[00:00:00] Speaker 03:
versus BASF.

[00:00:33] Speaker 03:
I think we're ready whenever you are.

[00:00:40] Speaker 00:
Good morning, Your Honors.

[00:00:41] Speaker 00:
Jennifer Sweezy on behalf of the patent owners, and I would like to reserve three minutes for rebuttal.

[00:00:48] Speaker 00:
We raised two main points in our brief, first on the prima facie case and second on the objective evidence of non-obviousness.

[00:00:56] Speaker 00:
And while both issues warrant detention, I would actually like to take them in reverse order this morning.

[00:01:02] Speaker 00:
The reason is because

[00:01:03] Speaker 00:
Regardless what the court decides on the prima facie case, whether you agree with us or not, our patents should have avoided the trap of hindsight based on the object of evidence.

[00:01:14] Speaker 00:
In particular, we had powerful evidence of commercial success.

[00:01:18] Speaker 00:
And on that point, the board actually said our evidence would have been persuasive if left unchallenged.

[00:01:24] Speaker 00:
So let me address two legal errors that the board made with respect to that evidence.

[00:01:30] Speaker 00:
It misread this court's decision in Midwest Vaco.

[00:01:33] Speaker 00:
This is not like Midwest Vaco.

[00:01:35] Speaker 00:
And second, it did not separately analyze a claim, claim nine of the 747 patent, that even under the board's own reasoning would have compelled upholding claim nine.

[00:01:47] Speaker 00:
So I'll start with the Midwest Vaco point.

[00:01:51] Speaker 00:
And just to step back, on the whole point of commercial success evidence, which I think the board

[00:01:55] Speaker 00:
which is to show whether we have a real advancement here or a trifling one.

[00:02:01] Speaker 00:
So when you have others in the market adopting a technology over prior art, that's a demonstration of non-obviousness.

[00:02:09] Speaker 00:
And that's what we had here.

[00:02:09] Speaker 00:
We had evidence showing that in a significant market, significant sales in a relevant market, 80% of those sales

[00:02:19] Speaker 00:
are using our claimed technology.

[00:02:21] Speaker 00:
That's a powerful indication.

[00:02:23] Speaker 00:
That's exactly what this evidence does to guard against the natural tendency to use hindsight when determining and evaluating obviousness.

[00:02:31] Speaker 00:
And that's the evidence that the board said would have been responsive.

[00:02:33] Speaker 03:
Why is it not relevant to look at?

[00:02:35] Speaker 03:
You were looking at one truck.

[00:02:37] Speaker 03:
Was it number 8 or something like that?

[00:02:38] Speaker 03:
Class 8.

[00:02:39] Speaker 03:
And that's what the board was concerned about.

[00:02:44] Speaker 03:
They didn't say there's no evidence of commercial success, they just pointed out that when you're determining commercial success, if a patent covers 400 products and you come in and show one product you made a lot of money on, isn't that probative?

[00:03:01] Speaker 03:
Not necessarily, obviously there might be success, but the extent to which that success is a measure of the objective indicia of obviousness.

[00:03:14] Speaker 00:
Yes.

[00:03:15] Speaker 00:
Let me see if I can answer that in three points.

[00:03:17] Speaker 00:
The first bucket being the acknowledgement by the board that this was success.

[00:03:20] Speaker 00:
So it's important to start there.

[00:03:22] Speaker 00:
The board itself acknowledged this as powerful evidence.

[00:03:25] Speaker 00:
Second, though, with respect to the various markets, potentially 400, that's where the doctrine about not requiring patentees to have to show commercial success across all embodiments.

[00:03:38] Speaker 00:
This court has recognized that is a draconian requirement.

[00:03:41] Speaker 00:
That's not required.

[00:03:42] Speaker 00:
What it's really getting to is whether the evidence shown is a fair representation so that we can extrapolate it across the scope of the claim.

[00:03:52] Speaker 00:
And that's where the board's misunderstanding of the Midwest Vaco decision comes in.

[00:03:57] Speaker 00:
Because in Midwest Vaco, there was doubt.

