[00:00:01] Speaker 01:
Our first case today is 2015-1361, broadband versus corning optical.

[00:00:09] Speaker 01:
Mr. Jakes, please proceed.

[00:00:14] Speaker 03:
Good morning and may it please the court.

[00:00:17] Speaker 03:
The board made a fundamental mistake in this appeal when it construed the term continuity member in a way that doesn't require a continuous electrical connection.

[00:00:27] Speaker 03:
The board's construction allows for intermittent or momentary contact, and it even ignored the fact that some of the claims recite maintaining electrical continuity.

[00:00:38] Speaker 05:
In the red brief, Corning says that, I'm going to quote for you, and it's at page 28, PPC's arguments concerning claim construction and alleged missing limitations addresses only the first press fit embodiment of the combination of prior

[00:00:56] Speaker 05:
PPC does not contest that the second sandwiching embodiment achieves both a continuity member and shape slash configure to fit limitations even under PPC's proposed constructions.

[00:01:11] Speaker 05:
This court can affirm the board on this basis alone without any need to address the proposed construction and allege missing claim limitations raised by PPC on appeal.

[00:01:25] Speaker 05:
I didn't find in your briefs where you present your arguments regarding the second embodiment.

[00:01:31] Speaker 03:
The reason that second embodiment, well, first of all, I disagree that it's an embodiment.

[00:01:38] Speaker 03:
So I'm going to use different terminology.

[00:01:40] Speaker 03:
It's the expert's conception that he drew in a sketch.

[00:01:44] Speaker 03:
There were never any findings or any evidence presented that that configuration, even if it could be made,

[00:01:51] Speaker 03:
that there would be continuous electrical contact between the nut and the post.

[00:01:57] Speaker 03:
That came up in connection with the other limitation, the shape to fit and configured to fit limitation, to show how it could be fit between two parallel surfaces.

[00:02:07] Speaker 03:
So there are no findings by the board, first of all, that it would have been obvious to inject this spring from another piece of prior arc in that location.

[00:02:18] Speaker 03:
And second, that it would make continuous electrical contact

[00:02:21] Speaker 03:
We've never really had a chance to respond to that, in fact, because there are no findings.

[00:02:26] Speaker 03:
And that was not Corning's argument below.

[00:02:29] Speaker 03:
Their argument below was that the spring, when it's placed around the post, would make contact with the post on the edge.

[00:02:37] Speaker 03:
And so it evolved into a different argument when they were talking about the shape to fit part of the element.

[00:02:44] Speaker 03:
So there are no findings.

[00:02:45] Speaker 03:
And we don't conceive that this particular configuration, even if it could be made,

[00:02:51] Speaker 03:
would make continuous electrical contact between the post and the nut.

[00:02:56] Speaker 03:
I'm not going to dispute that it wouldn't make contact with the nut if you jammed it in there, but there's a lot more to it than that.

[00:03:02] Speaker 03:
It would also have the spring tines would have to contact the nut.

[00:03:06] Speaker 03:
There are no findings there, and this court really can't do the job of the board for it by making those findings.

[00:03:14] Speaker 03:
So the claim construction still does make a difference.

[00:03:16] Speaker 02:
So where, though, in the written description do you think is your best

[00:03:21] Speaker 02:
citation or your best point to support the conclusion that continuity requires constancy.

[00:03:29] Speaker 02:
That's essentially as I interpret your argument.

[00:03:30] Speaker 03:
That's right.

[00:03:31] Speaker 03:
That's right.

[00:03:32] Speaker 03:
There are a number of places in the specification where it says the continuity member maintains an electrical ground path.

[00:03:41] Speaker 03:
It makes consistent and physical contact with a nut, ensuring continuity of the ground path.

[00:03:47] Speaker 03:
It makes consistent physical and electrical contact with a post.

[00:03:51] Speaker 03:
Those are the descriptions of a continuity member.

[00:03:54] Speaker 03:
Now, the word continuity... Well, cite to me where.

[00:03:57] Speaker 03:
Oh, sure.

[00:04:04] Speaker 01:
Relevant to this, my question when you're discussing these citations is to think about, explain to us why it means a temporal continuity as opposed to a spatial continuity.

[00:04:23] Speaker 03:
I can start with a column 14 is perhaps one of the best, column 14 at line 23.

[00:04:31] Speaker 03:
It talks about the continuity member.

[00:04:33] Speaker 03:
It maintains an electrical ground path.

[00:04:36] Speaker 03:
The ground path extends through and then it goes on to say this continuous grounding path.

[00:04:42] Speaker 03:
Those are all related to the word continuity.

[00:04:45] Speaker 01:
And I'm wondering if those are

[00:04:47] Speaker 01:
what I mentioned about the structural path as opposed to the temporal path.

[00:04:52] Speaker 03:
Will you follow me?

[00:04:53] Speaker 03:
There are a couple of indications that it's not a structural path.

[00:04:57] Speaker 03:
First of all, it's between the nut and the post.

[00:05:03] Speaker 03:
And that's just one path.

[00:05:04] Speaker 03:
When Cornyn talks about a continuous path, they're talking about from one length of the other.

