[00:01:05] Speaker 02:
All right, our next case this morning is number 16-1517, UUSI versus Wamasco Roof Systems.

[00:01:14] Speaker 02:
Mr. Barber.

[00:01:21] Speaker 03:
Good morning, Your Honors, and may it please the Court.

[00:01:23] Speaker 03:
This appeal is not collateral stop by common law or the regulation because of the borough's IPR.

[00:01:30] Speaker 03:
As an initial matter,

[00:01:32] Speaker 03:
Well, Boston did not raise this issue of collateral estoppel before the PTAB, even though they had the Brose decision before the final written decision in this case, as they acknowledge in their brief.

[00:01:43] Speaker 03:
But even if they didn't waive the issue, the Brose IPR did not construe claims 15 or 16 of the 802 patent.

[00:01:50] Speaker 03:
Instead, they're trying to use the construction of claims 7 and 14 in the Brose IPR to bar the claims in this case, and this attempt fails.

[00:01:58] Speaker 03:
For collateral... Let's turn to some other issues, okay?

[00:02:02] Speaker 03:
Okay, Judge.

[00:02:03] Speaker 00:
On page 39 of the blue break, you argue that the PTAB, quote, did not provide any citation of the record in support of its finding that logic means a type of circuitry such that means plus function tests need not apply.

[00:02:19] Speaker 00:
So let me turn you to JA 11 and 12.

[00:02:30] Speaker 00:
It looks to me like the PTAB's laying out its reasoning, including citations.

[00:02:35] Speaker 00:
How can you say that it didn't provide any citations in the record?

[00:02:39] Speaker 03:
It didn't provide citations in the record in the fact that it substituted the word circuit for logic unit.

[00:02:47] Speaker 03:
They found a citation in the specification that refers to logic circuitry, and they used that to say that it was logic unit four.

[00:02:56] Speaker 03:
When we said that they did not have any

[00:02:59] Speaker 03:
They didn't find any reason for why logic unit four should be substituted out, which is the claim language in circuitry should be used instead.

[00:03:07] Speaker 03:
So there's a lack of clarity in that argument, I apologize.

[00:03:10] Speaker 03:
But I agree that the PTAB does refer to specification in arguing its conclusion that means plus function does not apply.

[00:03:19] Speaker 03:
We think that is an error.

[00:03:21] Speaker 03:
Because using logic unit four is a nonce term.

[00:03:26] Speaker 03:
And while it's not controlling, the MPEP does say

[00:03:29] Speaker 03:
Unit four is a nonce term that means plus function and would apply.

[00:03:34] Speaker 00:
On page 29 and 30, you make an argument basically saying that PTAB was incorrect to use Wabaso's expert testimony because yours was, quote, far more credible.

[00:03:54] Speaker 00:
Come on.

[00:03:55] Speaker 00:
Isn't that a question of fact?

[00:03:58] Speaker 03:
It's a question of fact, but the PTAB didn't explain.

[00:04:02] Speaker 03:
I think the PTAB is required to give explanations for its conclusions.

[00:04:05] Speaker 03:
I don't think the PTAB did this in their written decision.

[00:04:07] Speaker 03:
I don't think they gave the explanations for their conclusions.

[00:04:12] Speaker 03:
What they did is they make inclusory statements that elements, or that the prior art could be combined.

[00:04:18] Speaker 03:
They make inclusory statements that are supported by the record.

[00:04:21] Speaker 03:
They didn't explain why the different elements could be combined.

[00:04:26] Speaker 03:
And I think they're required under the APA, under the Shaw decision in conjunction with Black and Decker, that they're required to explain why the prior art should be combined.

[00:04:35] Speaker 03:
What elements are missing in, for example, ITO that Kinzel supplies.

[00:04:41] Speaker 03:
And they didn't do that in this case.

[00:04:42] Speaker 03:
They said that the prior art references are in the same field.

[00:04:46] Speaker 03:
We don't dispute that.

[00:04:47] Speaker 03:
But just because prior art references are in the same field doesn't mean that it's obvious to combine them.

