[00:00:24] Speaker 04:
Okay, our next case this morning is number 14, 1716 SPSSK Corp.

[00:00:31] Speaker 04:
v. Penter-Saddamov.

[00:00:34] Speaker 04:
Mr. Pataglia.

[00:00:36] Speaker 02:
Thank you and may it please the Court.

[00:00:39] Speaker 02:
The single most important and usually the positive source for construing

[00:00:43] Speaker 02:
The claim term scope and meaning is, of course, the patent specification.

[00:00:48] Speaker 02:
And as this court has repeatedly held, it is error to place undue emphasis on or otherwise elevate extrinsic dictionary sources over the specification.

[00:01:00] Speaker 02:
But despite that principle, the board here in reversing the examiner's decision as to 52 claims based on three claim terms did just that.

[00:01:10] Speaker 02:
Its sua sponte relied on extrinsic handbook

[00:01:13] Speaker 02:
or online dictionary sources to arrive at a construction that is divorced from the specification itself and as a result failed to apply these terms broadest reasonable interpretation and thus erred in reversing the examiner's rejection based on those terms.

[00:01:30] Speaker 02:
With respect to the term axial seal, the board as I indicated

[00:01:36] Speaker 02:
started off with a handbook dictionary source that no party had ever cited, or the examiner had never cited, and used that as the ordinary source, or excuse me, the ordinary usage, and then merely cited just one portion of the specification that doesn't speak to how a seal is formed.

[00:01:54] Speaker 03:
And it concluded based on that.

[00:01:56] Speaker 03:
If anything, the dictionary definition

[00:01:59] Speaker 03:
confirm what would be the ordinary meaning of the word seal, and it's got to be something more than a connection, correct?

[00:02:08] Speaker 02:
Not in this context, Your Honor, because as the specification itself makes repeatedly clear from the beginning of the patent and throughout, and as the parties essentially agree, the specification repeatedly teaches that you can form a seal in this context by having the three valve elements

[00:02:25] Speaker 02:
come into abutment or move into abutment or abut each other.

[00:02:29] Speaker 02:
In other words, they're joined to one another and shown as to be sufficient by being in such abutment.

[00:02:36] Speaker 02:
And it further shows, contrary to the board's construction and the way it applied this term, that you do have leaps or leakage in such fields in this context.

[00:02:48] Speaker 02:
So that all speaks to the conclusion that the specification here

[00:02:51] Speaker 02:
is inconsistent with the board construction that said you can't have a seal when the three valve elements are shown to be so adjoined or abutted to one other as to be connected.

[00:03:04] Speaker 04:
It seems to me that your real complaint here is that the board didn't properly interpret hosakawa.

[00:03:11] Speaker 04:
That is, with respect to two of the issues put aside, is about

[00:03:16] Speaker 04:
And, you know, you didn't put in any actual affidavit as to what Hazakawa disclosed, and your brief is asking us to sit there and look at these figures with respect to Hazakawa and the patent and to compare them, and we're not.

[00:03:35] Speaker 04:
in a position to do that.

[00:03:37] Speaker 04:
It's very difficult to take those figures.

[00:03:41] Speaker 04:
And it strikes me that there's not really a claim construction issue here, but an issue of what Hazekawa discloses.

[00:03:49] Speaker 04:
And how are we supposed to know that without help from you in the way of expert testimony?

[00:03:56] Speaker 02:
If I can give two answers to that, Your Honor.

[00:03:58] Speaker 02:
First, the Board itself said that this issue, especially six times on

[00:04:04] Speaker 02:
three pages, A12, A13, and A17 of its opinion, that this issue turned on, quote, an issue of interpretation.

[00:04:12] Speaker 02:
And so it was referencing Hosokawa, but it said explicitly and repeatedly that the issue was one of interpretation.

[00:04:20] Speaker 02:
So it was addressing Hosekawa, but did so explicitly on the claim construction issue of whether there can be a seal when the valve elements are quote unquote connected.

[00:04:31] Speaker 02:
And it never said a thing about the specification or addressed anything in the specification that repeatedly shows having a seal formed by valve elements that are abutted.

[00:04:41] Speaker 02:
And otherwise, with respect to Hosekawa's disclosure itself,

[00:04:45] Speaker 02:
no such evidence is necessary.

[00:04:46] Speaker 02:
Hosekawa itself, and it is agreed to by the parties and found by the board, discloses these valve elements as being connected to each other.

