[00:00:00] Speaker 01:
We'll hear from Mr. Brock when he is ready.

[00:00:47] Speaker 02:
Good morning.

[00:00:49] Speaker 02:
Good morning.

[00:00:50] Speaker 02:
May it please the Court?

[00:00:52] Speaker 02:
Black and Decker submits that the Board's decision holding claims 16 and 17 of the Patent and Suit, unpatentable under Section 103, in view of MAC, is legally improper not only because it finds that MAC is analogous art, which is against the clear preponderance of evidence to the contrary,

[00:01:15] Speaker 02:
but also because the board completely fails to explain why a person of ordinary skill in the art would have modified MAC to arrive at the claimed invention.

[00:01:27] Speaker 01:
Well, that's an interesting question, but surely it's analogous art, isn't it?

[00:01:30] Speaker 01:
You're talking about trimmers.

[00:01:33] Speaker 01:
Well, but hair trimmers, of course, are completely different from... We've been told from the Supreme Court and KSR that relevant art is broader than was

[00:01:46] Speaker 01:
thought before, and you're talking about trimming.

[00:01:51] Speaker 02:
I don't believe that the Supreme Court in KSR said that we should expand the scope of relevant art.

[00:01:57] Speaker 02:
The issue in KSR was whether or not the relevant art was properly combinable in an obvious manner.

[00:02:05] Speaker 02:
In other words, that was a motivation case.

[00:02:07] Speaker 02:
All of the prior art

[00:02:09] Speaker 02:
under consideration by the Supreme Court in that case was not only directly related to automotive braking systems, they were directly related to adjustable pedals for automotive braking systems.

[00:02:20] Speaker 02:
So there was no question that all of the art that the Supreme Court was considering in that case was analogous art.

[00:02:29] Speaker 00:
What we have here though is your 417 patent in the specification specifically states that your invention is

[00:02:39] Speaker 00:
applicable, it should be deemed applicable to any small electric tool or appliance that includes a small electric motor.

[00:02:48] Speaker 00:
That would seem to encompass what Mack is talking about with its small electric appliance which includes a small electric motor.

[00:02:58] Speaker 02:
Well again, because that's using the interpretation of the word small as to mean anything that's not big.

[00:03:04] Speaker 02:
In fact, as

[00:03:06] Speaker 00:
The board gets to read these references as fact findings and then we must defer to those fact findings for substantial evidence.

[00:03:18] Speaker 00:
And if they read small to include handheld electrical appliances, why is that an unreasonable reading in light of the express statement in the specification?

[00:03:31] Speaker 02:
Well, first of all, that statement in the specification, as we indicated in our brief, is a statement of the applicability of the teachings of the invention.

[00:03:40] Speaker 02:
So from that perspective, you're talking about, now that you know what the solution to the problem is, the applicability of those teachings apply to, and they use the word small appliances.

[00:03:52] Speaker 02:
In that context, as stated by our expert witness,

[00:03:57] Speaker 02:
Small refers to the fact that in tools of this type, motors are characterized as being small.

[00:04:04] Speaker 02:
In the universe of motors, motors in outdoor power tools are considered to be small, as opposed to large motors in appliances such as washing machines and dryers.

[00:04:16] Speaker 02:
That doesn't include a miniature DC motor, which is an order of magnitude smaller than the motor that you'd use in an outdoor power tool.

[00:04:25] Speaker 02:
And again, that's a statement

[00:04:27] Speaker 02:
that it's important to understand how one of ordinary skill in the art would interpret that statement.

[00:04:33] Speaker 02:
And the only evidence of record is that one of ordinary skill in the art would not understand that statement to include a device such as the hair trimmer in MAC.

[00:04:45] Speaker 02:
But beyond the point about whether or not MAC is analogous art, which as I've indicated, we don't believe it is, more importantly,

[00:04:56] Speaker 02:
The board has completely failed to explain why a person of ordinary skill in the art would have modified MAC to arrive at the claimed invention.

[00:05:05] Speaker 02:
Instead, as to the critical distinctions between the MAC reference and the limitations in claim 16, such as the requirement that the motor be fixedly secured to the mounting plate, the board simply concludes that MAC suggests the limitation.

[00:05:20] Speaker 02:
Citing a passage which states, and I quote,

[00:05:23] Speaker 02:
The motor is positioned and supported against rotation by the snug fit of the bearing portion in the aperture," close quote.

