:24:35] Speaker 00:
And I feel you can tell from the nature of my question, it's not a friendly question, that it's not something that I feel that I'm able to or should appropriately do on appeal.

[00:24:46] Speaker 03:
I don't think that's what we're asking you to do.

[00:24:49] Speaker 03:
The standard on appeal is whether the court below made a clear error and this court has said that it will affirm if there is substantial evidence to support the decision below.

[00:25:03] Speaker 03:
Looking at the claim language, which says that THHN is something comprising a conductor core covered in nylon.

[00:25:10] Speaker 03:
Looking at the specification, which says the only specific thing about THHN that's important to the invention is that it's specifically covered by nylon and that you make a change to the nylon.

[00:25:20] Speaker 03:
Looking at META, which teaches cable extrusion of nylon that's been modified exactly the same way as claimed in the past.

[00:25:28] Speaker 03:
It was fair for the board below to conclude that META would teach a person with skill in the art would suggest a person with skill in the art the exact same modification to THHN as is claimed.

[00:25:42] Speaker 00:
But is this standard for anticipation what one of skill in the art would be able to do based on a reference or doesn't it require a higher level of detail?

[00:25:56] Speaker 03:
As I understand the question, I'm sorry, as I understand the law, the law is that a prior art reference is prior art for all that it would teach a person of skill in the art.

[00:26:07] Speaker 03:
You don't have to look for the letters T-H-H-N.

[00:26:11] Speaker 00:
Wow, time out.

[00:26:12] Speaker 00:
You think for anticipation anything a reference teaches one of skill in the art, which necessarily encompasses everything one skill in the art brings to the table.

[00:26:22] Speaker 00:
The knowledge that a skilled artisan is coming to the table with

[00:26:26] Speaker 00:
is good enough for anticipation, don't you think that statement of yours would be a dramatic expansion of anticipation doctrine?

[00:26:34] Speaker 00:
I do not.

[00:26:35] Speaker 03:
There are cases which hold that a prior art reference anticipates a claim through inherent disclosure.

[00:26:43] Speaker 03:
Inherent disclosure means that it would have to teach a person a skill in the art something inherently, which is not actually written there.

[00:26:49] Speaker 00:
Inherency doctrine requires that not possibilities or probabilities or likelihood are sufficient, even if it's 99% of the time.

[00:26:59] Speaker 00:
It has to be automatic 100% and never ever does it not come to fruition.

[00:27:05] Speaker 00:
So, inherency is a very, very narrow doctrine as this court has defined it.

[00:27:10] Speaker 00:
And so, is your argument that THHN cable is inherently disclosed in meta?

[00:27:16] Speaker 00:
Is that your argument?

[00:27:17] Speaker 03:
No, that was not my argument.

[00:27:19] Speaker 03:
But you asked whether a prior reference had to have all of it in there.

[00:27:22] Speaker 03:
And I said, no, the cases clearly say that they don't.

[00:27:26] Speaker 03:
If it inherently discloses to a person of skill in the argument.

[00:27:29] Speaker 00:
OK, but if the only example of when something can actually be found to anticipate despite not disclosing an element is when that element is nonetheless inherently present, and you're admitting that's not your case.

[00:27:42] Speaker 00:
I don't understand.

[00:27:44] Speaker 03:
We cite the cases in here that say that, for example, in right half, which says that a prior art reference can anticipate as long as it's closest to the prior art for all that it discloses to a person who's doing the art.

[00:27:58] Speaker 03:
Here, I don't really think it's a close case.

[00:28:01] Speaker 03:
Unless you're willing to look at the letters T-H-H-N and require the reference to have the letters T-H-H-N in it.

[00:28:08] Speaker 03:
The claim says that THHN is defined as something comprising a conductor core and an outer sheath of nylon.

[00:28:14] Speaker 03:
That is exactly what is taught by the prior reference.

[00:28:25] Speaker 02:
Anything further?

[00:28:26] Speaker 03:
I don't want you to talk about waiver even though you've reasoned by it.

[00:28:30] Speaker 03:
I'd like to talk about waiver two.

