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All right.

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The United States Court of Appeals for the Federal Circuit is now open pending session.

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I've got to say, the United States and its honorable court.

[00:00:18] Speaker 04:
Good morning.

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Please have a seat.

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Welcome to everybody here.

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We have a full morning of arguments before us.

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We've got five cases.

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before the court this morning.

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Four of them are for separate argument this morning.

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One case has been reviewed and decided on the briefs.

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Before we get to our first case, there is an administrative matter we'd like to attend to.

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Chris, can you stand, please?

[00:00:57] Speaker 04:
Colleagues, I move for admission of Christopher P. McNutt.

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who's a member of the bar and he's in good standing with the highest court of California.

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And I'm known of his credentials and I'm satisfied that he possesses the necessary qualifications.

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And before I pass the matter over to Judge Shaw, I'd like to say that Chris, you know, they say that time flies when you're having fun.

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And I think they also say that time flies when you're working hard.

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And as my clerk just passed here, I think that it's the latter.

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Your work ethic has shown itself in different ways.

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You've not only earned the respect of your peers, but you've also had excellent work product.

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I stand confident that standing before me is one of America's future leading practitioners.

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It's been a pleasure working with you, and I wish you the best of luck.

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I turn the matter now over to Judge Shaw.

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Judge Raina, thank you.

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Many papers were filed in connection with this motion, and Wallach and I are all supporting.

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All fake news.

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And Judge Wallach and I have reviewed them, and we are pleased to grant the motion.

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Congratulations.

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All right, let's let's move on to our first case of this morning cables ink versus chums ink docket 16 1823 mr.. Ladra

[00:02:52] Speaker 02:
Yes, Your Honor.

[00:02:53] Speaker 04:
And you reserved three minutes for rebuttal, is that correct?

[00:02:56] Speaker 02:
Yes, I reserved three.

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Okay, you may proceed.

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Thank you, Your Honor.

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The determinative issue in this case, indeed the issue that we believe requires reversal in this matter, is the question of whether there is any substantial evidence that the prior art contained key prior art reference, the Monroe reference, contained any reference

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contained anything that discloses the critical resilient cable or member element of the claims.

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We contend that it's very clear that it does not and that the board erred in concluding otherwise.

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Let me ask you a question.

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Yes.

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In the red brief at 17 and 18, the appellee says that after the board construed the term resilient

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Cable's repeatedly confirmed that Monroe teaches the resilient limitation.

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And then they have a list.

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I won't go through it all, but there's five different items.

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Do you disagree with any of them?

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Yes, Your Honor, and we set it out in our brief.

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Indeed.

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What record evidence supports that argument?

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Well, I think the clearest, which actually it was in the initial patent owner's response,

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cite me to the appendix.

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Yeah, I have it here, your honor.

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Here it is.

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In the original patent owner's response at page two, so we set out immediately at the beginning of this case, we say, note, and I quote, no cited reference.

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This page, the appendix is this page.

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This is page two of the patent owners.

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It's actually the appendix, the appendix page number is 240.

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Oh, OK.

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OK.

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Thank you.

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It happens to be page two of the actual document.

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We say, and I quote, no cited reference teaches a resilient cable as described and claimed in the 268 patent connected to a temporary retainer.

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So we started out by saying there's no reference that describes it.

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The problem that has occurred, and we do detail this in the brief.

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We go through each of these.

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In fact, one of the instances which is detailed in the brief, I think they quote, council is saying that there is a resilient member but not a resilient cable.

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Unfortunately, Monroe discloses a resilient member but not a cable appendix at 258.

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Exactly.

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And I have that highlighted.

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The most important point here is that nobody was confused in our position.

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I mean, this issue was

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was briefed and it was discussed at the hearing.

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In fact, there was a long colloquy during the argument in which... Why would you argue that Monroe doesn't disclose the resident cable?

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Because it doesn't.

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And in fact, counsel has conceded that.

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Monroe itself is a newspaper article.

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And what it does say, in fact, the only thing it says about the characteristics of the monofilament is that it is so thick and stiff

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that the only knot it would take would be big enough to tie up a small ship, indicating that it doesn't have the required resiliency to be able to return to its original shape.

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How does that indicate it?

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Well, because it's so stiff.

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We don't know, in fact, if it will even take... He ties it onto his glasses with fishing line, I think, and it hangs down behind his head.

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And there's nothing that says that it doesn't move up and down or flex.

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OK.

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That's the point.

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There is nothing that says that.

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And so the question is, how do you conclude that?

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You're concluding that it doesn't.

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I'm not concluding it.

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That's another thing to keep in mind here is that, as in magnum oil, the Burton always rests with the challenger.

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It's not our job to, in fact, prove that it doesn't have that characteristic.

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It's the petitioner's job to prove that it does.

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Well, Counselor, it... So Salson...

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I guess he's a fisherman, who they interviewed in Monroe, the prior article.

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He says that his retainer never hangs up, never drinks from his neck.

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So it is tied onto his glasses, right?

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That's not the issue here.

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The issue actually is the board's construction.

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Because what the board says is that it has to be a resilient cable.

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Nobody's arguing that he didn't solve the stand-off-the-neck problem.

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That's not the issue here.

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The issue here is whether it has the second key property, and I'll explain that in a second, but the actual claim construction, the board construes the resilient portion of resilient cable, meaning having sufficient stiffness to maintain its shape.

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That's not contested.

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And to return to its original form after being bent.

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Now, why is that important?

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That's not a trivial distinction.

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The board said that for a reason.

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The reason is that even if it's somewhat resilient,

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If it doesn't return to its original shape, then over time, you can see what's going to happen.