[00:04:52] Speaker 03:
And the PTAB did not give its explanations for why

[00:04:56] Speaker 03:
The priority should be combined.

[00:04:57] Speaker 03:
They essentially took the arguments of Abasto and adopted them without any explanation.

[00:05:01] Speaker 03:
We feel that that is an error, a reversible error, because they have to explain why they reached the conclusion they did, other than that this is the way it is.

[00:05:12] Speaker 03:
And the PTAB also erred in the claim construction of the terms travel path and logic unit four.

[00:05:22] Speaker 03:
And that goes into the obvious analysis.

[00:05:24] Speaker 03:
Because if we take UUSI's claim construction, the obvious analysis falls away because as the PTAB acknowledges in its final written decision, it's based on the claim construction.

[00:05:33] Speaker 03:
And if we look at the first term that we talked about in our brief travel path.

[00:05:37] Speaker 03:
Travel path was construed by the PTAB to mean the all or part of the travel path.

[00:05:43] Speaker 03:
That construction is inconsistent with the claim language of claim 15.

[00:05:46] Speaker 03:
Element B of claim 15 states that the

[00:05:51] Speaker 03:
The controller monitors all a part of the travel path while obstacle detection is conducted along the travel path.

[00:05:58] Speaker 03:
Because travel path has a modifier in some uses and not others, when the PTAB adopted the construction, adopting that modifier made the element B in claim 15 redundant.

[00:06:11] Speaker 02:
I don't understand your argument as to claim 15.

[00:06:14] Speaker 02:
15B talks about being able to detect

[00:06:21] Speaker 02:
by monitoring at least part of the travel path.

[00:06:25] Speaker 02:
So how can it be if the claim is satisfied by monitoring part of the travel path that the claim has to cover the whole travel path?

[00:06:35] Speaker 02:
I don't understand that.

[00:06:36] Speaker 03:
I don't think it does have to cover the whole travel path.

[00:06:39] Speaker 03:
I think the way claim B should be read is that it's monitoring at least a part of the entire travel path.

[00:06:47] Speaker 02:
If it doesn't have to cover the whole travel path, then the

[00:06:51] Speaker 02:
claim construction of travel path is correct.

[00:06:54] Speaker 03:
That's not true, with all due respect, Judge, because travel path in 15 just says travel path, 15A just says travel path.

[00:07:01] Speaker 03:
In the second part of 15B, it also says travel path.

[00:07:04] Speaker 03:
I think when the patentee uses the modifier, a part of the travel path, he means a part of the travel path.

[00:07:10] Speaker 03:
And when he doesn't, he has to mean something else.

[00:07:13] Speaker 03:
And we contend it means the entire travel path.

[00:07:15] Speaker 03:
And it makes sense, because opposite detection should happen along the entire travel path, and sensing should happen across the entire travel path.

[00:07:21] Speaker 03:
In that regard, travel path unmodified should mean entire travel path based on, I think, the language that is chosen by the patentee as well as the specification.

[00:07:30] Speaker 02:
But the claim 15 is infringed if you monitor part of the travel path and prevent obstructions from injuring people and part of the travel path, right?

[00:07:44] Speaker 03:
It would be infringed if it's monitored for part of the travel path and the opposite detection is long the entire travel path.

[00:07:50] Speaker 02:
Well, how can you have obstacle detection on the entire travel path?

[00:07:53] Speaker 02:
Do you only monitor a part of it?

[00:07:55] Speaker 03:
Well, you don't need to monitor.

[00:07:57] Speaker 03:
It's just a practical consideration of, excuse me, monitoring.

[00:08:02] Speaker 03:
You don't need to monitor the entire.

[00:08:04] Speaker 03:
You can monitor less than the size of an obstacle, and you can still detect the obstacle.

[00:08:09] Speaker 03:
One of the problems, and one of the issues that Webasto raises.

[00:08:11] Speaker 02:
Well, but your problem with the prior art, you say the prior art only detects

[00:08:18] Speaker 02:
obstacles in part of the travel path, not the whole travel path.

[00:08:22] Speaker 02:
What I'm saying to you is that 15 is infringed if you find an obstacle in part of the travel path.