[00:05:09] Speaker 03:
And this particular continuity member makes a connection between the nut and the post.

[00:05:14] Speaker 03:
Second, even some of the claims give you an indication because they use the word when.

[00:05:18] Speaker 03:
They say that it maintains an electrical ground path when certain conditions are met.

[00:05:24] Speaker 03:
And that's also an indication that we're talking about temporal.

[00:05:28] Speaker 03:
But more importantly, the actual purpose of the invention is to avoid intermittent ground paths.

[00:05:36] Speaker 03:
It's not to have one path that runs the length of the other.

[00:05:39] Speaker 03:
Every connector does that.

[00:05:40] Speaker 03:
The ground path has to run through the connector.

[00:05:42] Speaker 03:
That's nothing that this invention was trying to accomplish.

[00:05:46] Speaker 03:
It has to be present at all times so that you don't have intermittence.

[00:05:51] Speaker 03:
And Judge Omalia, I'd also point you to column 15 and line 8, where it talks about retaining a constant physical and electrical contact, ensuring continuity of the ground path.

[00:06:06] Speaker 03:
Column 16, also at line 6, says the continuity member should maintain electrical contact

[00:06:12] Speaker 03:
further down in line 11.

[00:06:15] Speaker 03:
It talks about a continuous electrical shield.

[00:06:17] Speaker 03:
The bottom of column 18 also talks about consistent physical and electrical contact at line 57, 58, talking about electrical continuity.

[00:06:27] Speaker 01:
Could this be, though, a case, Mr. Jakes, where that nasty DRI standard used in these IPR type proceedings

[00:06:42] Speaker 01:
makes, unfortunately, for your client a big difference, meaning I feel as though your case would be a heck of a lot stronger, and I'm sure you would agree, if you were article member Phillips.

[00:06:53] Speaker 01:
Wouldn't you agree that your case would be stronger?

[00:06:55] Speaker 01:
You can tell me you think it's going to come out the same way, but let's just skip over that and get to my point.

[00:06:59] Speaker 03:
I'd agree it would be stronger, but again, it comes down to what's reasonable here, and the word continuity is in the claims, and it's very carefully described in the specification.

[00:07:11] Speaker 01:
The board tried to, I think, without doing it as eloquently, the board tried to say that certainly at a minimum means structural continuity, the bridge between the nut and the post.

[00:07:28] Speaker 01:
But they thought the broadest reasonable construction didn't require continuity and time and would conceivably allow for the intermittence that you say the purpose of the invention was, again.

[00:07:40] Speaker 03:
That's right.

[00:07:41] Speaker 01:
And that is certainly a broad construction.

[00:07:45] Speaker 01:
The problem I'm struggling with, and I'm struggling with it in lots and lots of cases, is is it ever reasonable for them to adopt a non-Phillips construction?

[00:07:57] Speaker 01:
So this is where I'm struggling.

[00:08:00] Speaker 01:
I'm struggling because I think this case might be a poster child for the difference between BRI and Phillips and the impact it could possibly have on outcome.

[00:08:09] Speaker 03:
I can see in some of the court's decisions that those two things seem to be converging, and often the broadest reasonable construction is the same as the Phillips construction.

[00:08:19] Speaker 03:
I don't think this is a case where they would be different, as you said, Your Honor.

[00:08:24] Speaker 01:
You think the Phillips construction and the BRI construction are exactly the same here?

[00:08:28] Speaker 03:
I think that you would come out the same place, yes, because of the word reasonable.

[00:08:32] Speaker 03:
And the board's construction, I don't think is reasonable because

[00:08:37] Speaker 03:
It goes contrary to the very purpose of the invention.

[00:08:40] Speaker 03:
The purpose of the invention is to avoid these intermittent ground paths when the nut is loose.

[00:08:45] Speaker 03:
And if construction of the continuity member, which is designed to solve that problem, is that it doesn't have to solve that problem, that doesn't really make much sense.

[00:08:55] Speaker 01:
Help me out.

[00:08:55] Speaker 01:
Where does it say, because I do know of one place where I think it hints at it, but where does it say that the continuity member is designed to solve the problem of intermittent?

[00:09:05] Speaker 03:
Your Honor, I think that's throughout the whole specification.

[00:09:08] Speaker 01:
Okay, then just give me your one place.

[00:09:11] Speaker 03:
That's the purpose of the invention.

[00:09:14] Speaker 01:
Show me one place.

[00:09:14] Speaker 03:
Okay.

[00:09:21] Speaker 03:
I think it starts from the very background, if I can locate the right place.

[00:09:28] Speaker 03:
At the bottom of the... In column one, at the bottom of the background of the invention,

[00:09:35] Speaker 01:
That's certainly my favorite place.

[00:09:36] Speaker 03:
It exists for an improved connector, having the structural elements included for ensuring ground continuity.

[00:09:42] Speaker 03:
Ensuring doesn't mean intermittent.

[00:09:44] Speaker 03:
That means that it's there.

[00:09:46] Speaker 01:
In fact, it goes further.

[00:09:47] Speaker 01:
Read above that a little bit where it says that your purpose is to avoid permitting loss of ground and discontinuity.