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It's going to basically start to droop, and it's not going to perform its function.

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The other problem, the concomitant point, is that if it doesn't have sufficient resiliency, one of the principal applications for this is on sunglasses.

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What's going to happen if you have this thing sticking out?

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Would an individual, a person skilled in the art, look at this and say, well, let me take a look at what 300 pound test monofilament looks like?

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and find that you can bend it, you let it go, and it's going to spring back to a straight line?

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You can't assume that.

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In fact, in the record, Sosin himself says, and gives an example.

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In fact, it appears, actually it's in the, this was part of the record.

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Why would not a person skilled in art

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look at that and just apply practical sense to?

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I will explain that, and it's in the record.

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So Sosin also submitted a declaration.

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In paragraph 14 of that declaration, and this actually appears in appendix 351, 0351.

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It's actually part of the hearing, but they actually quote this.

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So in a sworn declaration,

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He says that two very famous fishermen using the monofilament extends rearward from the head and wearing the glasses.

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But in the next paragraph, he says, quote, other fishermen, however, did not like the eyewear retainer sticking out behind their heads.

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So they rolled the monofilament line around something round, such as a pencil, to produce a coil, and then attached the coil monofilament to their glasses to create a tight-fitting retainer that gripped the back of the head.

[00:10:00] Speaker 02:
That is exactly the opposite.

[00:10:01] Speaker 02:
What he's saying there is that you take the monofilament, you wrap it around a pencil, and it'll hold its position.

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It'll hold its shape.

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You actually get a little bit of a spring, and then it'll hold tightly to the back of the head.

[00:10:13] Speaker 02:
Clearly not the invention.

[00:10:15] Speaker 02:
Now, the problem with that is that you have a lot of different, in other words, monofilament is not a monolith, so to speak.

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The record shows, and in fact the evidence submitted by the petitioner shows, that

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It can have various characteristics.

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What kind of monofilament was he using in the picture in the Monroe reference?

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What kind of properties did it have?

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I mean, what's amazing here is that nobody tested it.

[00:10:39] Speaker 02:
In every case that I've ever been in, an expert would come in and say, OK, here's the monofilament.

[00:10:43] Speaker 02:
Let's run it through some tests.

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I'll take some pictures.

[00:10:45] Speaker 02:
I'll submit it.

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I'll give a declaration.

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And I think there's a reason for that.

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Solson is very slippery.

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He goes back and forth on the characteristics of this device.

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And the principal legal error in this case

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is that the board basically, in fact, it follows this exact colloquy at the hearing.

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The board basically was confused.

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It didn't know exactly what property this had.

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Did it fulfill the key claim limitation that it has to return to its original shape after you bend it?

[00:11:15] Speaker 04:
And in fact, later... What is its original shape after you bend it?

[00:11:20] Speaker 04:
I'm sorry.

[00:11:21] Speaker 04:
What is its original

[00:11:23] Speaker 04:
shape after you bend it.

[00:11:24] Speaker 04:
You're talking about, it springs back to a straight line?

[00:11:29] Speaker 02:
If I may, Your Honor, I actually have the cable.

[00:11:33] Speaker 04:
I'm glad you brought that.

[00:11:34] Speaker 04:
I'm a fisherman, and I've seen a lot of 300 and 200 pound monofilions.

[00:11:41] Speaker 04:
I'm looking at the practical usage or view that a placida would have in this situation.

[00:11:47] Speaker 02:
And so am I, Your Honor.

[00:11:47] Speaker 04:
But show us there.

[00:11:48] Speaker 04:
That's not 300 pound monofilions.

[00:11:50] Speaker 02:
No, this is the invention.

[00:11:52] Speaker 02:
This is just to illustrate what is meant by returning to its original shape.

[00:11:57] Speaker 02:
So if you bend it, it goes back.

[00:12:00] Speaker 02:
It just goes like this.

[00:12:01] Speaker 02:
I also said earlier that if it's too stiff, what's going to happen is not going to perform its function.

[00:12:07] Speaker 02:
Because if you get in the car, we can't really augment the record at this point.

[00:12:14] Speaker 02:
But if you take that 300 pound monofilament, you strap that to your glasses, and you jump in a car,

[00:12:19] Speaker 02:
and you have a headrest, you're going to knock your glasses off your face.

[00:12:23] Speaker 02:
I mean, 300-pound monofilament.

[00:12:25] Speaker 02:
I use it for shock tip it to go fish for tarpon.

[00:12:28] Speaker 02:
And in fact, the record actually reflects that.

[00:12:31] Speaker 02:
I mean, that's what he's saying.

[00:12:33] Speaker 02:
You bend that around something, and it's not going to come back.

[00:12:37] Speaker 02:
It's basically going to hold its position.

[00:12:39] Speaker 02:
But the point is that the record isn't sufficient.

[00:12:43] Speaker 04:
What we're arguing is that we're looking at an obviousness situation.

[00:12:49] Speaker 04:
and not anticipation.

[00:12:50] Speaker 04:
So it doesn't have to, you can't take a prior reference, a 300 pound monofilium, and say, this is the only thing that you can use, or that a posita would use, is 300 pounds.

[00:13:04] Speaker 04:
Why wouldn't they say, well, let me see if 200 pounds works.

[00:13:07] Speaker 04:
Let me see if 200 pounds works.

[00:13:09] Speaker 02:
Well, I don't think that's the law, Your Honor.

[00:13:13] Speaker 02:
I mean, in order to find obviousness, you have to have at least some number of references

[00:13:18] Speaker 02:
that contains every element of the patent.