[00:04:54] Speaker 04:
And if the court were to look at 360- The question is whether it discloses providing a seal in this aspect.

[00:05:04] Speaker 02:
And the paragraph in Hosekawa that's cited by the board, cited by both the parties on

[00:05:09] Speaker 02:
explicitly addresses how to, quote, address leakage in the valve's open position, the relevant position for an axial seal.

[00:05:17] Speaker 02:
But it doesn't disclose a seal.

[00:05:20] Speaker 02:
It doesn't use the word seal, but it describes in that paragraph on 361, line 26 through 46,

[00:05:28] Speaker 02:
the ways in which to address leakage when there's leakage.

[00:05:32] Speaker 02:
It cites leakage as the problem and then discloses that there's a hole that goes out to a drainage pipe, in other words, a leakage space, just like in the 376 patent, and then it says, in addition

[00:05:45] Speaker 02:
In other words, another reason, another way to address the problem of leakage is you have the three valve bodies in Hosokawa being raised and, quote, connected to one another as shown in figure one in the dotted line portion that everyone agrees is showing those valve bodies connected to each other.

[00:06:03] Speaker 02:
And the paragraph is explicitly addressing how

[00:06:08] Speaker 02:
deal with, prevent, control leakage in that context, and says further in that paragraph, and in this way, by using these ways to address leakage, including having connected, you ensure that the fluid on one side of the valve will quote, will never mix with fluid on the other side of the valve.

[00:06:27] Speaker 02:
So it's explicitly addressing leakage, in other words, describing a seal that can be formed, that is formed, by having these three valve bodies joined and connected to one another.

[00:06:37] Speaker 02:
to control leakage.

[00:06:39] Speaker 02:
So it's explicit on its face.

[00:06:42] Speaker 02:
And with respect to the claim construction, the emphasis that the board itself put on in deciding this issue, it ignored all the disclosures, again, agreed to by the party, that four times within the 376 specification itself, it discloses that seals do have leaks.

[00:06:58] Speaker 02:
There are leaks in it.

[00:07:00] Speaker 02:
And that's inconsistent with what the board did in applying its handbook to say that

[00:07:06] Speaker 02:
The Hostical reference doesn't prevent leakage, but even that handbook it used says a seal is something that controls or stops leakage.

[00:07:19] Speaker 02:
Well, the controls part is consistent with the specification discloses as to being sufficient to stop or address or control leakage.

[00:07:27] Speaker 02:
even though there is leakage, there can be leakage, there are just other measures to address it, like the hole in Hosokawa, like the leakage space in the patent itself.

[00:07:38] Speaker 04:
Let me ask you about the spoke wheel question, because if I understand correctly, with respect to claims 60 and on here, the basis for the failure to find anticipation is that Hosokawa didn't have a spoke wheel.

[00:07:56] Speaker 04:
Right.

[00:07:57] Speaker 04:
And now it seems to me you're saying, well, the board found Claim 20 obvious on the spoke wheel question.

[00:08:04] Speaker 04:
But you didn't raise the obviousness question.

[00:08:07] Speaker 04:
And you're saying that we should go ahead and address the obviousness question and require the board to address the obviousness question because that's necessary to be consistent with this action on Claim 20.

[00:08:19] Speaker 04:
Right?

[00:08:21] Speaker 02:
More or less.

[00:08:22] Speaker 02:
The less part, Your Honor, with respect is,

[00:08:25] Speaker 02:
We do contest in Hosokawa by agreement of the parties and what the board found does disclose a spoke wheel.

[00:08:32] Speaker 02:
There's agreement on the structure of Hosokawa and per the examiner's conclusion that this turned on claim construction.

[00:08:38] Speaker 02:
the proper claim construction.

[00:08:40] Speaker 04:
Okay, I understand.

[00:08:41] Speaker 04:
You did make that argument.

[00:08:42] Speaker 04:
It's a different argument.

[00:08:43] Speaker 04:
What I'm talking about is saying that it's inconsistent with the board's ruling on the obviousness of claim 20.

[00:08:50] Speaker 04:
That's right, Your Honor.

[00:08:52] Speaker 04:
But it doesn't seem to me that QI, press, stands for the proposition that the board is obligated to create for you a new ground of rejection, which you didn't raise.

[00:09:06] Speaker 04:
And you didn't raise the obviousness question

[00:09:08] Speaker 04:
with respect to claims 60 and so on with respect to this book, right?