[00:05:32] Speaker 02:
How this statement suggests a fixedly secured limitation, the board doesn't explain.

[00:05:37] Speaker 00:
Well, maybe what the board was trying to say was Mac already contemplates that you don't want the motor to be spinning during the operation of the device.

[00:05:49] Speaker 00:
And so that's why Mac

[00:05:53] Speaker 00:
discloses the use of a yoke and the flat section in order to keep the motor from spinning.

[00:06:01] Speaker 00:
And so the idea is, well, what are some other ways that we know that are well-known and conventional to keep the motor from spinning?

[00:06:08] Speaker 00:
Aha, screws would be a way to do it.

[00:06:12] Speaker 00:
So assuming that's what the board was getting at, then why is that wrong?

[00:06:19] Speaker 02:
Well, first of all, the use of the yoke

[00:06:23] Speaker 02:
to keep the stator of the motor from turning when the motor is energized, that of course is wholly conventional.

[00:06:29] Speaker 02:
You have to support the stator relative to the housing so that just the armature turns rather than the stator.

[00:06:36] Speaker 02:
The reason why they use a yoke is because that's the simplest thing to use in that application in order to achieve that function.

[00:06:44] Speaker 02:
There's nothing in MAC that suggests that you would take the extra steps to now fixedly secure it

[00:06:51] Speaker 02:
to that plate portion of the gear casing because it serves no functional benefit and it significantly increases the cost and the complexity of assembling the device.

[00:07:04] Speaker 02:
A person of ordinary skill in the art, as the evidence of records supports, would not do that for no benefit.

[00:07:13] Speaker 02:
There's no benefit to be gained by fixedly securing the motor to the plate portion of the gear casing and Mac.

[00:07:20] Speaker 02:
that simple spring clip is good enough.

[00:07:24] Speaker 02:
And it's much simpler to install in a production process.

[00:07:28] Speaker 00:
Do you think a motivation to combine or motivation to modify always must have an extra additional benefit attached to it?

[00:07:38] Speaker 00:
I guess my question is, what if it was just known in the art that there were many equivalent ways of doing this attachment?

[00:07:48] Speaker 00:
A lot of different ways.

[00:07:50] Speaker 00:
Would they all be obvious or must there be some kind of extra special advantage using a particular alternative on top of the one that's disclosed in the prior art reference for there to be a motivation?

[00:08:06] Speaker 02:
There has to be an advantage when it's going to add to the cost of the manufacturer of that product.

[00:08:14] Speaker 02:
because that's a significant disadvantage.

[00:08:17] Speaker 02:
So therefore to suggest that somebody of ordinary skill in the art would have done that and incur that disadvantage for no offsetting benefit is improper.

[00:08:27] Speaker 02:
And that's exactly what the evidence in this case supports.

[00:08:32] Speaker 02:
The spring clip in that application was good enough.

[00:08:36] Speaker 02:
And it would significantly increase the cost of assembling, not only the time, but the cost of assembling that part if you had to deal with, recognize these would be very tiny screws you need.

[00:08:47] Speaker 02:
You're talking about a motor in this device that is no bigger than the size of your thumb.

[00:08:53] Speaker 00:
So imagine- I guess the whole point is in this industry, it's well established that we're trying to reduce the number of components as much as possible.

[00:09:00] Speaker 00:
We're trying to ease the complexity of assembly as well as reduce the cost

[00:09:06] Speaker 00:
the profit margins are super thin, so we're doing everything we can to simplify, simplify.

[00:09:12] Speaker 00:
And why would we take an already simple, elegant solution of the yoke and then rip that out and now have to deal with a bunch of screws?

[00:09:23] Speaker 02:
For no functional benefit in that application, that's exactly right.

[00:09:27] Speaker 02:
That's exactly right.

[00:09:28] Speaker 02:
And of course, that's one of the significant reasons why the present invention is unobvious, because looking at where the inventors were starting from, as demonstrated in that Laverick patent, that is an elegant design.

[00:09:41] Speaker 02:
There are no additional parts there.

[00:09:43] Speaker 02:
Imagine how easy it is to assemble that.

[00:09:46] Speaker 02:
You just simply take the motor and you place it into one half of the housing and then you close it with the other half, and now it is completely supported

[00:09:55] Speaker 02:
at all those various points that it needs to, to accommodate the kind of working environment that's going to be operating it.