[00:13:21] Speaker 02:
And here the only, absolutely the only thing, the only piece of art that was advanced for the resilient cable element of the patent was the Monroe reference.

[00:13:32] Speaker 02:
The Monroe reference says nothing about the resiliency of it.

[00:13:35] Speaker 05:
Well, it does.

[00:13:36] Speaker 05:
It says, he says that, I don't have that article in front of me anymore, but he says something

[00:13:43] Speaker 05:
It stays off my neck.

[00:13:45] Speaker 02:
But staying off the neck is not the issue, Your Honor.

[00:13:48] Speaker 05:
Well, it is in the sense that it's obviously implied that if he wears this thing on a day-to-day basis and uses it, it's going to be pushed and bumped against, and it goes back to its shape.

[00:14:05] Speaker 02:
But Your Honor is indulging in speculation.

[00:14:06] Speaker 02:
I mean, this is a fisherman.

[00:14:08] Speaker 02:
He's going to be in an open boat, OK?

[00:14:10] Speaker 02:
This thing is lashed onto his glasses with dental floss.

[00:14:13] Speaker 02:
It's obvious that he does it a number of times.

[00:14:16] Speaker 02:
It's a convenience.

[00:14:17] Speaker 02:
He's going out on a fishing trip.

[00:14:18] Speaker 02:
He lashes this stuff to his glasses.

[00:14:21] Speaker 02:
He probably takes it off at the end of the day.

[00:14:23] Speaker 02:
He's not going to encounter the same kind of day-to-day use that this was intended to solve.

[00:14:30] Speaker 02:
That's the whole point, Your Honor.

[00:14:31] Speaker 02:
This is speculative.

[00:14:33] Speaker 02:
We don't know what property this has based on the record.

[00:14:36] Speaker 02:
And the board didn't know it.

[00:14:38] Speaker 02:
Well, you do have the Visser testimony.

[00:14:41] Speaker 03:
with this or this is it's a here's the sum total of this is this is uh... uh... declaration for his because of the meaning of the word monofilament is using the new newspaper article to be single untwisted synthetic filaments of nylon he said based on that description he would conclude the monofilament is an elongated piece of resilient plastic right but we don't know what his properties are property required by the claim is that

[00:15:09] Speaker 02:
When you bend it, it returns to its original position.

[00:15:13] Speaker 02:
Plus, this one statement, which you're on a read, is the only thing in the record.

[00:15:17] Speaker 02:
And it runs afoul of this Court's law, which basically says that you cannot rely on a mere conclusory statement.

[00:15:26] Speaker 02:
In fact, the Magnum Oil and Tools case, which is very instructive in this matter, says that.

[00:15:30] Speaker 02:
It says, and I quote, that to satisfy its burden of proving obviousness, a petitioner cannot employ near-conclusory statements.

[00:15:38] Speaker 02:
That's what we've got.

[00:15:39] Speaker 02:
This record is replete with conclusory statements that basically say, yeah, it's resilient.

[00:15:45] Speaker 02:
But they're ambiguous.

[00:15:47] Speaker 02:
It's resilient.

[00:15:47] Speaker 02:
We don't know what the heck.

[00:15:48] Speaker 04:
So in your view, being resilient means that if you poke it or you lean behind a headrest and pop back up?

[00:15:55] Speaker 04:
Well, what does that mean?

[00:15:56] Speaker 04:
OK.

[00:15:57] Speaker 04:
Well, I'm asking you.

[00:15:58] Speaker 02:
I mean, that's your argument.

[00:15:59] Speaker 02:
I think Your Honor is referring to the two statements that Sosin made.

[00:16:03] Speaker 04:
Because there is a statement regarding that.

[00:16:05] Speaker 02:
Yeah, in a deposition.

[00:16:05] Speaker 02:
In the prior reference.

[00:16:06] Speaker 02:
Which was not the prior art.

[00:16:08] Speaker 02:
OK.

[00:16:10] Speaker 02:
I can get to that.

[00:16:13] Speaker 02:
OK.

[00:16:15] Speaker 02:
The one point I want to make.

[00:16:18] Speaker 04:
You're into your rebuttal time.

[00:16:19] Speaker 04:
If you want to save it.

[00:16:21] Speaker 02:
I know, Your Honor, but this is critical.

[00:16:23] Speaker 02:
This is the issue.

[00:16:25] Speaker 02:
This is the principal issue.

[00:16:28] Speaker 02:
The court in its... Here.

[00:16:36] Speaker 02:
In the colloquy,

[00:16:38] Speaker 02:
got the hearing where they were going back and forth about, well, does it actually satisfy this limitation?

[00:16:45] Speaker 02:
And counsel for the petition, petitioner, this is Appendix 358.

[00:16:49] Speaker 02:
This is the hearing.

[00:16:54] Speaker 02:
The, the, the, the counsel for cables basically had explained this note, the, the, the dec, the declaration of Sosun where he's basically indicating that the monofilament does not have this property.

[00:17:06] Speaker 02:
And one of the panel members says, quote, do we have any reason to believe that it would not return to its original shape if it is just like Shonen Monroe, instead of bending and tight around the pencil?

[00:17:20] Speaker 02:
Well, that shifts the burden.

[00:17:23] Speaker 02:
As this court has indicated in the Magnum Oil Tools case, that cannot be.

[00:17:30] Speaker 02:
It's not our obligation to show that the art does not have the required property.

[00:17:36] Speaker 02:
is the petitioner's obligation to show that it does.

[00:17:39] Speaker 02:
And that's the fundamental error.

[00:17:40] Speaker 05:
There is nothing improper about that question.