[00:09:13] Speaker 02:
Essentially, essentially that's right.

[00:09:16] Speaker 02:
But if I may, very much like, in fact, probably more so than in QI press controls,

[00:09:23] Speaker 02:
We did raise that the other spoke to real claims, which are virtually identical to the claims in dispute here, 60 through 63 and 65 through 67.

[00:09:31] Speaker 02:
We did raise that those spoke to real claims are obvious over these same two references with respect to not just claim 20, but also claim 35, 48, 53.

[00:09:41] Speaker 02:
The board's decision at A18 itself references them as much.

[00:09:46] Speaker 02:
And the board, as you saw,

[00:09:48] Speaker 02:
declined to apply waiver to Sudmo when it had not made an argument challenging the combination of Hosokawa and Burmester because it had made similar arguments.

[00:10:00] Speaker 02:
We surely made at least similar arguments.

[00:10:02] Speaker 02:
We raised those two references with respect to the Spoked Wheel claims.

[00:10:06] Speaker 02:
to the board, to the examiner, and they are virtually identical.

[00:10:09] Speaker 04:
I'm not understanding.

[00:10:10] Speaker 04:
I want to make sure that I get this right.

[00:10:13] Speaker 04:
With respect to claims 60 and so on, my understanding was that you were asserting anticipation over Hosokawa, but that you didn't raise obviousness.

[00:10:22] Speaker 02:
Am I wrong about that?

[00:10:24] Speaker 02:
Obviousness with respect to those two references.

[00:10:27] Speaker 02:
That's fair to say.

[00:10:28] Speaker 02:
We noted it, but it wasn't a developed argument.

[00:10:31] Speaker 02:
It focused on anticipation.

[00:10:33] Speaker 04:
Okay.

[00:10:34] Speaker 02:
And my point on that is, your honor, is that there is an obligation on behalf of the PTO, unlike a district court, for example, to address claims that it has knowledge of, to use QI press control as a language, that it has knowledge of as being invalid, and especially where there would be inconsistent results.

[00:10:53] Speaker 02:
And these spoke wheel claims were treated as identical for all purposes by the examiner and by the board.

[00:10:59] Speaker 02:
The board's decision itself makes that clear.

[00:11:01] Speaker 02:
The only difference is that Hosokawa and Burmester were used by the board to find claim 20 invalid as obvious, but then all these other, and for that matter, you could say claim 35, 48, and 53 as obvious as well.

[00:11:16] Speaker 02:
It decided those on a different basis, the axial seal.

[00:11:19] Speaker 02:
But with respect to these 60 through 63 and 65 through 67, despite them being identical claims with those same references before the board,

[00:11:28] Speaker 02:
And in fact, those references being used to find obvious those spoked-wheel claims, it should, in these limited circumstances, have the obligation to enter a new rejection on that basis.

[00:11:39] Speaker 02:
That's consistent with duty to the public that the Patent Office owes.

[00:11:43] Speaker 02:
In this limited circumstances here, where it has knowledge and has before it the same references, and for all intents and purposes, identical claims.

[00:11:52] Speaker 02:
That's what QI Press Controls, I think, emphasizes that point.

[00:11:56] Speaker 03:
So are you saying the PTO can address all these questions without any type of argument or evidence presented by the parties?

[00:12:06] Speaker 02:
I would say, Your Honor, in the limited circumstance where you have, for all intents and purposes, identical claims with the same references,

[00:12:16] Speaker 02:
And in a circumstance where the same arguments are being made, where the claims are identical, that it put in this circumstance as an agency, as opposed to a district court, has that obligation to address claims that it finds otherwise invalid.

[00:12:32] Speaker 02:
It can't just sit there when it knows that those claims are invalid as obvious and let them stand in the face of a claim it knows to be obvious, and in this case, even held as much.

[00:12:43] Speaker 02:
which is more than even I think the circumstance was in QI press controls.

[00:12:48] Speaker 02:
So for that reason, we do respectfully request that that rejection for obviousness at the least should be applied to the board's decision here with respect to spokes wheel.

[00:13:00] Speaker 02:
And I think unless the court has further questions on axial seal, I'll address the last term movable briefly.

[00:13:09] Speaker 02:
And our construction, our analysis on that is straightforward.

[00:13:13] Speaker 02:
that the board indicated three times that it was using or applying a construction of the movable towards limitation as meaning that it had to be engaged per its application of the prior art, something that is moving or as the board said, actually moves or slides, indicating that movable required actual movement.