[00:10:01] Speaker 02:
That was a beautiful design.

[00:10:04] Speaker 02:
And that's why it wasn't obvious to one of ordinary skill in the art why you would move away from that design to save cost, because you are.

[00:10:13] Speaker 02:
It goes against what any person of ordinary skill in the art would normally do.

[00:10:18] Speaker 02:
They wouldn't think of adding cost and complexity to actually take cost out of a product.

[00:10:23] Speaker 00:
Well, I guess the idea would be, again, there's so many different contact points in laverick that there's ribs, there's flanges, there's all kinds of support components.

[00:10:37] Speaker 00:
All of that could be removed, which would achieve the goal of reducing complexity in the manufacturing of the housing.

[00:10:48] Speaker 02:
Yeah, but remember, all those ribs are formed during the molding process.

[00:10:53] Speaker 02:
There's no extra steps associated with the molding process in order to achieve those ribs.

[00:10:59] Speaker 02:
Once you have created the tooling to do that, it happens during the molding process.

[00:11:05] Speaker 02:
What was critically required in that molding process, however, because those ribs have to have very, very tight tolerances, all those various features in labric, you need to use a plastic material that is very, very temperature stable.

[00:11:20] Speaker 02:
Because you're looking at surfaces that have to hold tolerances within a few thousandths of an inch.

[00:11:28] Speaker 02:
But nonetheless, it makes it very simple to assemble that product.

[00:11:34] Speaker 02:
That's one of the significant advantages of the present invention, was the recognition that we can get away with using cheap plastic if the only critical dimension we have is so small that even if it shrinks by 5%,

[00:11:49] Speaker 02:
It's still within the critical dimensions, the critical tolerances that we need.

[00:11:54] Speaker 02:
That's what enables the use of that very simple, that very cheap plastic material, which takes out the cost and more than makes up for the fact that we've now added some additional components.

[00:12:06] Speaker 02:
It is so contrary to what one of ordinary skill in the art would normally do.

[00:12:10] Speaker 01:
Mr. Brock, do you want to save the rest of your time for a moment as you request it?

[00:12:16] Speaker 01:
Mr. Eichenberger?

[00:12:21] Speaker 01:
You are yielding two minutes of your time to the patent office, Ms.

[00:12:25] Speaker 01:
Craven.

[00:12:26] Speaker 01:
And of course, you want to save a couple of minutes.

[00:12:28] Speaker 03:
Yes, Your Honor, two minutes.

[00:12:29] Speaker 01:
If there's rebuttal or cross-appeal, if there's something to be rebutted.

[00:12:34] Speaker 03:
OK.

[00:12:35] Speaker 03:
Thank you, Your Honor.

[00:12:37] Speaker 03:
May it please the court?

[00:12:39] Speaker 03:
In its final written decision, the board did a lot of things and got it right with regard to finding claims 16 and 17 obvious over MAC.

[00:12:47] Speaker 03:
There was some questioning in appellant's opening regarding whether or not MAC is analogous art.

[00:12:52] Speaker 03:
And in fact, the board did get it right.

[00:12:54] Speaker 03:
It is obvious.

[00:12:55] Speaker 03:
It is analogous art for several independent reasons.

[00:12:58] Speaker 03:
First and foremost, as Your Honor pointed to the 417 patent itself.

[00:13:04] Speaker 00:
I'm more troubled by the board's obviousness and analysis on the motivation to modify MAC.

[00:13:12] Speaker 00:
That analysis looked particularly thin, arguably conclusory.

[00:13:17] Speaker 00:
in just saying without much support that Mac itself suggests this claimed invention.

[00:13:26] Speaker 00:
And at least for me, when I read Mac, I don't see any suggestion of replacing the yoke with screws when the whole point is to try to reduce the number of component parts and make it as simple and cheap as possible to make this trimmer.

[00:13:46] Speaker 00:
assemble the trimmer.

[00:13:49] Speaker 03:
Your honor, with all due respect, I think there is quite a bit of teaching in MAC and the board cited to that.

[00:13:56] Speaker 03:
For instance, MAC deals itself with not just the concept of reducing costs.

[00:14:04] Speaker 03:
It has its goals minimizing complexity and also keeping things quiet.