[00:17:43] Speaker 05:
There is nothing improper.

[00:17:44] Speaker 02:
There's nothing about, there's nothing, I'm not saying it's an improper question.

[00:17:49] Speaker 02:
What I'm saying is, is it indicates, it's perfectly okay.

[00:17:52] Speaker 02:
You know, it's going to show me in the record, I would like to know.

[00:17:54] Speaker 02:
Okay, well there is nothing in the record.

[00:17:56] Speaker 02:
what does show is that the court recognizes that hey you know it's uncertain whether this has the right property you know maybe you can help me out that's a pretty serious question in the record how about the declaration that we were uh... well the declaration is what uh... says the opposite it's there there's deposition testimony of the two cents deposition testimony where he says that if he's been it's going to pop right but that doesn't say anything about whether it's the original why isn't that substantial evidence

[00:18:25] Speaker 02:
Because it's ambiguous.

[00:18:27] Speaker 02:
It requires interpretation.

[00:18:29] Speaker 02:
You can't say from that that it returns to its original shape.

[00:18:32] Speaker 02:
There is no way, shape, or form logically that you can do that.

[00:18:35] Speaker 02:
And in fact, that's another problem with this particular case in that the board simply doesn't explain what evidence it's relying on.

[00:18:44] Speaker 02:
Remember that the things that you're referring to, the deposition testimony and the declaration, played no part.

[00:18:51] Speaker 02:
They weren't briefed.

[00:18:52] Speaker 02:
They weren't discussed.

[00:18:53] Speaker 02:
nothing showed up in fact the only time the declaration shows up is in the record where we raised it.

[00:18:57] Speaker 03:
Excuse me, the definition is having sufficient stiffness to maintain its shape and to return to its original form after being bent.

[00:19:05] Speaker 03:
Right.

[00:19:06] Speaker 03:
And then you have, I guess, this Sosin, is it Sosin?

[00:19:09] Speaker 03:
You know, the Sosin statement at 987, he says, it stayed off my neck and 300 pound mono, you can't bend it or keep it down there.

[00:19:18] Speaker 03:
It will pop right back up.

[00:19:21] Speaker 03:
Isn't that sort of in line with

[00:19:23] Speaker 03:
returning to its original form after being bent.

[00:19:26] Speaker 02:
Right.

[00:19:27] Speaker 02:
But that statement goes one way, which says it can't be bent.

[00:19:30] Speaker 02:
And then in another statement, he says it can be bent, and it snaps back right to where it goes, I think, is what he says.

[00:19:37] Speaker 04:
Okay.

[00:19:38] Speaker 04:
You're well into your – we'll restore you a couple of minutes of rebuttal time, okay?

[00:19:43] Speaker 04:
Okay.

[00:19:44] Speaker 04:
I appreciate it, Your Honor.

[00:19:45] Speaker 04:
Thank you.

[00:19:45] Speaker 04:
Okay.

[00:19:45] Speaker 04:
Thank you.

[00:19:46] Speaker 04:
Let's hear from the other side now.

[00:19:52] Speaker 04:
Mr. Raich?

[00:19:53] Speaker 01:
I think your honor hit the nail on the head when we started off by talking about whether or not the concept of resilience was at issue in the proceedings below.

[00:20:23] Speaker 01:
The question was not raised below and was not raised or discussed until oral argument below.

[00:20:30] Speaker 01:
And therefore, according to the Fatton and Trial Practice Guide, it was waived by virtue of not being raised or briefed below.

[00:20:38] Speaker 03:
I thought you'd say it was raised below but agreed to.

[00:20:43] Speaker 01:
Raised in the oral argument.

[00:20:46] Speaker 03:
But there are all these sites here saying they acknowledge it's resilient.

[00:20:51] Speaker 03:
Yes.

[00:20:52] Speaker 03:
So it's not a question of the issue not being raised, but apparently they're agreeing to your position.

[00:20:57] Speaker 01:
I think it's both, Your Honor.

[00:20:58] Speaker 01:
I think the reason why there was an extensive briefing and there was an extensive discussion in the board's final decision is because the question of whether or not Monroe was, in fact, a resilient cable was not raised until oral argument.

[00:21:14] Speaker 01:
It wasn't something that was an issue.

[00:21:17] Speaker 01:
It just didn't come up.

[00:21:19] Speaker 01:
And we know,

[00:21:21] Speaker 01:
that that's the case because, as you say, there are many times in which there was concessions, expressed concessions, about the fact that Monroe was, in fact, a resilient member.

[00:21:31] Speaker 01:
And it makes sense because the definition, as Your Honors know, it's a straightforward deposition.

[00:21:37] Speaker 01:
When it's bent, having sufficient stiffness to maintain its shape and return to its original form after being bent.

[00:21:47] Speaker 01:
So what do we know?

[00:21:48] Speaker 01:
We know that Monroe testifies.

[00:21:51] Speaker 01:
or Monroe talks about the fact that it never, never touches his neck.

[00:21:56] Speaker 01:
It doesn't drape, it doesn't touch his neck, it sticks straight back off of his neck.

[00:22:01] Speaker 03:
Then when you have- Let me ask you, we were discussing at length with, the panel was with Mr. Ladra, the Monroe reference, which is, I guess, Mr. Sosin's little device.

[00:22:14] Speaker 03:
We also have the McKay reference, the Miller reference, and I guess the Chisholm reference.

[00:22:21] Speaker 03:
Do you rely for the resilience limitation on the Monroe reference, or do you find it in any of those other references?

[00:22:33] Speaker 01:
A resilient cable is in the Monroe reference and in the declaration submitted at the proceedings below.