[00:09:53] Speaker 03:
That's exactly right.

[00:09:54] Speaker 01:
I do think that's very, very helpful for you.

[00:09:57] Speaker 01:
I'm just not sure.

[00:09:58] Speaker 01:
And in a Phillips world, I think you're right.

[00:10:02] Speaker 01:
I just don't know if you're right in the BRI world, because I'm really still struggling with broadest reasonable construction notions.

[00:10:09] Speaker 03:
Well, I think it comes down to you still have to look at the specification.

[00:10:13] Speaker 03:
You can't look at the word continuity and say, what possible things could it mean?

[00:10:17] Speaker 03:
That's not broadest reasonable.

[00:10:19] Speaker 05:
Well, I was going to say could it reasonably mean that you need, whenever you need continuity, it's there.

[00:10:29] Speaker 05:
That is, when you need to be grounded

[00:10:31] Speaker 05:
it will be grounded.

[00:10:33] Speaker 05:
But when you don't need to be grounded, it doesn't matter.

[00:10:38] Speaker 03:
I think that would be fine, because if the connector is not connected to anything, whether or not there's grounding, I can't see that it makes any difference.

[00:10:48] Speaker 03:
But the point is, when the nut is loose, it still wants to have a continuity path.

[00:10:54] Speaker 02:
And in addition to that column, your other

[00:10:58] Speaker 02:
The other things you rely upon are the extent to which the word consistent is referenced in the specification?

[00:11:06] Speaker 03:
Consistent is not a word that talks about a path, it talks about in time.

[00:11:11] Speaker 03:
Consistent means it exists all the time when it needs to be, not that it extends from one end to the other.

[00:11:18] Speaker 01:
And certainly at a minimum some of the dependent claims have the maintaining language, which is

[00:11:25] Speaker 01:
I don't see any dispute that that requires overtime.

[00:11:29] Speaker 03:
I don't either and I think that was a fundamental mistake of the board where the board actually said we can't read the limitation maintained into the claims.

[00:11:37] Speaker 01:
Is there something else in those dependent claims because of course you know that claim differentiation notion.

[00:11:44] Speaker 01:
Is there something else in those dependent claims which had the maintaining limitation that would otherwise separate it from the independent claims such that I wouldn't worry about ending up with

[00:11:54] Speaker 01:
two claims with identical claim scope if I read maintaining into the broader continuity member?

[00:12:00] Speaker 03:
I think if you look at those dependent claims they usually have additional conditions they say when the connector is in a particular state and so those would add limitations where it adds the word maintain.

[00:12:12] Speaker 01:
So this wouldn't be a situation where you think I would by interpreting continuity member in the broader independent claim thereby subsume the dependent claim?

[00:12:25] Speaker 03:
honestly there's not any difference between continuity member and maintaining electrical connectivity they both mean the same thing and so the other limitations in the dependent claim would distinguish those claims but we say that it has to maintain electrical contact that's the point of the continuity member so what are the other limitations in the dependent claim that would get over the concern about sure for example they add

[00:12:53] Speaker 03:
particular times at which... Why don't you look at claim date?

[00:12:58] Speaker 01:
I'll help you along.

[00:12:59] Speaker 01:
Thank you, thank you.

[00:13:00] Speaker 03:
You're almost out of time.

[00:13:02] Speaker 03:
That's right.

[00:13:04] Speaker 03:
The continuity member is configured to maintain electrical contact when the nut is in both partially tightened position and fully tightened position.

[00:13:13] Speaker 03:
So it's adding those additional conditions as to when it's maintained.

[00:13:17] Speaker 01:
If I could just briefly... Would that ever suggest though that it's not maintained

[00:13:23] Speaker 01:
in other positions arguably for the independent claim purposes?

[00:13:27] Speaker 01:
No.

[00:13:27] Speaker 03:
I don't think that's the correct way to interpret it.

[00:13:29] Speaker 03:
I think it's saying that in these particular conditions you have to maintain and it's really saying even in these conditions you have to maintain.

[00:13:37] Speaker 01:
The electrical conductivity... That would suggest for the independent claim that in those conditions you don't have to maintain.

[00:13:44] Speaker 03:
I don't think so.

[00:13:44] Speaker 03:
A continuity member has to maintain it throughout and at all times and in those particular conditions

[00:13:51] Speaker 03:
it has to maintain it as well.

[00:13:53] Speaker 02:
Given that you don't expressly claim continuous continuity, or continuous connection, and you have just a variety of sprinkling of things in the written description that you think support it, why would the board's construction be unreasonable?

[00:14:15] Speaker 03:
Well, I think there are two reasons.

[00:14:18] Speaker 03:
One is the word continuity does

[00:14:21] Speaker 03:
it does that it has to be continuous.

[00:14:24] Speaker 03:
So that word by itself, it's not just a label.

[00:14:27] Speaker 03:
It does say a continuity number, so it has to be continuous.

[00:14:30] Speaker 03:
And second, to construe the claims to allow these intermittence, I think defeats the purpose of the invention, and that's why it's not reasonable.

[00:14:39] Speaker 03:
Could I briefly address the secondary considerations?