[00:13:36] Speaker 02:
There's an indication in between those three times the board said as much that

[00:13:41] Speaker 02:
it said movement or capable movement.

[00:13:44] Speaker 02:
But I think the context makes clear it was requiring actual movement.

[00:13:48] Speaker 02:
And that makes sense because before the patent office, Sudmo itself had argued when it was dealing with representative claims here and using representative claim 68, that it required that the claim is moved, that the flow barrier element is moved.

[00:14:05] Speaker 02:
So with that context

[00:14:07] Speaker 02:
that Submo itself was arguing an actual movement, that claim construction would be wrong as well, because now, as everybody agrees, movable means capable of movement.

[00:14:16] Speaker 02:
That's what the specification discloses as well.

[00:14:19] Speaker 02:
And the Hosokawa reference, its core disclosure here about the flow barrier element in Hosokawa, called the middle valve body, is clear that this is something, this is at 359, lines 29 to 35,

[00:14:34] Speaker 02:
It is a structure that freely slides, freely slides along the main valve stem that goes through the center of the Tosakawa valve.

[00:14:46] Speaker 02:
And with that as the core disclosure and with agreement as well that the cleaning fluid, this pressurized cleaning fluid used to clean valves flows through the bottom and would hit the bottom of the middle valve body, then it would make that

[00:15:02] Speaker 02:
a valve element that is capable of movement toward the first element.

[00:15:09] Speaker 02:
And so as a matter of plain construction and based on what Hosokawa itself discloses, the board erred in that respect as well.

[00:15:18] Speaker 02:
Okay.

[00:15:19] Speaker 02:
Thank you.

[00:15:24] Speaker 04:
Mr. Levine, is that how you pronounce it?

[00:15:27] Speaker 04:
Levine, your honor.

[00:15:27] Speaker 04:
Levine.

[00:15:28] Speaker 04:
I have a 50% chance.

[00:15:33] Speaker 04:
Address the inconsistency.

[00:15:35] Speaker 04:
Would you like seeming inconsistency between the board's treatment of claim 20 and claim 60 and so forth?

[00:15:43] Speaker 01:
Your honor, we don't see the actual inconsistency.

[00:15:48] Speaker 01:
And claim 20, the board addressed the combination of Hosekawa and Bermester 134

[00:15:53] Speaker 01:
with respect to the spoke wheel, spoke valve, or rather the integrated valve element that was disclosed in Vermaester 134.

[00:16:06] Speaker 04:
I'm not sure that I understand why it's not inconsistent.

[00:16:09] Speaker 04:
Why isn't it inconsistent?

[00:16:11] Speaker 04:
I mean, it may be consistent in the sense that with respect to one of them the issue was raised, and with respect to the other one the obviousness issue wasn't raised,

[00:16:20] Speaker 04:
But if you assume that the obviousness issue was properly raised with respect to both of them, isn't there an inconsistent result here?

[00:16:27] Speaker 01:
No, Your Honor, because Claim 60 and as well as Claim 61-63 and 65-67 recite additional limitations that are not recited in Claim 20, including two terms that are actually at issue here, namely the axial seal limitation and the limitation wearing the full barrier element

[00:16:50] Speaker 01:
is at least movable towards the first closing element when the second closing element is lifted and when cleaning fluid is applied.

[00:16:59] Speaker 04:
To the extent... What you're saying is that even if they got it wrong as to the spoke wheel element, there were these other elements which were present in Hazukiwa.

[00:17:10] Speaker 01:
I'm sorry, I wasn't clear on the question.

[00:17:12] Speaker 04:
What you're saying is that Claim 60 and so on has the same limitations, the axial seal limitations and the movable limitations as appear in the other claims which were held to be not present in Hazakawa?

[00:17:26] Speaker 01:
That's correct.

[00:17:26] Speaker 01:
Those are among the additional limitations that are recited in Claim 60-63 and 65-67.

[00:17:31] Speaker 01:
To the extent that the court is inclined to

[00:17:36] Speaker 01:
apply the combination of Hosokawa and Burmester 134 to claims 60 through 63 and 65 through 67, we submit that the court should address the merits of that combination, especially with respect to Sumo's argument that one of ordinary skill in the yard would not combine them, because the integrated well-done part that SPX is pointing to as a spoke wheel in Burmester 134 is not actually a full barrier element.