[00:03:59] Speaker 00:
There was reason to think that the operation of the claim technology in the perfume context

[00:04:05] Speaker 00:
was different than the further broader scope of the generic claims, because it was thought that the technology used in that spray dispenser was going to be harmful to a person's skin.

[00:04:16] Speaker 00:
And so the market response to the claim technology in that one industry, using it on skin in the perfume context, really did undercut the value of it across the scope of the claims.

[00:04:27] Speaker 00:
We don't have facts like Midwest Vaco here at all.

[00:04:30] Speaker 00:
We don't have any record evidence showing that our claim technology might operate differently in the Class A context versus any other class.

[00:04:38] Speaker 00:
We certainly don't have any findings by the board on that.

[00:04:40] Speaker 03:
No, but why is... I don't understand.

[00:04:42] Speaker 03:
We're talking about commercial success here.

[00:04:44] Speaker 03:
Yes.

[00:04:45] Speaker 03:
So, I mean, the board considered and considered it to be commercial success, but they were just looking at not whether that evidence could be probative, but how probative it is when you're dealing with one slice of what's covered by the claims.

[00:05:00] Speaker 03:
So, I mean, certainly there can be disagreement as to their fact-finding, and they didn't give it as much weight as they should have.

[00:05:10] Speaker 03:
But I don't, you seem to be posing this as kind of a legal error, and I'm not seeing where the legal error lies.

[00:05:17] Speaker 00:
I think the legal error lies right first in the Midwest-Faco interpretation, because Midwest-Faco was not at all contradicting the prior precedent from this court that very clearly says,

[00:05:29] Speaker 00:
that you don't have to show commercial success across all of audience.

[00:05:32] Speaker 00:
And this also isn't just a sort of a marginal sector.

[00:05:36] Speaker 03:
No, I mean, but I guess we're to investigate it.

[00:05:39] Speaker 03:
I mean, I didn't see the board said, you have to show this.

[00:05:43] Speaker 03:
I mean, this isn't illegal.

[00:05:44] Speaker 03:
They looked at their weighing the factors here, and they're weighing how the strength of your commercial success argument.

[00:05:52] Speaker 03:
And in that context, why can't they consider

[00:05:57] Speaker 03:
how broad it reaches in terms of what's covered by this patent and where the commercial test is shown.

[00:06:06] Speaker 03:
So it's just a matter of whether or not how powerful or how probative that issue of commercial success is.

[00:06:14] Speaker 03:
Do you acknowledge that?

[00:06:17] Speaker 03:
Because you kind of make it a stark thing.

[00:06:18] Speaker 03:
Like the board said, no, there's an all or nothing kind of thing.

[00:06:22] Speaker 03:
And this isn't indicative of anything.

[00:06:24] Speaker 03:
And I don't read that's what the board is saying.

[00:06:27] Speaker 00:
I understand the argument.

[00:06:28] Speaker 00:
Let me respond this way then.

[00:06:30] Speaker 00:
Because certainly with Claim 9, if that's what the board was doing, and I think by reading its application of Mingwist-Baco, in our view, feeling constrained to apply that case, but even accepting that what it was doing was sort of looking at, is this persuasive enough, or how are they weighing it?

[00:06:45] Speaker 00:
It didn't look at claim nine separately.

[00:06:47] Speaker 03:
Did you file a motion for reconsideration on the claim nine issue that it was not considered or something?

[00:06:53] Speaker 03:
Did you bring that back to the board?

[00:06:54] Speaker 00:
No, I don't believe we did.

[00:06:56] Speaker 00:
We appealed to this court.

[00:06:57] Speaker 00:
But it was clearly raised in our briefing.

[00:07:00] Speaker 00:
At A1900, you'll see the argument where we separately raised claim nine.

[00:07:05] Speaker 00:
The board, in a very generic statement at the beginning of its decision, says that we didn't separately argue in the claims.

[00:07:12] Speaker 00:
And it just says, see, generally, Pat Leonard's brief.

[00:07:15] Speaker 00:
There's no suggestion that it acknowledged our footnote and thought that we hadn't raised it sufficiently.

[00:07:20] Speaker 03:
So where is that in the record?

[00:07:22] Speaker 00:
81900 is where we raised it.

[00:07:26] Speaker 00:
It's in footnote 10 in our brief.