[00:08:29] Speaker 02:
In other words, there's no requirement that the detection system apply to the entirety of the travel path.

[00:08:43] Speaker 03:
I think that's wrong based on our construction of the term travel path, meaning entire travel path, because the detection... It seems to me on the face of it, it's infringed if you have a detection as part of the travel path.

[00:08:56] Speaker 02:
And if it's infringed when you do that, I don't see how you can adopt a different construction for obviousness purposes.

[00:09:10] Speaker 03:
There it is.

[00:09:11] Speaker 03:
Fair enough, Judge.

[00:09:11] Speaker 03:
And I do think, I think the problem that the PTAB had and Webasto, where we have the difference, is the fact that they conflate monitoring with detection.

[00:09:20] Speaker 03:
And I think there is a difference between, and the claim says it, the way we read the claim is that monitoring over part of the travel path for optimal detection over the entire travel path.

[00:09:30] Speaker 03:
And I do think that is not, I think that's practical.

[00:09:35] Speaker 03:
I think when we talk about what the PTAB talks about and Webasto argues is at the initial

[00:09:40] Speaker 03:
start of motors, there's not always the monitoring.

[00:09:44] Speaker 03:
But obstacle detection does happen the way it's described in the patent because the algorithm corrects for that and adjusts for that.

[00:09:50] Speaker 03:
So there's obstacle detection along the entire travel path, even though it might not necessarily be modern for the entire travel path.

[00:09:57] Speaker 03:
And I think that seems to be a distinction.

[00:10:02] Speaker 02:
How can you have obstacle detection for the whole travel path if you only monitor part

[00:10:07] Speaker 03:
If you're monitoring for, if we're talking about the obstacle detection of, say, an arm getting caught in a window, if you monitor for half the width of the arm, you're going to detect the arm, even though the arm would be in... It says part of the travel path.

[00:10:22] Speaker 02:
Right, and we are... If you're only monitoring part of the travel path, how can you have obstacle detection for the whole travel path?

[00:10:33] Speaker 03:
Well, if you're monitoring a portion of the travel path, they detect if there's an obstacle in the travel path.

[00:10:38] Speaker 03:
I mean, I think if there's an obstacle detection anywhere in the travel path, it's detected, and then that limitation is met.

[00:10:46] Speaker 03:
And the algorithms that are used do account for the fact that, as I said, at the motor startup, you're not always going to have the monitoring at the very beginning, but there's an algorithm that's disclosed that goes back, and it corrects for that by setting a threshold value that is then updated as the obstacle-detect threshold is updated through the

[00:11:04] Speaker 03:
continued operation of the vehicle, sorry, of the device.

[00:11:10] Speaker 03:
And I see I'm approaching my time, so I don't know if you have any questions.

[00:11:13] Speaker 03:
If not, I'd like to reserve it for rebuttal.

[00:11:16] Speaker 02:
Okay, thank you.

[00:11:17] Speaker 02:
Thank you.

[00:11:24] Speaker 01:
Mr. Sanders?

[00:11:25] Speaker 01:
Thank you, Your Honors.

[00:11:28] Speaker 01:
The construction of travel path makes no difference for exactly the reasons that Judge Dyke elucidated on the appellant.

[00:11:38] Speaker 01:
If Patent Office understood this appropriately, the prior art teaches monitoring and obstacle detection along most of the travel path.

[00:11:49] Speaker 01:
That's sufficient because the claim only requires it along at least part of a travel path.

[00:11:53] Speaker 01:
And that resolves the invalidity of those claims with respect to the term travel path.

[00:12:00] Speaker 01:
The PTAB board explained its decisions in its 38-page opinion.

[00:12:06] Speaker 01:
They're supported by substantial evidence.

[00:12:08] Speaker 01:
The PTAB cited to our petition that's cited to our expert declaration that includes that evidence.

[00:12:14] Speaker 01:
The PTAB specifically found that the paragraphs of UC's expert declaration

[00:12:22] Speaker 01:
that were offered in opposition were not credible, that stated right in the decision.