[00:22:41] Speaker 01:
There is discussion of resilience, but only in respect to the temple connector in McKay.

[00:22:48] Speaker 03:
OK.

[00:22:48] Speaker 01:
So the concept of resilience is out there, but the concept of resilient member or cable is in Monroe and the declarations.

[00:22:56] Speaker 01:
It turns on Monroe, that aspect.

[00:22:57] Speaker 03:
OK.

[00:23:00] Speaker 01:
So on multiple occasions, as Your Honor indicated, there are five separate times where the point was conceded in briefing below.

[00:23:10] Speaker 01:
There was some argument about loose words from lawyers, but the types of

[00:23:17] Speaker 01:
concessions are too specific and too direct, in my view, to fall into that category of loose editing, as particularly where Cable's concedes that Monroe discloses a resilient member, not a cable.

[00:23:34] Speaker 01:
That's at 258.

[00:23:37] Speaker 01:
And then you have on top of all of that the actual evidence submitted, which

[00:23:46] Speaker 01:
From Monroe, you have Sosin bends a length of 200-pound test monofilament so thick and stiff that the only knot it would take would be big enough to tie up a small ship.

[00:23:57] Speaker 01:
To me, that's, as Your Honor was suggesting, you're bending it, and it's trying so hard to go back to its original form that you have to use a knot big enough to tie up a small ship.

[00:24:08] Speaker 01:
That suggests to a person of ordinary skill in the art, resilience.

[00:24:12] Speaker 01:
In fact, that's what Mr. Visser in his declaration said.

[00:24:16] Speaker 01:
More or less, the express language plus the definition of monofilament equals a resilient cable.

[00:24:24] Speaker 01:
Then you have the express declaration and express statements of Mr. Solson.

[00:24:28] Speaker 01:
Mr. Solson testifies.

[00:24:31] Speaker 01:
The monofilament 300-pound test model, people like different things.

[00:24:35] Speaker 01:
Some people don't care if it hits their neck.

[00:24:37] Speaker 01:
Others do.

[00:24:38] Speaker 01:
I did.

[00:24:38] Speaker 01:
That's why I came up with this to make sure it stayed off my neck.

[00:24:42] Speaker 01:
And 300-pound mono, you can't bend it or keep it down there.

[00:24:46] Speaker 01:
It will pop right back up.

[00:24:48] Speaker 01:
You bend it, it pops right back up.

[00:24:51] Speaker 01:
He's not a patent lawyer.

[00:24:53] Speaker 01:
He's not a lawyer at all.

[00:24:54] Speaker 01:
He's a fisherman.

[00:24:55] Speaker 01:
He's telling you what happens.

[00:24:56] Speaker 01:
You bend it, it pops back up.

[00:24:59] Speaker 01:
That's the definition of resilient in layman's terms.

[00:25:02] Speaker 01:
He says it again later when he's asked whether the 300-pound test monofilament maintained its shape in different weather conditions.

[00:25:10] Speaker 01:
He says, oh, yeah.

[00:25:12] Speaker 01:
You can't, if you take 300 pound test mono, you can bend it and it snaps right back to where it goes.

[00:25:18] Speaker 01:
So even in adverse conditions, you bend it, it goes right back where it goes.

[00:25:24] Speaker 04:
Can you, can you move on?

[00:25:26] Speaker 04:
Let's move on to the other issue, the motivation to combine.

[00:25:30] Speaker 04:
Sure.

[00:25:33] Speaker 01:
So the motivation to combine.

[00:25:40] Speaker 01:
Motivation to combine, in this case, we'll start with the motivation to combine Monroe and McKay.

[00:25:48] Speaker 01:
And our view, and as argued and presented evidence down below, three reasons.

[00:25:52] Speaker 01:
Simple substitution.

[00:25:54] Speaker 01:
These are the broad categories.

[00:25:56] Speaker 01:
Simple substitution of one element in the prior art for another.

[00:25:59] Speaker 01:
The application of a known technique or piece of prior art ready for improvement.

[00:26:04] Speaker 01:
And ultimately, a predictable use of elements in prior art according to their established functions.

[00:26:10] Speaker 01:
So what's the evidence?

[00:26:14] Speaker 01:
Visser testifies that one unskilled in the art would be motivated to combine Monroe and McKay because he would want to replace the connection method of Monroe, which everyone understands is cumbersome, tying fishing lines and knots and then heating it up with the established temple connector of McKay, the rubber connector, which

[00:26:39] Speaker 01:
because it's simpler, would allow, as he specifies, the connectors would allow users to easily attach the eyewear retainer to glasses without having to heat the monofilament and finish with a knot.

[00:26:54] Speaker 01:
In other words, it's user-friendly.

[00:26:56] Speaker 01:
If I take Monroe and instead of making them wrap it up with fishing wire and tie a knot and heat it every time they want to put it on or off their glasses, I use what exists, the McKay Temple connectors,

[00:27:09] Speaker 01:
and use known methods to connect the connectors to the elongate member, I have a user-friendly off-the-neck retainer.

[00:27:18] Speaker 03:
How would that be off-the-neck?

[00:27:21] Speaker 03:
Because the McKay, I'm looking at, yeah, the McKay reference, looking at the pictures of 420, 421 of the joint appendix, seems to hang down in the back.

[00:27:34] Speaker 01:
Well, so you have, McKay teaches a filament,

[00:27:39] Speaker 01:
a cord, basically, that's not a monofilament, not the 300-pound test.

[00:27:44] Speaker 01:
So you substitute what was draping on the neck for a material that doesn't drape on the neck, that's resilient and extends straight backwards from the neck.