[00:28:33] Speaker 03:
The idea that they argued for the permeating or migrating argument below is facially not reasonable.

[00:28:40] Speaker 03:
Their briefs in the community board below don't even use the words permeating or migrating.

[00:28:44] Speaker 03:
They're saying they made a different argument and they didn't have to make permeating or migrating, so they didn't, but they get to raise a fee.

[00:28:50] Speaker 03:
That's clearly wrong.

[00:28:52] Speaker 03:
If you look at their brief below,

[00:28:57] Speaker 03:
I go to the same page as the council did, starting at A2189.

[00:29:01] Speaker 03:
They made two arguments, one of which has two sub-arguments.

[00:29:10] Speaker 03:
The first argument is that MEDA is directed at the use of siloxanes as processing aids with a focus on application to films.

[00:29:19] Speaker 03:
Helpfully, on page 2189, they even say first.

[00:29:22] Speaker 03:
That's the first argument.

[00:29:24] Speaker 03:
Then, on page 2190, they follow with their second argument.

[00:29:28] Speaker 03:
Second, there is no factual evidence showing that the specifically blended siloxane is made that does more than affect the coefficient of friction of a raw material in a film.

[00:29:38] Speaker 03:
Then they, over the next several pages, talk about sub-arguments to that second argument.

[00:29:43] Speaker 03:
One is based on the Declaration of Critics Stats, and one that's based on the Declaration of William Nurtle.

[00:29:51] Speaker 03:
If you look at the board's decision, that's exactly the way that the board read their brief as well.

[00:29:58] Speaker 03:
You can see that on pages of the record A9 through A13.

[00:30:07] Speaker 03:
The board first lays out its factual basis for finding a claim anticipated on A9 and A10.

[00:30:14] Speaker 03:
Then it deals with the four exact arguments in their brief in turn, helpfully labeling them first, second, third, and fourth over the pages 8, 10 through 12.

[00:30:29] Speaker 03:
I also want to deal finally with the thing I was going to start with, which is whether the board made a legal error.

[00:30:36] Speaker 03:
Council has consistently asserted that they made a legal error by simply assuming that THHN was in the

[00:30:45] Speaker 03:
preamble of the Jepson style claim and therefore was admitted in the art.

[00:30:49] Speaker 03:
That is true as a matter of law and it is the first thing the board says but that is not what the board actually relies on.

[00:30:57] Speaker 03:
The board recites that and then goes on to actually examine META and look for reasons why it might anticipate and you can see there are reasons that start on A9 and go all the way down to A10.

[00:31:12] Speaker 03:
Mata discloses, I'm reading the third to the last line of A9, Mata discloses exactly the same method steps, material compositions, and products as those recited in claims 1 through 15 of the 024 patents, and thus the properties of the product must be explicitly or inherently the same, and so forth.

[00:31:30] Speaker 03:
So they didn't simply rely on the fact that it was recited in the preamble of the Jepson claims, which is the legal argument that cancer was making.

[00:31:39] Speaker 03:
they actually went through and analyzed it and adopted the examiner's reasoning.

[00:31:43] Speaker 03:
So he is wrong that they made that error of law and so he has to show that the error of fact is not supported by substantial evidence.

[00:31:53] Speaker 00:
Do you think they adopted the examiner's reasoning in total or do you think that they deviated and inserted some of their own or some different reasoning with regard to meta?

[00:32:05] Speaker 03:
I haven't done a detailed examination of whether they adopted the examiner's reasoning in a wholesale or not.

[00:32:11] Speaker 00:
Because on page A9, which is page 8 of that opinion, they describe what the examiner found and one of the examiner's findings includes a quote about meta describing the limitation and then goes on to say THHN cable.

[00:32:29] Speaker 00:
And so the examiner seems to have potentially found that the meta-reference discloses THHN cable.

[00:32:39] Speaker 00:
I don't know that the board

[00:32:41] Speaker 00:
actually expressly said that and that's why I'm wondering do you think they nonetheless adopted the examiner's finding that this reference discloses THHN cable?

[00:32:51] Speaker 03:
I agree with you that's not 100% clear.