[00:14:42] Speaker 03:
Because I think they're particularly strong in this case, and the board really gave them quite short shrift.

[00:14:48] Speaker 02:
Well, I don't know that that's fair.

[00:14:49] Speaker 02:
The board discounted them.

[00:14:51] Speaker 02:
But the board did go into a lot of detail.

[00:14:54] Speaker 02:
And it's one of the most detailed opinions I've seen to the extent of addressing objective issues.

[00:15:00] Speaker 03:
That's right.

[00:15:00] Speaker 03:
And the board did find there was actually copying.

[00:15:04] Speaker 03:
And I think on commercial success, though, the board really did not get it right.

[00:15:10] Speaker 03:
These connectors have been an overwhelming commercial success any way you look at them.

[00:15:15] Speaker 03:
And I think the board here discounted that commercial success saying,

[00:15:19] Speaker 03:
It could have been based on other possibilities.

[00:15:22] Speaker 03:
There's no evidence of those other possibilities.

[00:15:24] Speaker 03:
We are required to disprove every other factor that could possibly contribute to that commercial success.

[00:15:30] Speaker 02:
So even under a substantial evidence review, you think the answer is there is just no evidence?

[00:15:34] Speaker 03:
There is no contrary evidence.

[00:15:37] Speaker 03:
All there is is doubt saying, well, it could have been something else.

[00:15:40] Speaker 01:
Well, then if that were the case, wouldn't we be boxing the patent office into a scenario not in IPRs, per se?

[00:15:48] Speaker 01:
But where every time, because IPRs are the one exception for this role, but you can see where I'm going.

[00:15:53] Speaker 01:
In every ex parte scenario, any time an applicant introduces commercial success, I mean, the board can't go out and obtain evidence.

[00:16:01] Speaker 01:
You're right.

[00:16:01] Speaker 01:
They just can't do that.

[00:16:02] Speaker 01:
The examiners can't do that.

[00:16:04] Speaker 01:
So would we be boxing them into a situation where even reasonable doubt on their part wouldn't be enough to overcome evidence if you put something in the record?

[00:16:13] Speaker 03:
Well, I think it would put them in a more difficult position.

[00:16:17] Speaker 03:
I don't think a one size fits all rule works here.

[00:16:20] Speaker 03:
We are in an IPR situation and it really was Corning had the opportunity to present those factors.

[00:16:26] Speaker 03:
And so I think you do have to look at it differently since we are in an adversary proceeding as opposed to an ex-party proceeding.

[00:16:34] Speaker 03:
The evidence here, it shows that these connectors took over the market to 80 to 90%.

[00:16:43] Speaker 03:
And even though it was replacing PPC's earlier connectors,

[00:16:47] Speaker 03:
That's pretty substantial.

[00:16:49] Speaker 01:
And at a price premium... What's the PPC market share on the earlier connectors?

[00:16:54] Speaker 03:
You know, that's not in the record.

[00:16:55] Speaker 03:
Not in the record.

[00:16:56] Speaker 03:
No.

[00:16:56] Speaker 03:
But any product that has an 80 to 90 percent market share is significant, especially since it's replacing the product.

[00:17:03] Speaker 03:
The only difference was the continuity number.

[00:17:06] Speaker 03:
Thank you.

[00:17:06] Speaker 03:
Thank you, Mr. Jay.

[00:17:09] Speaker 01:
Mr. Walters, please proceed.

[00:17:17] Speaker 02:
Can you start where we left off, because on this issue of commercial success, I do have to say that Mr. Jakes has a point.

[00:17:24] Speaker 02:
These are supposed to be adversarial proceedings, and the board didn't cite any contrary evidence, just seemed to be speculating about what alternatives might, alternative explanations for the success would be.

[00:17:39] Speaker 02:
How do you get around that?

[00:17:43] Speaker 04:
First of all, with regard to commercial success, I think what you heard was there was no evidence in the record of what the market share was before the new products were brought into the market.

[00:17:54] Speaker 04:
And the evidence before the board shows that the new products were just a replacement for the old products.

[00:18:00] Speaker 04:
As the old product market share went down, the new product market share went up.

[00:18:06] Speaker 04:
And I don't think that the new products ever even achieved the same market share as the old product, but I'm not

[00:18:13] Speaker 04:
absolutely 100% sure.

[00:18:14] Speaker 02:
But you didn't put any evidence to that effect?

[00:18:17] Speaker 04:
The evidence is in the record before the Patent Office.

[00:18:21] Speaker 04:
It's the evidence that PPC presented before the Patent Office.

[00:18:24] Speaker 01:
Is it in our appendix?

[00:18:26] Speaker 04:
It is not in your appendix that I recall.

[00:18:29] Speaker 01:
What is your best recollection though of what that evidence actually shows?

[00:18:32] Speaker 01:
Because I thought that it would likely only show market share of the new product.

[00:18:37] Speaker 01:
What does it show with regard to

[00:18:40] Speaker 01:
Other than just in general, PPC pulled one product off the market, put a new one on, but you're suggesting to us that that evidence in your recollection goes further and suggests that they didn't even achieve the same market share with the new product they previously had.

[00:18:53] Speaker 01:
So that would be quite detailed evidence.