[00:27:55] Speaker 03:
So you take... A Monroe-type.

[00:27:56] Speaker 03:
The McKay connectors.

[00:27:57] Speaker 01:
You're using the McKay connectors.

[00:28:00] Speaker 03:
With a Monroe-type monofilament.

[00:28:02] Speaker 01:
Yeah.

[00:28:02] Speaker 01:
So starting with... I should have made that more clear.

[00:28:04] Speaker 01:
Starting with Monroe,

[00:28:05] Speaker 01:
You already have an off-the-neck retainer, but what you don't have is user-friendly temple connectors.

[00:28:13] Speaker 01:
So you substitute McKay's temple connectors for the temple connection of Monroe, and you have an off-the-neck retainer with rubber connectors.

[00:28:23] Speaker 04:
I'm concerned whether the board actually made explicit findings or provided an explicit reason to combine the references.

[00:28:34] Speaker 04:
So it appears to me that perhaps they shifted that burden over to cables.

[00:28:40] Speaker 01:
Your Honor, I don't believe they did.

[00:28:42] Speaker 01:
I think I can help you with that.

[00:28:44] Speaker 01:
I think there are three express places where I believe the board identified its reasoning for the motivation to combine, and then a whole list of them, which I would call incorporation by reference.

[00:28:59] Speaker 01:
So in terms of the express motivations to combine,

[00:29:06] Speaker 01:
The board below indicated that a person of ordinary skill in the art would know and understand that there was, it would be a matter of simple substitution to switch materials commonly used in eyewear, in the field of eyewear.

[00:29:22] Speaker 01:
And that's specifically, they say, they state Miller specifically.

[00:29:28] Speaker 01:
What did you say?

[00:29:29] Speaker 01:
It's Appendix 17.

[00:29:32] Speaker 01:
Miller specifically discusses that in the field of eyewear,

[00:29:35] Speaker 01:
is well known to use a variety of materials, including, for example, coaxial cable to encircle a wearer's head.

[00:29:42] Speaker 01:
They go on and later say that Sosin already figured out the problem.

[00:29:46] Speaker 01:
So solving a known problem is another common motivation to combine.

[00:29:53] Speaker 01:
But the court indicate or the board indicates properly that, in fact, Sosin had already figured it out.

[00:29:59] Speaker 01:
They state at appendix pages 21 and 22,

[00:30:03] Speaker 01:
We are persuaded that Mr. Sosin's device disclosed in the Monroe reference solved the being in the way problem.

[00:30:10] Speaker 01:
Mr. Sosin stated, I don't like the light line that falls on my neck in the heat.

[00:30:15] Speaker 01:
In his development, the retainer never hangs up and never drapes around his neck.

[00:30:19] Speaker 01:
Indeed, it sticks straight out behind his head at all times.

[00:30:23] Speaker 01:
The glasses are worn.

[00:30:24] Speaker 01:
Later, the board says, given the concept of off the neck retainer was known in the prior art,

[00:30:29] Speaker 01:
is not definitive which preferences the petitioner looked at in designing its own product.

[00:30:34] Speaker 01:
That's at 29.

[00:30:37] Speaker 01:
Still elsewhere, the Board confirms the evidence that Chums and Crockies presented that, in fact, we're talking about a simple mechanical device and a simple substitution of materials.

[00:30:50] Speaker 01:
This is what the Board said in the context of challenges to Mr. Visser's statements that it was, in fact, a simple mechanical device and simple substitution.

[00:30:59] Speaker 01:
The board states at pages 24 and 25 of the appendix, the patent owner takes issue with Mr. Visser's statements that the invention is simple and that only simple substitution is required.

[00:31:11] Speaker 01:
We are not persuaded that Visser's declaration is insufficient and vague based on the patent owner's assertions alone.

[00:31:20] Speaker 04:
If you look at Monroe and see what he had done, I mean, in order to keep 300-pound monofilium on his glasses, he had to wrap the elastic dental floss.

[00:31:33] Speaker 04:
And even if you look at the picture, I mean, you could see... It's a lot of them.

[00:31:36] Speaker 04:
Yeah.

[00:31:37] Speaker 04:
And 300-pound monofilium is very difficult to use.

[00:31:43] Speaker 04:
I mean, we even have the evidence in the record that if you tie a knot with it, it'll hold a small ship.

[00:31:49] Speaker 04:
OK.

[00:31:49] Speaker 04:
Right?

[00:31:50] Speaker 04:
So for the board to say this is simple, just use one of these retainers.

[00:31:56] Speaker 04:
But really, do those retainers, does the board explain how those retainers would keep 300-pound monofilament in place?

[00:32:06] Speaker 04:
Or did it leave it up to cables to make that argument in the negative?

[00:32:12] Speaker 01:
It did not.

[00:32:13] Speaker 01:
And the next section I was going to, Your Honor, explains where the board went with that particular question.

[00:32:20] Speaker 01:
It goes on to talk about Mr. McMurray's testimony.

[00:32:24] Speaker 01:
And this is at 26 and 27 in the appendix.

[00:32:27] Speaker 01:
And Mr. McMurray's testimony, in essence, is this is how we've always done it at Cable's since 2002, meaning we take nylon cord and use a bonding agent to bond the rubber connectors to my elongate member.

[00:32:43] Speaker 01:
And what he goes on to say is all I did in this case was take the same bonding agent and a

[00:32:50] Speaker 01:
cable, a coated cable, with the same bonding agent on it, did the same process that I always did, and it worked.

[00:32:59] Speaker 01:
And in looking at that testimony, the board said, the evidence illustrates that the petitioner only required minimal experimentation and one set of trials by Sterling McMurran, a Trump's employee, to achieve an off-the-neck retainer.