[00:14:09] Speaker 03:
And what the board was referring to in the decision

[00:14:15] Speaker 03:
with regard to its findings about the motivation is that it is addressing the same problem, some of the same problems that the 417 patent addressed.

[00:14:29] Speaker 05:
Why don't you show me in MAC, I have it here in front of me, gloriously through only three pages long, so why don't you show me in MAC what language you think would satisfy that motivation to replace the yoke with the screws.

[00:14:46] Speaker 03:
Okay.

[00:14:46] Speaker 05:
What language in Mac should I focus on?

[00:14:48] Speaker 03:
Well, so the language in Mac, if I could, needs to be kept in mind with regard to what the state of the art is and what the ordinary skill level is.

[00:14:57] Speaker 03:
So the technology involved here is a very simple mechanical device.

[00:15:01] Speaker 03:
It is a motor fixedly secured to a plate that resides in the groove of a housing.

[00:15:09] Speaker 03:
And so when a person with ordinary skill in the art, it's important to note that the obviousness analysis is directed to that person, not the patentee itself.

[00:15:20] Speaker 05:
Please get to your answer to my question.

[00:15:22] Speaker 05:
The board said MAC suggests this.

[00:15:26] Speaker 05:
The board didn't say one of skill in the art would, based on common sense, be able to do this.

[00:15:31] Speaker 05:
The board's only conclusion was that MAC suggested it.

[00:15:35] Speaker 05:
So I want you to show me precisely where in MAC MAC suggested.

[00:15:40] Speaker 03:
Okay.

[00:15:41] Speaker 03:
So we're looking in column one at the first.

[00:15:46] Speaker 03:
Column one, line 17 through 21 and 26 through 34.

[00:15:53] Speaker 03:
Both of those sections talk about the desire to fix certain things in the prior art, one of which is being noise

[00:16:04] Speaker 03:
From high motors?

[00:16:05] Speaker 05:
You're talking in too great a generalization once again.

[00:16:09] Speaker 05:
Column 1, you said line 17.

[00:16:13] Speaker 05:
Are you talking about the word that begins disadvantageously?

[00:16:16] Speaker 03:
Yes, I'm sorry, that's 19.

[00:16:17] Speaker 05:
You're right.

[00:16:18] Speaker 05:
Okay.

[00:16:18] Speaker 05:
Disadvantageously, as is known in the RC365 patent, when these reciprocating cutting bladges have high motor and blade speed, the noise is a deterrent to its use.

[00:16:32] Speaker 05:
Okay.

[00:16:32] Speaker 05:
So how does a recognition that a noise is problematic suggest replacing the yoke with screws?

[00:16:40] Speaker 05:
That's a very precise suggestion.

[00:16:43] Speaker 03:
I understand.

[00:16:44] Speaker 03:
And so additional, I didn't get to finish in column one.

[00:16:47] Speaker 03:
So at lines 30 through 34.

[00:16:50] Speaker 01:
Well, why don't you give us your best citation first?

[00:16:55] Speaker 03:
Okay.

[00:16:55] Speaker 03:
Well, so the best citation is that the problem that Mac is addressing.

[00:17:01] Speaker 03:
is fixing noise that is coming from inside the housing of the tremor.

[00:17:07] Speaker 03:
And so one of the things that it discusses is causing that is inappropriate contact or improper frictional contact inside the housing.

[00:17:17] Speaker 03:
And so a person of ordinary skill in the art, who in this case is a bachelor's degree in mechanical engineering, would understand that reading this and knowing that that's what you're trying to fix, what you would do is

[00:17:30] Speaker 03:
fixedly secure that motor to the plate to put that into the groove.

[00:17:35] Speaker 00:
Mack itself seems quite satisfied with using the yoke to, I don't know, harness the motor or secure the motor inside the device.

[00:17:46] Speaker 00:
And so it doesn't seem to be concerned at all with any motor noise with its in particular environment.

[00:17:56] Speaker 03:
Your Honor, the yoke was okay for this hair trimmer, and that is correct, in the fact that it is a smaller version of a small handheld device.

[00:18:07] Speaker 03:
But a person of ordinary skill in the art, when looking at MAC and no understanding what it's teaching, to move that up to a bigger motor that has higher torque,

[00:18:19] Speaker 03:
you would likely need to do something to fix at least secure that.