[00:18:02] Speaker 01:
If you carefully review Burmester 134,

[00:18:05] Speaker 01:
it discloses that the spoke valve or the integrated weld-in part that expressed liaison is not actually located anywhere in the valve of Burmester 134 where it could act as a flow barrier element.

[00:18:20] Speaker 01:
It actually is located at the bottom or remotely.

[00:18:24] Speaker 01:
It is explicitly disclosed as being located remotely from that area so as to not cause any flow problems.

[00:18:32] Speaker 01:
And this is explicitly disclosed at

[00:18:35] Speaker 01:
A827, A851, A853, A847, 48, A864, and A874.

[00:18:41] Speaker 01:
So, one of our additional ERT would not combine for a method 134 with Hosokawa because that integrated welding part is not designed to be a flow barrier element.

[00:19:00] Speaker 01:
And furthermore, if you combine it with Hosokawa,

[00:19:03] Speaker 01:
The result is increased flow of cleaning fluid between the closing elements of Hosokawa.

[00:19:12] Speaker 01:
Hosokawa explicitly requires that the drainage of cleaning fluid be kept to a minimum and discharged at a small amount at a time.

[00:19:22] Speaker 01:
Reason number one, the spoke valve in Burmester 134 is not designed to be a flow barrier element.

[00:19:31] Speaker 01:
And second, if it was integrated into Hosokawa, it would contradict Hosokawa's teachings and result in a device that doesn't work the way Hosokawa intends its valve to work.

[00:19:48] Speaker 01:
So there are two issues before the court today.

[00:19:52] Speaker 01:
One is the claim construction, divorce claim construction of three terms, axial seals,

[00:19:59] Speaker 01:
And the longer term, wherein the flow barrier element is at least movable towards the first closing element when the second closing element is lifted and when clean and minimum is applied.

[00:20:09] Speaker 01:
Second issue is the board's application of those constructions to the prior art, part of which we just discussed.

[00:20:17] Speaker 01:
With respect to clean construction, the legal landscape has changed somewhat since the parties moved this case.

[00:20:23] Speaker 01:
And pursuant to the Supreme Court's decision in Teva Pharmaceuticals versus Sandoz and this course,

[00:20:29] Speaker 01:
subsequent decision in Enricozo, the board's underlying factual determinations that bear on, that consider extrinsic evidence are reviewable for substantial evidence.

[00:20:43] Speaker 01:
While the ultimate claim construction is reviewed de novo, here the board made factual findings regarding the ordinary usage of the terms seal and spoke-feel.

[00:20:54] Speaker 01:
And those factual findings are supported by substantial evidence in the record.

[00:20:58] Speaker 01:
including the uh... the uh... evidence that is set forth and student laws responsive brief.

[00:21:05] Speaker 04:
But what you seem to be saying is we don't need to reach the spoke wheel issue because the board's decision to be sustained on the ground of the axial seal limitation and the movable limitation.

[00:21:19] Speaker 01:
Is that correct?

[00:21:21] Speaker 01:
The board's decision should be should be affirmed on the basis of those two terms in addition to

[00:21:27] Speaker 01:
the fact that, in addition to the reasons, the additional reason that one of ordinary people in the yard would not combine Hosekawa and Bermes of 134 to reach the Spokefield limitation.

[00:21:40] Speaker 04:
Where do I find Claim 60 in the record here?

[00:21:43] Speaker 01:
Claim 60 is appended to, things are appended to Sumo's responsive brief.

[00:22:01] Speaker 00:
This is on pages A, 744 through 745.

[00:22:27] Speaker 01:
So with respect, returning to the board's claim construction, with respect to its reliance on dictionary definitions, I just want to turn the court to its decision in Phillips, where it states that a judge who encounters a claim term while reading the patent might consult a general purpose or specialized dictionary to begin to understand the meaning of the term before reviewing the remainder of the patent to determine how the patentee has used this term.

[00:22:53] Speaker 01:
Now here, in construing the term seal, the board

[00:22:57] Speaker 01:
Check the specification to see if it contained a formal definition of that term.

[00:23:02] Speaker 01:
Then consult it, mark standard handbook for mechanical engineers to determine the ordinary usage of the term seal.

[00:23:10] Speaker 01:
Following that, according to that handbook, the ordinary uses of the term seal denotes materials used to control or stop leakage of fluids through mechanical clearances when fluids are under pressure.