[00:33:13] Speaker 01:
And that site is at 321 to 322.

[00:33:17] Speaker 01:
That might be wrong, but it's citing

[00:33:19] Speaker 01:
to his statements at 879 through 881 in the appendix.

[00:33:25] Speaker 01:
Petitioner demonstrates that it could be done and, in fact, was done with minimal effort, undermines patent owner's argument that it was somehow more than a simple substitution.

[00:33:35] Speaker 01:
So they went further.

[00:33:37] Speaker 01:
They looked at the evidence of what actually happened, and it was, in fact, a simple substitution.

[00:33:44] Speaker 01:
And that's what Mr. McMurray concluded.

[00:33:47] Speaker 01:
And that, again, that's at 26 and 27 of the appendix.

[00:33:51] Speaker 01:
Beyond all of the express motivations, it's also possible to read incorporation by reference to arguments that Chums made in its petition, Chums and Crockies.

[00:34:05] Speaker 01:
You can find that, too, at pages 16 and 17 of the appendix where the Court or, sorry, where the Board says, we are persuaded by Petitioner's claim, claim charts and arguments

[00:34:17] Speaker 01:
that the combination of references teaches temple retainers connected by a resilient cable or member.

[00:34:23] Speaker 01:
It goes on to cite pages 35 through 37 and 46 through 48 of the petition.

[00:34:31] Speaker 01:
And in those pages, supported by the declaration of Mr. Visser and Mr. McMurrin, Chums and Crockies argue that person of ordinary skill and the art would be motivated to combine, as we've been discussing,

[00:34:46] Speaker 01:
Monroe and McKay, because ultimately, one, it's more user-friendly if you use a rubber connector at the end instead of the floss that your honor was talking about.

[00:34:56] Speaker 01:
Two, it's more versatile because McKay discloses different places along the glasses where you can connect.

[00:35:02] Speaker 01:
And three, as we just discussed, the methodology is well known in the industry.

[00:35:14] Speaker 01:
It also, in those pages, talks about the connection or the motivation to combine Chisholm and Monroe.

[00:35:20] Speaker 01:
Monroe, of course, in that case, you already have the rubber connectors, and what you're doing is trying to solve the off-the-neck problem.

[00:35:27] Speaker 01:
And again, relying on the declaration of Visser in those, in that context, the problem is solved by Sosin.

[00:35:34] Speaker 01:
A person of ordinary skill in the art would know that it was solved, and would find it a simple matter of substitution.

[00:35:41] Speaker 01:
Thank you, Your Honor.

[00:35:42] Speaker 04:
Okay.

[00:35:42] Speaker 04:
Thank you.

[00:35:45] Speaker 04:
Mr. Latter, I'll restore two minutes of rebuttal time.

[00:35:48] Speaker 02:
Okay, thank you very much, your honor.

[00:35:55] Speaker 02:
Okay, with respect to, again, the notion of, I guess, for lack of a better term, waiver, you know, the bottom line is that this was argued, it was argued at the hearing, there were exchanges on it, and I think... Was it briefed?

[00:36:12] Speaker 02:
Yes, it was briefed in the sense that all of the evidence that was discussed at the hearing... No, did you brief the argument?

[00:36:20] Speaker 02:
Well, we briefed the argument, certainly, in this court.

[00:36:22] Speaker 02:
The New Zealand's argument?

[00:36:23] Speaker 02:
Absolutely.

[00:36:24] Speaker 02:
In this court, we did.

[00:36:25] Speaker 05:
No, where in the record is the briefing of the argument?

[00:36:29] Speaker 05:
The record below.

[00:36:31] Speaker 02:
Oh, I'm sorry.

[00:36:32] Speaker 02:
Well, the particular colloquy concerning this... Not an oral argument.

[00:36:36] Speaker 05:
Was it briefed prior, and where is it in the record?

[00:36:41] Speaker 02:
I want to make sure I'm answering the question accurately.

[00:36:44] Speaker 02:
So when you say what was specifically briefed, in other words, was the argument that... Was the resilience argument briefed?

[00:36:52] Speaker 02:
Well, I cited the one section where in the petitioner's response, we say that there's nothing in the record that shows the resilient cable as claimed in the patent.

[00:37:03] Speaker 02:
There are at least two references.

[00:37:04] Speaker 02:
One is in our brief, and the other one is the one I just read you.

[00:37:07] Speaker 02:
You want me to redo it?

[00:37:07] Speaker 04:
So the concern here, Counselor, is whether this argument that you're raising before us.

[00:37:12] Speaker 04:
And obviously, you briefed it here before us.

[00:37:14] Speaker 04:
But did you raise it below?

[00:37:16] Speaker 02:
Yes.

[00:37:16] Speaker 02:
I told you.

[00:37:17] Speaker 02:
There are two instances.

[00:37:17] Speaker 02:
You argued?

[00:37:18] Speaker 02:
In the patent owner's response.

[00:37:20] Speaker 02:
OK.

[00:37:20] Speaker 02:
First, we do cite one instance.

[00:37:22] Speaker 03:
Where's the patent owner's response again?

[00:37:24] Speaker 03:
I remember you referred to it earlier.

[00:37:30] Speaker 02:
Yeah, I gave you, I gave you the... Was it three?

[00:37:34] Speaker 02:
It is.

[00:37:36] Speaker 02:
Okay.

[00:37:38] Speaker 02:
It's the, it's the appendix page 240.

[00:37:41] Speaker 02:
0-2-4-0.