[00:18:55] Speaker 04:
Yeah, there was quite detailed evidence on that.

[00:18:58] Speaker 04:
There was a chart that was presented by a Mr. Jackson, I believe it was,

[00:19:03] Speaker 04:
And the chart shows that the market share was declining for the old product as the new market share was increasing.

[00:19:11] Speaker 04:
And I don't recall that the new product ever exceeded the old product market share.

[00:19:16] Speaker 04:
PPC already had a large part of the market here.

[00:19:20] Speaker 04:
And the Patent Office was aware of this.

[00:19:24] Speaker 04:
I want to go back and address a couple of the issues about

[00:19:29] Speaker 04:
The very first argument that we made in the appellee's brief, and that is PPC has never and does not now have any argument establishing why the second embodiment that the board found was an obvious combination of the art.

[00:19:50] Speaker 04:
There was motivation in the art to arrive at that second embodiment.

[00:19:55] Speaker 04:
They have not presented a single argument either before the Patent Office or before this court explaining why that embodiment doesn't meet all the claims even under their construction.

[00:20:10] Speaker 04:
They didn't present it in their briefs before this court.

[00:20:13] Speaker 04:
They didn't present it in the argument before this court.

[00:20:16] Speaker 04:
And they certainly didn't present it before the Patent Office.

[00:20:20] Speaker 04:
PPC's counsel indicated that's because they didn't have an opportunity to do so, but they addressed that embodiment before the patent office in their patent owner's response in each of these four IPRs.

[00:20:36] Speaker 04:
Can you tell me where?

[00:20:37] Speaker 04:
It was about page 25 in the patent owner response.

[00:20:43] Speaker 04:
They also were aware of this well before they found... What's the JA?

[00:20:48] Speaker 04:
Pardon?

[00:20:48] Speaker 02:
What is the JA number?

[00:20:50] Speaker 04:
I don't believe that is in the appendix, but it is part of the record before the Patent Office.

[00:20:56] Speaker 01:
Can you show me where in the Patent Office's decision you think they really clearly made these findings with regard to that second embodiment, the findings that you're talking about now?

[00:21:06] Speaker 04:
Sure.

[00:21:09] Speaker 04:
If I'm looking at the decision in the 06-0 patent,

[00:21:20] Speaker 01:
Give me a JA site so I can make sure I line up with you.

[00:21:25] Speaker 04:
Bear with me a second.

[00:21:28] Speaker 04:
If you look at the appendix pages 33 and 34.

[00:21:36] Speaker 02:
At which appendix are we in?

[00:21:39] Speaker 02:
Are we talking about the next case?

[00:21:40] Speaker 04:
I don't know.

[00:21:42] Speaker 02:
Next appeal?

[00:21:42] Speaker 04:
I don't know.

[00:21:43] Speaker 04:
In the combined appeal.

[00:21:48] Speaker 01:
Page 33.

[00:21:50] Speaker 04:
33 and 34.

[00:21:54] Speaker 01:
Where are the board's findings that you're referring to?

[00:21:59] Speaker 01:
That even under, you think, the board already made findings that even under PPC's construction, this embodiment satisfies.

[00:22:09] Speaker 01:
Because that goes to the maintaining continuity in a temporal sense.

[00:22:12] Speaker 04:
No, no, no.

[00:22:12] Speaker 01:
That's what I thought you said.

[00:22:13] Speaker 04:
Did you not say that?

[00:22:16] Speaker 04:
Let me clarify.

[00:22:18] Speaker 01:
Good idea.

[00:22:19] Speaker 04:
The Patent Office found that there was motivation in the art to put the Tatsuzuki continuity member into the Matthews device in the manner described as the sandwiching embodiment.

[00:22:38] Speaker 04:
That was the finding that the Patent Office made.

[00:22:41] Speaker 04:
They then went on

[00:22:43] Speaker 04:
and said, we are satisfied that one of ordinary skill in the art would have appreciated that Tatsuzuki's disc-shaped spring may be arranged in the Matthews connectors so as to form a continuity member positioned in a manner required by claim one.

[00:23:03] Speaker 01:
But they construed the continuity member as not requiring the maintenance of continuity over time.

[00:23:11] Speaker 01:
So we don't know from a fact-finding standpoint if that limitation were part of the construction, would they have reached the same conclusion?

[00:23:22] Speaker 04:
So that's where PPC has waived its argument.

[00:23:27] Speaker 04:
It never argued before the Patent Office.

[00:23:30] Speaker 04:
It never argued before you in any of its briefing or explained to you in any of its briefing

[00:23:38] Speaker 04:
why that particular embodiment does not meet all of the limitations of the claim according to their construction.

[00:23:49] Speaker 04:
In fact, there's admissions in the record that that particular embodiment, which they will agree meets the configured to fit aspect, which is part of this case.

[00:24:03] Speaker 04:
They say, through their expert,

[00:24:08] Speaker 04:
Dr. Eldering, and this is at page 1833 of the appendix in paragraph 76 of Dr. Eldering's declaration.

[00:24:20] Speaker 04:
They're talking about this embodiment, which they agree is the configured to fit or pressed to fit.