[00:18:24] Speaker 00:
So I guess that's what I was wondering is part of this rejection, a requirement that we are transitioning from a hair trimmer to a string trimmer, or is it just purely a question of what would one of ordinary skill in the art looking just at Mac do to Mac alone?

[00:18:47] Speaker 00:
without thinking about string trimmers at all.

[00:18:50] Speaker 00:
Because right now, as the board construed it, this claim isn't restricted to outdoor power tools.

[00:19:00] Speaker 00:
It's just any tool with these various limitations recited in the body.

[00:19:06] Speaker 00:
So now we go look at what Mac says.

[00:19:10] Speaker 00:
And you're not thinking about string trimmers anymore.

[00:19:12] Speaker 00:
You're not thinking about outdoor power tools.

[00:19:15] Speaker 00:
You're just looking at Mac

[00:19:17] Speaker 00:
in isolation and wondering what would be obvious variations of Mac alone.

[00:19:23] Speaker 03:
Correct.

[00:19:24] Speaker 00:
So in that context, now I'm wondering why would anybody try to make the assembly more complex, arguably more costly, when Mac says that's what you're supposed to get away from.

[00:19:40] Speaker 00:
That's the whole object of his invention, is to reduce cost and complexity.

[00:19:44] Speaker 00:
It does talk about noise, but

[00:19:46] Speaker 00:
It doesn't seem to give any hint that there's a problem with noise with its particular conception of using a yoke to secure the motor.

[00:19:56] Speaker 03:
So, Your Honors, I would direct your attention to column three lines 18 through 24.

[00:20:02] Speaker 03:
And that is the portion of MAC's specification that deals exactly with how the motor is fixedly secured in the MAC trimmer.

[00:20:12] Speaker 03:
And it is not just the yoke that does it here.

[00:20:15] Speaker 03:
It is the combination of the snug fit of the bearing portion.

[00:20:19] Speaker 03:
This is in figure three.

[00:20:20] Speaker 03:
27 inside the aperture, so that's the first connection.

[00:20:25] Speaker 03:
It's also tension on the yoke, as your honor mentioned.

[00:20:28] Speaker 03:
And thirdly, it's the sandwiching of the flat portion, which is the plate 45, between the inner walls 62A and 62B, which is the groove.

[00:20:38] Speaker 03:
So it's that combination of things that come directly from MAC

[00:20:43] Speaker 03:
that is the way that they dealt with it.

[00:20:45] Speaker 03:
So it was not just the yoke to prevent the types of movement that they were worried about inside the housing.

[00:20:53] Speaker 00:
Right.

[00:20:53] Speaker 00:
But we're talking about mounting the motor to the plate assembly, right?

[00:20:59] Speaker 03:
Yes.

[00:21:00] Speaker 00:
And so you're saying these are the three things that were done to do that.

[00:21:04] Speaker 03:
Yes.

[00:21:05] Speaker 03:
I am saying that that's the way a person would.

[00:21:08] Speaker 00:
But the board concluded that that

[00:21:11] Speaker 00:
arrangement does not fixedly secure the 45 flat portion and to the motor.

[00:21:18] Speaker 03:
That's correct your honor and the reason the board found that is because it improperly construed the claim term fixedly secure to prevent all relative movement and that is part of our cross appeal in that we don't believe that that is a proper claim construction of that term.

[00:21:36] Speaker 03:
In fact there were

[00:21:38] Speaker 03:
portions of the 417 patent that did discuss how things can be fixedly secured and not be, quote, rigidly coupled, which is what the board latched onto from the preferred embodiment in the 417 patent in order to come up with its claim construction of preventing all relative movement whatsoever.

[00:22:00] Speaker 03:
And so that was the basis for the time.

[00:22:02] Speaker 00:
Matt was cited in the original prosecution history of this patent.

[00:22:05] Speaker 03:
Is that right?

[00:22:06] Speaker 03:
Correct.

[00:22:07] Speaker 00:
The examiner asserted a 102 rejection based on Mack.

[00:22:10] Speaker 03:
That is correct.

[00:22:11] Speaker 00:
And then the applicant, now patent owner, came back and said they distinguished Mack by saying Mack's yoke is not fixedly secured to the motor.

[00:22:25] Speaker 00:
Right?

[00:22:25] Speaker 00:
And then the examiner granted the patent.

[00:22:29] Speaker 03:
So they said two things.