[00:23:25] Speaker 01:
The board then went back to the specification and confirmed that the ordinary usage of the term seal is consistent with the usage of that term in the 376 pattern.

[00:23:35] Speaker 01:
As an example of that consistency, the board identified a part of the specification discussing that a seal is formed when the sealant elements of one of the closing elements abut in a seal-forming fashion with their seats.

[00:23:52] Speaker 04:
Baron claims 60 doses of axial seal limitation appear.

[00:23:59] Speaker 04:
I mean, I see the word axial, but it seems to be different from the other claims.

[00:24:04] Speaker 04:
And where does the movable limitation appear?

[00:24:21] Speaker 01:
Claim 60, the actual seal limitation does not appear in Claim 60.

[00:24:25] Speaker 01:
It appears in Claims 65.

[00:24:29] Speaker 04:
Well, let's stick with Claim 60 because what I was asking, I thought you were saying that we didn't need to reach the spoke wheel element or decision because

[00:24:43] Speaker 04:
Axial seal is still present.

[00:24:45] Speaker 04:
I don't see, so you're saying now axial seal is not present in claim 60?

[00:24:49] Speaker 01:
Just to clarify what I said before, the axial seal, we don't need to reach the spoke field.

[00:24:55] Speaker 01:
We don't need to address it because there are additional limitations in 60 through 63 and 65 through 67, including in some claims the axial seal limitation.

[00:25:06] Speaker 04:
Well, stick me with claim 60.

[00:25:08] Speaker 04:
Okay.

[00:25:08] Speaker 04:
Okay.

[00:25:09] Speaker 04:
You say the axial seal limitation is not in claim 60.

[00:25:12] Speaker 04:
Is the movable limitation in Claim 60?

[00:25:15] Speaker 04:
No, Your Honor.

[00:25:16] Speaker 04:
Okay, so we do need to reach the spoke wheel issue.

[00:25:20] Speaker 04:
And I come back to the question of why did the Board reach a different decision about spoke wheel in Claim 20 and Claim 60?

[00:25:32] Speaker 01:
Well, the Board reached that decision because, in the Board's view,

[00:25:36] Speaker 01:
the integrated relevant elements of Burmester 134 met the spoke wheel limitation of Claim 20.

[00:25:46] Speaker 01:
In Claim 60, the differences between Claims 20 and Claim 60 includes the additional requirement that the spoke wheel has a plurality of spokes with openness there between at least partially defined in satellite space.

[00:25:59] Speaker 01:
That is not present in Claim 20, and it was not addressed by the board.

[00:26:04] Speaker 01:
But, and as I mentioned a few minutes ago, one of the ordinances in the yard would not have combined Hosokawa with Burmese 134 because the integrated welding part that is being relied on as it's both real does not actually function.

[00:26:21] Speaker 01:
It's not designed to be a flow barrier element.

[00:26:23] Speaker 01:
It does not function as a flow barrier element.

[00:26:26] Speaker 01:
And if it's integrated into Hosokawa, it would result in increased wood flow, which is directly contradictory to what Hosokawa teaches.

[00:26:36] Speaker 04:
Well, suppose that the limitations in 20 and 60 were exactly the same.

[00:26:42] Speaker 04:
Would the board be obligated to raise the issue of Suis Fonte with respect to Claim 60 or not?

[00:26:51] Speaker 01:
No, Your Honor, because Claim 60 was never addressed as being obvious based on a combination of Tulsa Cowan and Burmester 134.

[00:27:02] Speaker 01:
And so what was Claim 20 challenged on that ground?

[00:27:06] Speaker 01:
Yes, Your Honor.

[00:27:08] Speaker 01:
Yes, Your Honor.

[00:27:10] Speaker 01:
But not same 60, nor the rest of the range, 60 through 63, or 65 through 67.

[00:27:16] Speaker 01:
That argument was never addressed by SPX in any of the proceedings before the Patent Trial Appeal Board.

[00:27:21] Speaker 01:
And as Your Honor's noticed, SPX said that they noted the 103 arguments, but the part of the brief that they relied on explicitly and only discusses anticipation, and it nowhere mentions Bermester 134.

[00:27:35] Speaker 01:
So they're essentially asking the board, there's essentially an argument that the board should have, in synopsis of all the 50 plus claims here, searched for additional grounds of rejection for claims 62, 63, and 65 through 67.