[00:24:27] Speaker 02:
Here's my problem is, the board said that it found that there would have been one of Skilled in the Art would have

[00:24:34] Speaker 02:
been able to put this together or figured out how to put this together.

[00:24:37] Speaker 02:
But it says, in the manner contemplated by independent claim one.

[00:24:42] Speaker 02:
So if we conclude that the claim construction was wrong, then that in the manner finding is gone, right?

[00:24:52] Speaker 04:
In terms of what the board said in its decision, it had a construction.

[00:24:58] Speaker 04:
I absolutely agree with you.

[00:25:01] Speaker 04:
PPC has never disputed when presented with the argument that even that construction would meet all of the limitations of their claims.

[00:25:14] Speaker 04:
I would ask them, what's different?

[00:25:18] Speaker 04:
What's different?

[00:25:19] Speaker 04:
You certainly can make that decision because there is a fact finding that that embodiment, that there was motivation to make that embodiment.

[00:25:28] Speaker 04:
You wouldn't even need the board to do it.

[00:25:30] Speaker 01:
So you say they made a fine.

[00:25:31] Speaker 01:
There's motivation to make that embodiment.

[00:25:33] Speaker 01:
So would your argument be that the only argument they raised with regard to this was that Tatsuzuki teaches away from the second embodiment?

[00:25:42] Speaker 04:
Motivation and teaching away.

[00:25:45] Speaker 04:
That's the only argument they made.

[00:25:47] Speaker 04:
The Patent Office considered that and rejected it.

[00:25:50] Speaker 04:
There's substantial evidence in the record.

[00:25:53] Speaker 04:
It's Dr. Murakowski's deposition test.

[00:25:57] Speaker 02:
But you would concede that if we concluded that there had to be a continuous connection, in other words, one over time and not just all the way through, that that finding would not stand, right?

[00:26:11] Speaker 04:
Not at all.

[00:26:15] Speaker 04:
I'm not sure I'm understanding your question.

[00:26:17] Speaker 01:
Let me see if I can help you, because this is truly in that vein.

[00:26:24] Speaker 01:
Your response, which you're not making, but I think would be that is even if that error occurred, it's harmless error because they haven't showed why it matters.

[00:26:32] Speaker 04:
Absolutely.

[00:26:33] Speaker 04:
OK?

[00:26:33] Speaker 04:
Absolutely.

[00:26:34] Speaker 01:
That's your argument, right?

[00:26:34] Speaker 05:
Yes, yes.

[00:26:38] Speaker 05:
OK.

[00:26:38] Speaker 05:
But I'd still like an answer to Judge O'Malley's question about and really sort of a response to the question I asked your opposing counsel.

[00:26:50] Speaker 05:
It seems to me that what you're saying is that

[00:26:54] Speaker 05:
the grounding has to be there when it's needed, which is not every second of time.

[00:27:06] Speaker 04:
Very good question.

[00:27:09] Speaker 04:
I will try and answer the question, but I want to develop through where this issue came up from.

[00:27:15] Speaker 04:
And on page 23 of Appellant's Brief, just like before the board, the appellant

[00:27:23] Speaker 04:
has argued that the terms continuity member and electrical continuity member require that the continuity member provide consistent contact and that it occur at all times.

[00:27:46] Speaker 04:
And the board rejected that argument for good reason.

[00:27:52] Speaker 04:
Number one,

[00:27:53] Speaker 04:
those terms are not found in the claims.

[00:27:57] Speaker 04:
As you heard earlier, those terms are not in the dependent claims.

[00:28:01] Speaker 01:
Maintaining electrical continuity is in claim eight, for example, right?

[00:28:08] Speaker 04:
Yes.

[00:28:09] Speaker 01:
Right?

[00:28:09] Speaker 01:
I'm right, right?

[00:28:11] Speaker 04:
You are correct.

[00:28:12] Speaker 04:
You are correct.

[00:28:13] Speaker 04:
But the term consistent contact.

[00:28:16] Speaker 01:
Well, I don't see how that could differ from maintaining electrical contact.

[00:28:21] Speaker 01:
You can't maintain something inconsistently.

[00:28:23] Speaker 01:
Can you?

[00:28:24] Speaker 01:
Yes, you can.

[00:28:25] Speaker 04:
For example, think of a chain.

[00:28:29] Speaker 04:
And you have a chain, and it's continuous.

[00:28:32] Speaker 04:
But not all of the links of the chain are as strong as maybe some other links of the chain, thickness.

[00:28:39] Speaker 01:
And so you think that we should construe maintaining consistent, maintaining electrical contact as permitting discontinuity

[00:28:49] Speaker 01:
completely contrary to the purpose of the invention as stated in the specification.

[00:28:53] Speaker 04:
I'm saying that you can maintain continuity for a period of time or under a condition without it being maintained at all times or with some particular quality aspect or robustness aspect.

[00:29:15] Speaker 05:
Or you may have an interest in simply keeping

[00:29:19] Speaker 05:
the nut from coming off entirely.

[00:29:22] Speaker 05:
That is, that the continuity is that the connection stays in place as opposed to not being in place.

[00:29:34] Speaker 04:
Correct.