[00:22:30] Speaker 03:
They characterized MAC as not having the plate fit within the groove, which is not, I mean, from the plain teaching of MAC itself, it shows and teaches that it is in the groove.

[00:22:41] Speaker 03:
So they characterized it as not fitting inside the groove, which helped them get by that reference by adding the circumferential groove limitation to get around MAC.

[00:22:52] Speaker 03:
And laverick was not an issue here at that point either because it hadn't been disclosed.

[00:22:58] Speaker 03:
So, laverick showed the groove that we're discussing as well.

[00:23:02] Speaker 00:
But am I wrong that I thought that they proclaimed in their prosecution history that max yoke and flat portion does not fixably secure the motor to the mounting assembly.

[00:23:19] Speaker 03:
They did say that.

[00:23:22] Speaker 00:
So they essentially disclaimed this particular attachment means as an attachment means that fixedly secures the mounting plate to the motor.

[00:23:35] Speaker 03:
Based on a belief that the spring grade wire of that yoke was not able to fixly secure, which is part of the claim construction that we're challenging, we don't think that that is appropriate because it can

[00:23:50] Speaker 03:
prevent, it can allow some relative movement.

[00:23:53] Speaker 03:
So it wasn't just that argument that got them around MAC.

[00:23:57] Speaker 03:
It was the argument that it wasn't in the groove either, which plainly it is in the groove in MAC.

[00:24:04] Speaker 03:
The plate 45 goes in between 62A and 62B.

[00:24:08] Speaker 01:
Council, do you want to save your two minutes?

[00:24:11] Speaker 03:
Yes, your honor.

[00:24:13] Speaker 01:
Thank you.

[00:24:13] Speaker 01:
This amendment has two minutes.

[00:24:21] Speaker 04:
We have pleased the court.

[00:24:23] Speaker 04:
The PTO's intervention in this matter is limited to a single issue on the merits, the Black and Decker's assertion of prosecution disclaimer for its preamble outdoor power tools.

[00:24:34] Speaker 04:
Council hasn't discussed it at oral argument.

[00:24:37] Speaker 04:
So I'll just briefly say that our position is that the doctrine simply doesn't apply automatically in the same procedure to contemporaneous statements of claim scope, and that Black and Decker had and should have taken the opportunity

[00:24:51] Speaker 04:
to amend their claims to add the outdoor power tool to the body of the claim as a limitation.

[00:24:57] Speaker 04:
Unless there are any questions, I'll yield back.

[00:24:59] Speaker 00:
The patent's expired now, right?

[00:25:01] Speaker 04:
No, I believe it expires in 2017.

[00:25:03] Speaker 04:
Expires in 2017?

[00:25:08] Speaker 04:
I may be incorrect, but I thought that it was not until next year that it expires.

[00:25:12] Speaker 04:
But regardless, that might change the claim construction, BRI versus a Phillips construction, but it wouldn't change how the doctor and

[00:25:20] Speaker 04:
a prosecution disclaimer, and how we would be arguing that.

[00:25:24] Speaker 04:
What they seem to want is to be able to make a narrower claim, so contemporaneous statement to disclaim.

[00:25:30] Speaker 05:
If the patent has expired, if you're wrong, and the patent has expired?

[00:25:34] Speaker 05:
The same argument, Your Honor.

[00:25:38] Speaker 05:
How can they amend?

[00:25:39] Speaker 05:
No, your argument was they can't disclaim because they can amend an amendment would be the proper procedure.

[00:25:46] Speaker 04:
No, they can't disclaim regardless.

[00:25:49] Speaker 04:
But if their patent hasn't expired, they do have an opportunity to amend.

[00:25:54] Speaker 04:
I don't recall anything in the briefing where they said that that was not open to them or that they couldn't amend.

[00:25:58] Speaker 04:
I believe the patent hasn't expired.

[00:26:01] Speaker 04:
But regardless, even if the patent has expired and they couldn't have amended their claims, that still doesn't change the prosecution disclaimer doctrine to allow them to just contemporaneously state a claim scope

[00:26:17] Speaker 04:
for a preamble and have it automatically have effect in the same proceeding.

[00:26:23] Speaker 04:
The doctrine definitely applies in any PTO proceeding where statements are made to obtain a patent, as Omega says.

[00:26:31] Speaker 04:
And as this court said in Tempo, the court, the examiner, the board.