[00:37:42] Speaker 02:
Zero.

[00:37:45] Speaker 02:
I'll read it again.

[00:37:46] Speaker 02:
It says, no cited reference teaches a resilient cable was described and claimed.

[00:37:50] Speaker 03:
Is this 0-2-4-0?

[00:37:53] Speaker 02:
Yes, 0-2-4-0.

[00:37:55] Speaker 02:
I don't have a 0-2-4-0.

[00:37:56] Speaker 02:
Neither do I. Yeah, neither do I. Okay, I'm sorry.

[00:38:00] Speaker 02:
I didn't bring the entire appendix.

[00:38:02] Speaker 02:
No, no, but we have the entire appendix.

[00:38:04] Speaker 02:
Right.

[00:38:04] Speaker 02:
OK, it's page two of the patent owner's response.

[00:38:09] Speaker 02:
And I just read it.

[00:38:10] Speaker 02:
I mean, the problem actually was because at the hearing, and in fact most of the discussion surrounding this, revolved around the notion of a cable.

[00:38:25] Speaker 02:
There was this debate in the claim construction

[00:38:29] Speaker 02:
Whether it was a cable or whether it was something else, could it be a resilient member?

[00:38:34] Speaker 02:
Claims obviously use both member and cable, but they only talk about the specification, the issue of cable.

[00:38:39] Speaker 02:
The reason for a cable, and the reason nobody uses monofilament in any of these devices, is that a twisted wire cable actually has the proper qualities of being able to be deformed and come back to its original form and also hold its stiffness and not bounce the glasses off your head

[00:38:55] Speaker 02:
if you jump in and hit your retainer on a headrest.

[00:39:00] Speaker 02:
And so it wasn't, clearly, Your Honor, it wasn't a major focus.

[00:39:06] Speaker 02:
And in fact, that's why none of the evidence that the petitions rely on to show that it was resilient in the manner required by the claims also came in after the hearing.

[00:39:16] Speaker 02:
I mean, none of this, none of the social deposition and until the declaration about his.

[00:39:21] Speaker 05:
Well, there's two ways to look at that.

[00:39:23] Speaker 02:
Right, I know.

[00:39:25] Speaker 02:
Yes.

[00:39:26] Speaker 02:
Well, it was raised in the sense that the major portion of the discussion at the hearing, you know, was on precisely this point.

[00:39:34] Speaker 05:
Are you being obtuse, counsel?

[00:39:36] Speaker 02:
I'm not trying to be, Your Honor.

[00:39:38] Speaker 02:
I don't exactly understand your question.

[00:39:40] Speaker 05:
It wasn't raised before oral argument.

[00:39:44] Speaker 02:
No.

[00:39:45] Speaker 02:
Well, it wasn't raised before oral argument, although I will say that based on the petition owner's response, patent owner's response, it was in fact

[00:39:52] Speaker 02:
We didn't concede the point, but you're right, it wasn't raised.

[00:39:55] Speaker 02:
There's a distinction between conceding the point, which I think clearly the evidence shows that we didn't, and having it as a major feature of the argument in the briefing.

[00:40:04] Speaker 02:
Your Honor is correct.

[00:40:05] Speaker 02:
The briefing doesn't discuss this issue.

[00:40:07] Speaker 02:
It clearly was discussed at the hearing, and it wasn't waived because we said we don't concede that the prior act contains this limitation.

[00:40:14] Speaker 02:
I guess that's the fair way to view it.

[00:40:15] Speaker 03:
Mr. Chairman, looking at 258, which I guess is the Pat Miller's response,

[00:40:20] Speaker 03:
Monroe discloses a resilient member, but not a cable.

[00:40:24] Speaker 03:
Right.

[00:40:25] Speaker 02:
And that's what I was trying to explain.

[00:40:26] Speaker 03:
So you're saying there Monroe's resilient, but we don't have the cable feature.

[00:40:32] Speaker 02:
An important concept here is that resilience- Is that what the argument was?

[00:40:36] Speaker 02:
Yes.

[00:40:37] Speaker 02:
In fact, I mentioned that earlier.

[00:40:38] Speaker 02:
In other words, we do say, the lawyer there was, I said there was a lot of discussion in the briefing surrounding, in the claim construction briefing about a cable.

[00:40:50] Speaker 04:
That was the bulk of the argument below.

[00:40:53] Speaker 04:
Exactly, because... The word resilience came up in that context, but you did not make the argument that you're presenting today, you did not present it to the board, well, the argument, but you didn't brief it.

[00:41:05] Speaker 02:
We didn't brief it, and it only came up when the board actually... That's the question we were asking you, counsel, whether you had briefed it or not.

[00:41:13] Speaker 02:
No, I've said that.

[00:41:14] Speaker 02:
We did not brief it.

[00:41:15] Speaker 02:
We didn't concede the point, then we certainly argued at the hearing.

[00:41:19] Speaker 02:
Those are the three points.

[00:41:20] Speaker 04:
OK.

[00:41:21] Speaker 04:
You want to conclude?

[00:41:22] Speaker 02:
I will conclude by saying that the difficulty in this case is that the evidence, I think, is ambiguous.

[00:41:30] Speaker 02:
You cannot basically say that the evidence clearly shows that the Monroe reference, which is the only one that's offered for the resilient for the incident cable, counsel conceded at the hearing, in fact,

[00:41:46] Speaker 02:
When asked, the petitioner's counsel said, I don't think Monroe itself describes the ability to return to a particular position.

[00:41:53] Speaker 02:
OK.

[00:41:54] Speaker 02:
We have your arguments.

[00:41:55] Speaker 02:
Thank you.