[00:29:34] Speaker 04:
Think about the life of the continuity member after it's made.

[00:29:38] Speaker 04:
It's not even in the connector.

[00:29:39] Speaker 04:
That continuity member isn't maintaining continuity at that point.

[00:29:44] Speaker 04:
But it's still a continuity member.

[00:29:46] Speaker 01:
That's a crazy argument.

[00:29:47] Speaker 01:
You're saying that if we take all the pieces of a bicycle apart, they're no longer a bicycle.

[00:29:51] Speaker 01:
Well, what the heck does that prove?

[00:29:53] Speaker 01:
It's when it's put together as claimed.

[00:29:55] Speaker 01:
I mean, we don't look at individual elements.

[00:29:57] Speaker 01:
We look at claimed combinations.

[00:29:59] Speaker 04:
Let's continue to walk through the lifecycle.

[00:30:01] Speaker 04:
You put it into the connector, but it doesn't have any connection to an interface port.

[00:30:08] Speaker 04:
It's certainly not providing continuity then.

[00:30:12] Speaker 02:
It says, so as to maintain electrical continuity between the coupler and the post.

[00:30:16] Speaker 02:
And then it lists basically every three circumstances in which you could have it partially tightened or even when the post moves.

[00:30:26] Speaker 04:
And it has claims that also say that you don't get that continuity until you have at least several threads that occur.

[00:30:35] Speaker 04:
So again, in the lifecycle of this connector, start to put it onto the interface port.

[00:30:42] Speaker 04:
When you touch the interface port, you might not have continuity.

[00:30:45] Speaker 04:
When you're threaded by one thread, you might not have continuity.

[00:30:49] Speaker 04:
When you're turning it, you might not have continuity.

[00:30:51] Speaker 01:
That's like saying a picture is not hung perfectly on the wall until you put two nails in it rather than one, because it's going to hang tilted.

[00:30:57] Speaker 01:
Until it's in operation, connected to the components it's supposed to be used with, you wouldn't expect it to necessarily fully operate it.

[00:31:04] Speaker 01:
But when it is connected to the components in a full integrated circuit, you would expect it to work that way.

[00:31:10] Speaker 04:
But the claims don't provide any limitations.

[00:31:13] Speaker 01:
You're saying a transistor is not a transistor if it's not plugged into a power source.

[00:31:18] Speaker 01:
You're saying a transistor is not a transistor if it's not plugged into a power source.

[00:31:23] Speaker 01:
That's your argument.

[00:31:25] Speaker 04:
I'm not arguing that at all.

[00:31:27] Speaker 04:
I'm saying a transistor is a transistor if it's not plugged into a power source.

[00:31:31] Speaker 04:
A continuity member is a continuity member even if, at a particular point in time, it's not providing

[00:31:39] Speaker 04:
a continuous electrical ground path.

[00:31:42] Speaker 02:
So the point in time is when it's not on?

[00:31:45] Speaker 02:
Is that what you're saying?

[00:31:47] Speaker 04:
No, no.

[00:31:49] Speaker 04:
And maybe we should step back.

[00:31:50] Speaker 04:
What's the purpose of a capacitor?

[00:31:52] Speaker 01:
Explain it to me.

[00:31:53] Speaker 04:
Of a capacitor?

[00:31:55] Speaker 01:
If I'm exceeding your electrical engineering, you can tell me.

[00:31:58] Speaker 04:
I would not want to... I'm a chemical engineer, I would not want... Resistor.

[00:32:03] Speaker 01:
I mean, what's the purpose of a resistor?

[00:32:04] Speaker 04:
To provide resistance.

[00:32:05] Speaker 01:
Okay, to provide resistance.

[00:32:07] Speaker 01:
Is a resistor providing resistance when it's not sitting in a circuit?

[00:32:12] Speaker 01:
In a circuit, it's connected to nothing.

[00:32:13] Speaker 01:
Is it providing resistance?

[00:32:14] Speaker 01:
It's a little tiny piece in my hand.

[00:32:18] Speaker 01:
Is it providing resistance?

[00:32:20] Speaker 04:
No, and it's still a resistor.

[00:32:21] Speaker 01:
But yet you're still calling it a resistor, and the definition of a resistor

[00:32:25] Speaker 01:
as claimed, would still be something that provides resistance.

[00:32:29] Speaker 04:
That's somewhat our point.

[00:32:31] Speaker 04:
A continuity member is a continuity member regardless of whether it's in the device or not.

[00:32:41] Speaker 02:
Did the board make any specific finding that in the sandwiched configuration that the continuity provided would be consistent

[00:32:54] Speaker 02:
In other words, that there was never a point in time in which it would not consistently provide the electrical connection.

[00:33:02] Speaker 04:
So what the board said in its decision... You can answer that yes or no.

[00:33:06] Speaker 02:
Did they make that finding or not?

[00:33:08] Speaker 04:
Whether it was consistent contact?

[00:33:11] Speaker 04:
I think yes, because they dealt with, for example, the dependent claims.

[00:33:17] Speaker 02:
But they were assuming... The only point in the

[00:33:22] Speaker 02:
board's opinion that you pointed us to with respect to the sandwich configuration is where the board said it was talking about its own interpretation of what was claimed by independent claim one, right?