[00:32:53] Speaker 03:
The board gives its own reasoning but then twice says the examiner's determination that the claims are anticipated is supported by the preponderance of evidence.

[00:33:02] Speaker 03:
So I would say they adopted it and then reiterated the evidence if they found persuasive whether or not it was exactly what the examiner down below said.

[00:33:10] Speaker 03:
Before you sit down, I just want to give you a chance to say how your cross appeal would alter Ciro's legal status, given the PTAB found 1 to 15 anticipated.

[00:33:26] Speaker 03:
Yes.

[00:33:26] Speaker 03:
If you find that the claims are anticipated, isn't it?

[00:33:29] Speaker 03:
If you don't, there's another reason that we should affirm finding that the patent is invalid.

[00:33:35] Speaker 03:
Whether you treat it as a cross appeal or simply another reason to support that decision.

[00:33:40] Speaker 02:
Thank you.

[00:33:41] Speaker 02:
Mr. Steadman, Mr. Bradley has two minutes of a bottle, if he needs it.

[00:33:49] Speaker 01:
Judge Moore, addressing the court, but addressing it in a comment, Your Honor, may the examiner did not find that THHN table was disclosed by Metta.

[00:34:00] Speaker 01:
On A1625, the examiner said, quote,

[00:34:04] Speaker 01:
Note, the claim to THHN construction is taken as conventional and known in the art, since the claim is written in Jepson's format.

[00:34:12] Speaker 01:
The board did the same thing, and that's wrong.

[00:34:15] Speaker 01:
Metta does not anywhere disclose THHN, and the board errs a matter of law by combining the supposed admitted prior art with the disclosures in Metta.

[00:34:27] Speaker 01:
That's an error of law.

[00:34:28] Speaker 01:
It's not entitled to deference, and it's wrong.

[00:34:30] Speaker 01:
Here, there was no waiver.

[00:34:35] Speaker 01:
Southwire presented the same concept as is presented here.

[00:34:39] Speaker 01:
Southwire said all along, metadata does not teach anything pertinent about cables, about polling forces, about THHN.

[00:34:47] Speaker 01:
It said that time and time again.

[00:34:50] Speaker 01:
And it's at least the same concept, and that's sufficient under the Harris case.

[00:34:54] Speaker 01:
Also, this court has discretion to address an issue.

[00:34:57] Speaker 01:
Even if you think it may or may not have been waived, it was a close call, the court has discretion

[00:35:03] Speaker 01:
for errors that involve purely legal questions for which the resolution is clear.

[00:35:07] Speaker 01:
Here it is very clear that anticipation cannot lie when you have a combination of admitted prior art with what meant it discloses.

[00:35:16] Speaker 01:
That is an error of law, and it's wrong.

[00:35:18] Speaker 01:
And this court can, even if it has said that it was waived, which we think is wrong, it still has discretion when you hear that.

[00:35:25] Speaker 01:
And that's the interactive gift case says that, and some others do as well.

[00:35:30] Speaker 01:
Going back to Mr.

[00:35:33] Speaker 01:
Steadman's comments about what meta discloses, it does not disclose THHN cable.

[00:35:39] Speaker 01:
The next money indecision requires that the disclosure in meta be arranged as in the claim that's being anticipated.

[00:35:47] Speaker 01:
The mention of cable in the context of polyolefin is not a disclosure for purposes of anticipation of a nylon sheath cable, a THHN cable, a seated amount of time.

[00:36:02] Speaker 02:
It is.

[00:36:02] Speaker 01:
You can finish your sentence.

[00:36:09] Speaker 01:
to a nylon cable, if we even assume Metta says that, does not anticipate THHN.

[00:36:15] Speaker 01:
In Roe versus Rohr, a generic disclosure to a balloon catheter did not disclose for anticipation a balloon angioplasty catheter.

[00:36:29] Speaker 01:
Thank you.

[00:36:30] Speaker 02:
Thank you, Mr. Bradley.

[00:36:31] Speaker 02:
We appreciate your observing the lights, and we'll take the case on revisement.