[00:26:36] Speaker 05:
It appears to be the PTO's argument that the doctrine of prosecution disclaimer does not require the board to give effect to contemporaneous argument-based disclaimer.

[00:26:46] Speaker 05:
Is it the position of the PTO that, because I really sense that this brief is carefully worded, in that you are not required to accept a disclaimer, but apparently you are able to?

[00:26:59] Speaker 05:
Is that right?

[00:27:00] Speaker 05:
Like, it's not the case that it can never be accepted.

[00:27:03] Speaker 05:
It's only that if you say it can't be accepted, you should go amend instead.

[00:27:08] Speaker 05:
Then you're allowed to do that.

[00:27:12] Speaker 04:
Correct.

[00:27:13] Speaker 04:
Let me see if I can represent you.

[00:27:15] Speaker 04:
The examiner or the board can accept a construction of the claim or a statement as to the scope of the claim and that would be a disclaimer if then you obtain the patent if it comes out of a procedure.

[00:27:29] Speaker 05:
So the board is the examiner or the board is allowed to accept such disclaimers?

[00:27:34] Speaker 05:
Yes.

[00:27:35] Speaker 05:
They do not always have to accept that.

[00:27:37] Speaker 04:
They do not have to accept that.

[00:27:38] Speaker 04:
That's our position.

[00:27:39] Speaker 04:
They don't have to accept a claim construction just because it's framed as a disclaimer of claim scope.

[00:27:45] Speaker 00:
I guess the question is, is there need to be some kind of underlying premise for the examiner or the board to say, hmm, this is a close claim construction question.

[00:27:55] Speaker 00:
I could go either way on this.

[00:27:58] Speaker 00:
But because the applicant or patent owner is urging one construction over the other,

[00:28:05] Speaker 00:
accept that and know that this expressed disclaimer will be bound up in the ultimate claim construction of this claim.

[00:28:14] Speaker 00:
That's one approach.

[00:28:15] Speaker 00:
Another approach could be, I don't agree with this patent owner.

[00:28:20] Speaker 00:
I think this claim means something else, but I will in my discretion elect to adopt this applicant or patent owner's construction of the claim through his argument.

[00:28:35] Speaker 00:
Is that a proper way for the agency to use and rely on statements made by applicants and patent owners?

[00:28:45] Speaker 04:
I think the former is, if there's a claim construction that the examiner agrees with, if they agree based on how, or the board, if they agree that the way the scope under BRI is being argued by the patent owner, that it gets over prior art based on how the claims could be construed, yes.

[00:29:05] Speaker 04:
I don't think the examiner or the board should be changing their claim construction necessarily because there is a statement, a disclaimer.

[00:29:16] Speaker 05:
I think the examiner or the board has to look at what would be the construction of the claim and how that argument... How is that consistent with many, many, many decades of precedent that allows a patentee to be his own lexicographer?

[00:29:31] Speaker 05:
And in the specification and

[00:29:33] Speaker 05:
It's true.

[00:29:34] Speaker 05:
And I think when you said in the specification and, and then you stopped because you didn't want to say and prosecution, that's what all the cases say.

[00:29:40] Speaker 05:
You stopped yourself, which was great.

[00:29:42] Speaker 05:
I'm sure the PTO likes that you stopped yourself right there.

[00:29:44] Speaker 05:
But every one of the cases say you can be your own lexicographer and do so either in the patent specification or the prosecution history.

[00:29:53] Speaker 04:
That's true.

[00:29:55] Speaker 04:
You are correct.

[00:29:56] Speaker 04:
And maybe I'm making the, maybe I'm being too rigid in how the examiner or the board should accept that.

[00:30:03] Speaker 04:
The statement, if accepted, then is a disclaimer.

[00:30:07] Speaker 04:
And maybe the examiner of the board thinks that there's a different construction, but is happy with the disclaimer, thinks it will be clear to the public what the scope of the claims are.

[00:30:17] Speaker 05:
But is the PTO's position in the future that a patentee can only be a lexicographer during prosecution as opposed to in the spec if the PTO accepts it?

[00:30:28] Speaker 04:
If the result of the procedure is that the patent

[00:30:33] Speaker 04:
is granted in the prosecution or re-exam certificate or other certificate issues.

[00:30:39] Speaker 04:
Yes, but what I'm trying to make clear is the board doesn't have to say, because you said it, because you say this is your claim construction, we have to agree with you.