[00:33:34] Speaker 02:
Which doesn't need consistency.

[00:33:36] Speaker 02:
So they never made a finding that the prior art, when put together, would have a consistent connection, right?

[00:33:44] Speaker 04:
So if you're equating consistent with maintained, my answer is the dependent claims

[00:33:52] Speaker 04:
They addressed, in fact, PPC never even separately argued the dependent claims that had the terms maintained in it.

[00:34:00] Speaker 04:
Certainly argument was made and they found that those claims were obvious.

[00:34:06] Speaker 02:
So that was a finding.

[00:34:09] Speaker 02:
You keep telling us that even under the alternative claim construction that PPC is proposing that that finding with respect to the sandwich configuration could stand.

[00:34:18] Speaker 02:
And my question is, where did they make a finding

[00:34:21] Speaker 02:
under the alternative claim construction.

[00:34:26] Speaker 04:
I can't say that there is a specific portion of the decision where they explicitly said that under either construction, the sandwiching embodiment meets all of the elements of the claims.

[00:34:41] Speaker 04:
Again, we continue to fall back on, you certainly can make that decision because there is no harm if you do that here.

[00:34:51] Speaker 04:
There were sufficient evidentiary findings to allow you to make that decision.

[00:34:56] Speaker 01:
Okay.

[00:34:57] Speaker 01:
Thank you, Mr. Walters.

[00:34:59] Speaker 01:
Mr. Jakes, we'll give you about two minutes of rebuttal time.

[00:35:09] Speaker 02:
Mr. Jakes, was it a conscious decision on your part to only address the press fit embodiment and not address the sandwich embodiment?

[00:35:18] Speaker 03:
No, Your Honor, but there are no findings about

[00:35:21] Speaker 03:
this supposed configuration of sandwiching providing that continuous electrical contact.

[00:35:29] Speaker 02:
Why didn't you mention that in your brief?

[00:35:31] Speaker 03:
I believe we did.

[00:35:32] Speaker 03:
That's why we challenged the claim construction because there's nothing that shows that these supposed configurations meet that limitation.

[00:35:42] Speaker 03:
I think if you look at the board's opinion where it discusses our argument about requiring maintaining electrical contact

[00:35:50] Speaker 03:
the board said we don't really have it recognize the debate about whether or not this configuration would do that that's the the other configuration said we don't have to decide that because it's not in the client where they say that that's it uh... i believe it eight twenty six twenty six and uh... there's nothing for this make a difference right if there's there's nothing expressly indicating they're not going to decide something that we shouldn't interpret their findings of having decided it there's uh...

[00:36:20] Speaker 01:
nothing about sandwitching.

[00:36:22] Speaker 01:
I don't see it in 826, so why don't you find it for us.

[00:36:26] Speaker 01:
We'll still give you a minute to talk afterwards.

[00:36:28] Speaker 03:
Well, on 826 there's a

[00:36:49] Speaker 03:
And it comes from A25.

[00:36:51] Speaker 03:
There's a discussion of whether or not this particular sketch would meet the continuous electrical contact that we've said.

[00:37:01] Speaker 03:
And the board says, we are satisfied.

[00:37:04] Speaker 03:
It makes contact in the manner required by independent claimants.

[00:37:09] Speaker 01:
Where are you?

[00:37:09] Speaker 01:
Page 25?

[00:37:10] Speaker 03:
On A26 at the bottom, where the board says, we are satisfied.

[00:37:17] Speaker 03:
that it makes contact in the manner required by independent claim one.

[00:37:21] Speaker 03:
It never resolves the question of whether it's continuous electrical contact as we've argued.

[00:37:27] Speaker 03:
It just says in the manner we've said is to claim one.

[00:37:32] Speaker 01:
That's not the same thing as saying we are not going to reach a finding.

[00:37:35] Speaker 03:
No, no, no, Your Honor.

[00:37:36] Speaker 01:
I'm saying... You overstated it when you talked about that.

[00:37:39] Speaker 03:
They did not reach that finding.

[00:37:40] Speaker 03:
They said they did not resolve that evidentiary dispute.

[00:37:44] Speaker 01:
But you said that they said they weren't resolving the evidentiary dispute.

[00:37:47] Speaker 01:
They don't say that.

[00:37:49] Speaker 03:
They don't say that explicitly.

[00:37:50] Speaker 03:
You're right, Your Honor.

[00:37:51] Speaker 03:
By deciding the claim construction, they effectively avoided that issue.

[00:37:55] Speaker 01:
Do you have a final thought?

[00:37:58] Speaker 03:
I just want to point out that the maintain word is also in some of the independent claims.

[00:38:03] Speaker 03:
It's in independent claim one of the 060 patent, independent claim seven of the 353 patent.

[00:38:08] Speaker 03:
I have the list.

[00:38:09] Speaker 01:
All right.

[00:38:11] Speaker 01:
Thank you, Mr. Jakes.

[00:38:12] Speaker 01:
Thank you, Mr. Walters.

[00:38:13] Speaker 01:
This case is taken under submission.