[00:12:26] Speaker 00:
Let me cut through to my interest.

[00:12:29] Speaker 00:
Are you standing by this collateral estoppel argument?

[00:12:33] Speaker 01:
Your Honor, we believe that the PTO got this right on the merits.

[00:12:37] Speaker 01:
We believe that collateral estoppel is an alternate way to reach the same conclusion.

[00:12:42] Speaker 01:
And this court has said in cases such as Ohio Willowwood and Sovereign Software, that the issues need to be the same, but the claims need not be the same.

[00:12:50] Speaker 01:
And here the issues are exactly the same.

[00:12:53] Speaker 01:
The exact term travel path was interpreted in the brose IPR that was not appealed.

[00:12:58] Speaker 01:
And the term logic was interpreted in the brose IPR that was not appealed.

[00:13:04] Speaker 01:
There are no substantive differences between the claims.

[00:13:08] Speaker 01:
Claim 14 that was invalidated in brose and claim 15 that was invalidated.

[00:13:12] Speaker 00:
In the red brief, you argue that the agency's estoppel role also bars

[00:13:21] Speaker 00:
are re-litigation of the board's claim constructions.

[00:13:25] Speaker 00:
The rules apply, the agency rule applies to claims that were refused or canceled.

[00:13:34] Speaker 00:
That's not what happened here.

[00:13:35] Speaker 00:
It was ruled invalid.

[00:13:39] Speaker 01:
Your Honor, after the PTAD rules claims invalid, a certificate of cancellation is issued.

[00:13:45] Speaker 01:
that has not happened in this particular case, but the claims were finally refused by the Patent Office in finding them to be unpatentable in the IPRs, and that decision was not appealed.

[00:13:56] Speaker 01:
A certificate of cancellation will issue when the PTO deems it appropriate to do so.

[00:14:00] Speaker 02:
What does the statute can't mean in terms of estoppel that if there's a final decision by the board invalidating

[00:14:08] Speaker 02:
the claims and it's an appeal that changes that result, that you don't look to the appeal to see whether there's an estoppel, right?

[00:14:18] Speaker 01:
Absolutely, Your Honor.

[00:14:19] Speaker 01:
You would need to look to the appeal.

[00:14:21] Speaker 01:
In this case, the prior decision, the brose IPRs were not appealed.

[00:14:25] Speaker 01:
It became final by virtue of UC's decision not to appeal from the brose IPRs.

[00:14:32] Speaker 01:
So that scenario is not present here.

[00:14:34] Speaker 01:
I agree it would need to be considered if that scenario were present.

[00:14:40] Speaker 02:
Okay, anything further?

[00:14:42] Speaker 02:
Thank you, your honor.

[00:14:43] Speaker 02:
Okay, thank you.

[00:14:44] Speaker 02:
Thank both counsels.

[00:14:45] Speaker 02:
Wait, sorry.

[00:14:47] Speaker 02:
You have some rebuttal time.

[00:14:48] Speaker 03:
I just had a brief point on rebuttal, your honor.

[00:14:53] Speaker 03:
I think the, regardless, I think there's an additional error with the obviousness analysis that the PTAB did in the fact that they're required to do an element by element analysis of the prior, and mapping it to claim 15 and claim 16.

[00:15:06] Speaker 03:
They didn't do that

[00:15:07] Speaker 03:
I think the failure to do, I think that's required by KSR, that there has to be, it has to be shown in the prior, where each element of claim 15 was done, and that wasn't done in this case.

[00:15:18] Speaker 03:
Because that wasn't done, the PTADS, obviously this determination needs to be remanded at the very least.

[00:15:25] Speaker 03:
And as we say in our briefs, we think it should be reversed, but at the very least it needs to be remanded in order to do an element basis.

[00:15:32] Speaker 03:
The priority doesn't meet the claim 15 element by element basis and the PTAB only looked at two and a half of the elements of the claim and that's insufficient under KSR and the Administrative Procedure Act.

[00:15:47] Speaker 03:
If there aren't any other questions.

[00:15:49] Speaker 03:
Okay, thank you very much.