[00:30:48] Speaker 04:
How is that consistent with the lexicography precedent?

[00:30:51] Speaker 05:
Well, I think the board and the IPR is construing the claims.

[00:30:55] Speaker 05:
Yes, but no, no.

[00:30:56] Speaker 05:
Your argument was this should be treated the same as prosecution and re-exam and IPR.

[00:31:01] Speaker 05:
So don't suddenly

[00:31:02] Speaker 05:
cordon off IPRs as a different animal?

[00:31:06] Speaker 04:
Well, the board is doing a claim construction argument here, where examiners aren't required to give a specific claim construction for every limitation of the claim.

[00:31:19] Speaker 04:
It really comes down to a fight about the scope of a claim compared to the prior art.

[00:31:23] Speaker 04:
There's not necessarily a specific claim construction given.

[00:31:28] Speaker 04:
An IPR does have the adjudication between two parties who are presenting arguments.

[00:31:34] Speaker 04:
And the board is coming up with a claim construction based on looking back at the prosecution history for disclaimers of claim scope.

[00:31:43] Speaker 04:
And you're correct that statements that were made like it to obtain the patent that determine the scope of the claims should be given effect in the subsequent IPR as a prosecution disclaimer.

[00:31:56] Speaker 04:
But there was no requirement of the board here

[00:31:58] Speaker 04:
not to construe the claims under BRI, as any court would, the district court or the board, and then come up with what they think was the right construction as opposed to accept the disclaimer as the claim construction.

[00:32:15] Speaker 04:
Because in fact, what happens is the prosecution history has what the scope of the claims have been known to the public.

[00:32:25] Speaker 04:
And they shouldn't be able to then change it by a contemporaneous statement and avoid making an amendment, if possible, and avoiding intervening right.

[00:32:34] Speaker 01:
Thank you, Ms.

[00:32:34] Speaker 01:
Craven.

[00:32:34] Speaker 01:
Thank you so much.

[00:32:35] Speaker 01:
The PCO has had more than its two minutes of shared time.

[00:32:41] Speaker 01:
Mr. Broth has some rebuttal time.

[00:32:44] Speaker 01:
We'll give you five minutes.

[00:32:46] Speaker 01:
Thank you.

[00:32:49] Speaker 02:
I want to go back to, if I may, the point concerning the analogous art, because

[00:32:56] Speaker 02:
in the factual findings of the board, there is a significant inconsistency.

[00:33:01] Speaker 02:
The factual inquiries under GRAM-B John Deere include the requirement to define in the context of defining the person of ordinary skill in the art, the identification of what is the pertinent art.

[00:33:15] Speaker 02:
And in this context, that has been defined and it is uncontested.

[00:33:23] Speaker 02:
as a technician with several years of practical experience developing electric motor powered outdoor power tools.

[00:33:34] Speaker 02:
Or a person having a bachelor of science degree in mechanical engineering with lesser years of such practical experience.

[00:33:42] Speaker 02:
So the pertinent art in an uncontested manner is defined as electric motor powered outdoor power tools.

[00:33:53] Speaker 02:
as this court has recognized in Wyers v. Master Locke, and I'm quoting the court, the district court instructed the jury without objection that obviousness must be determined based on the perspective of a person of ordinary skill in the field of locksmithing.

[00:34:10] Speaker 02:
The jury instruction appears to define the field of endeavor as locksmithing.

[00:34:16] Speaker 02:
So this court has already made

[00:34:19] Speaker 02:
the specific correlation that talking about what is the, quote, pertinent art for purposes of defining a person of ordinary skill in the art is consistent with what should be the field of endeavor of the invention.

[00:34:32] Speaker 02:
The board in this case has adopted a significantly broader definition for what is the field of endeavor, given what is the uncontested definition of what is the pertinent art in defining a person of ordinary skill in the art, without any explanation.

[00:34:49] Speaker 02:
We believe, again, that is clear legal error.

[00:34:54] Speaker 01:
Thank you.

[00:34:55] Speaker 01:
Thank you, Mr. Brock.

[00:34:57] Speaker 01:
And I think there's no opportunity to rebut on the cross appeal.

[00:35:02] Speaker 01:
It was not discussed.

[00:35:03] Speaker 01:
The case will be taken under revised.