[00:27:52] Speaker 03:
Well, your opponent said that you should have done that without any argument or any challenge.

[00:27:57] Speaker 03:
What's the response to that?

[00:27:59] Speaker 03:
I'm sorry, I didn't hear the question.

[00:28:00] Speaker 03:
Your opponent said that you should have done that even without them raising it or arguing

[00:28:05] Speaker 03:
for example, that their claim 60 was obvious.

[00:28:11] Speaker 03:
Do you have that type of authority or responsibility?

[00:28:15] Speaker 00:
Does this court have that type of authority?

[00:28:17] Speaker 03:
Do you?

[00:28:18] Speaker 03:
Does the PTO?

[00:28:19] Speaker 01:
Does the PTO have the authority to come up with a new browser projection that was not raised by SPX?

[00:28:29] Speaker 01:
Is that the question?

[00:28:31] Speaker 01:
The board, my understanding of the rule is that the board may present a new ground of rejection, although it's not required to do so in every instance.

[00:28:45] Speaker 01:
In that respect, I think the situation is much different from what SPX describes in QI controls.

[00:28:58] Speaker 01:
There are differences between the claims here that were not addressed by the board's analysis of Claim 20.

[00:29:03] Speaker 01:
And two, Claim 20 on one hand and Claim 60-63 and 65-67 were not rejected as being obvious on similar or the same prior art effect.

[00:29:15] Speaker 03:
So if an argument that Claim 60 of Godness is never raised before the board, should we deem that to be waived?

[00:29:23] Speaker 01:
if it was never raised before the board, it should be waived.

[00:29:26] Speaker 04:
Well, let me tell you what the problem is with that.

[00:29:29] Speaker 04:
If you look at page 21 of the appendix, apparently the same thing was true with respect to claim 20, that they didn't argue that rejection.

[00:29:39] Speaker 04:
And the board says, our review of the rejection of claim 20 under 103A is complicated by the fact that the Panton owner has not argued the rejection.

[00:29:49] Speaker 04:
While this failure may be deemed to constitute a waiver,

[00:29:53] Speaker 04:
blah, blah, blah, and they still go ahead and reject it, reject claim 20.

[00:29:58] Speaker 01:
Yes, Your Honor, but the difference here is that the board was aware, the board was aware of the actual rejection.

[00:30:03] Speaker 01:
The rejection was on the record.

[00:30:05] Speaker 01:
There was no rejection on the record for claim 60-63 and 65-67 based on that combination.

[00:30:10] Speaker 04:
You mean because in the case of claim 20, the examiner had rejected it.

[00:30:14] Speaker 01:
Yes, Your Honor.

[00:30:16] Speaker 01:
But the examiner had never made the rejection for claim 60-63 and 65-67.

[00:30:21] Speaker 01:
it was no it's nowhere on the record.

[00:30:25] Speaker 00:
All right if you're on you if you're on them thank thank you I'm just a little bit of the board's decision should be.

[00:30:34] Speaker 00:
Thank you.

[00:30:42] Speaker 04:
Mr. Patagonia will give you a minute here.

[00:30:44] Speaker 02:
Okay, thank you your honor.

[00:30:45] Speaker 02:
If I could just quickly clarify with respect to this argument now that it can be resolved without reaching all the issues.

[00:30:52] Speaker 02:
That's incorrect because the board itself correctly determined that these three issues for each of the three terms were decided based on

[00:31:02] Speaker 02:
Quote, the representative claims I referred to earlier, representative claims to decide the outcome for the claims that were housed under each one.

[00:31:10] Speaker 02:
So with respect to axial seal, it identifies the 38 claims that rose or fell on a determination using claim 21 as the representative claim.

[00:31:20] Speaker 02:
Same with the other limitations.

[00:31:23] Speaker 02:
So this court does have to reach all three to address all 52 claims because

[00:31:28] Speaker 02:
All of those claims were categorized by the three terms.

[00:31:32] Speaker 02:
There are 38 claims with respect to axial seal, determined on the basis of representative claim 21.

[00:31:38] Speaker 02:
Seven claims with respect to spoke wheel, determined with respect to representative claim 60.

[00:31:46] Speaker 02:
And another seven claims decided on the basis of movable, all housed and categorized for deciding those seven claims.

[00:31:54] Speaker 02:
And this court is held in Hyatt v. Dudas and other precedents.

[00:31:57] Speaker 02:
that you can determine invalidity based on representative claims when they are so grouped.