[00:07:28] Speaker 00:
And then the very first page, I believe, of the board's decision.

[00:07:31] Speaker 03:
I'm sorry.

[00:07:32] Speaker 03:
Give me the site again.

[00:07:34] Speaker 03:
A1900.

[00:07:35] Speaker 03:
Appendix 1900.

[00:07:36] Speaker 03:
OK.

[00:07:38] Speaker 00:
Appendix 1900.

[00:07:39] Speaker 00:
I'm sorry.

[00:07:39] Speaker 00:
I'm still using the old terminology.

[00:07:42] Speaker 00:
Appendix 1900 is where we raised

[00:07:46] Speaker 00:
Claim nine separately.

[00:07:48] Speaker 00:
And it's a full argument.

[00:07:52] Speaker 03:
We said... I see it.

[00:07:56] Speaker 03:
I see it.

[00:07:57] Speaker 03:
Anywhere else that it was raised?

[00:08:01] Speaker 00:
No, Your Honor, but that was a full argument.

[00:08:05] Speaker 00:
It's not at all buried among other points.

[00:08:07] Speaker 00:
That's the entirety of that argument.

[00:08:09] Speaker 00:
And it's a paragraph.

[00:08:11] Speaker 00:
It's multiple points.

[00:08:12] Speaker 00:
It's maintaining our initial position.

[00:08:15] Speaker 00:
that I've been presenting to the board this morning that the commercial success evidence was sufficient across the scope of the claim.

[00:08:22] Speaker 00:
But at minimum, claim nine is directly tied to the commercial success evidence we presented because claim nine is limited to heavy duty diesel engines, which maps directly onto claim nine.

[00:08:33] Speaker 00:
And what the board's analysis contradicts itself by having decided that our commercial success evidence was too tailored

[00:08:41] Speaker 00:
to exactly the scenario that claim nine covers.

[00:08:44] Speaker 03:
Well, there were various principles that govern the extent to which one preserves one's arguments based on footnotes.

[00:08:51] Speaker 03:
Do you know if the board has any procedure here?

[00:08:54] Speaker 03:
I mean, this document is at least 43 pages, and this is one three-line sentence in a footnote.

[00:09:03] Speaker 03:
Do you know

[00:09:05] Speaker 00:
Your Honor, in our brief, we have a very lengthy footnote, again, because there's so many citations, where the board repeatedly considers arguments and footnotes.

[00:09:14] Speaker 00:
I'm not aware of any principle, and the other side hasn't decided that they've adopted a rule like this court that arguments raised by a footnote aren't sufficient.

[00:09:21] Speaker 00:
In fact, the regulations require the claims to be separately argued.

[00:09:25] Speaker 00:
And again, by separately calling out claim nine,

[00:09:29] Speaker 00:
We did separately argue it.

[00:09:30] Speaker 00:
And the board itself, because of the analysis path that it took by focusing on sort of market by market, which we disagree with because it's really the scope of the claims, not the full scope of the markets.

[00:09:43] Speaker 00:
I think it inverted the analysis.

[00:09:44] Speaker 00:
But nonetheless, having taken that path, it should have recognized that it mapped directly onto claim nine.

[00:09:52] Speaker 00:
So certainly with respect to claim nine, we do believe the board erred.

[00:09:58] Speaker 00:
Again, this is administrative review.

[00:09:59] Speaker 00:
We don't have any recognition that the board thought we'd waived it or that it's reached any determination about an insufficient argument.

[00:10:05] Speaker 00:
We just have this generic statement that I think they just overlooked, claim nine, particularly as it was germane to their analysis.

[00:10:12] Speaker 04:
With respect to the other claims, is your argument that the board just didn't give commercial success any consideration at all because they over-read Meet Westvaco or

[00:10:26] Speaker 04:
Is your argument that they looked at the weight of the evidence and didn't give it the weight to which you think it deserved?

[00:10:34] Speaker 00:
Based on its reading of Midwest Vaco, we believe there was legal error because it did first find the evidence persuasive.

[00:10:41] Speaker 00:
So necessarily to find it persuasive, it seems to have given it weight and recognized that it had value and served exactly the purpose that secondary considerations play.

[00:10:50] Speaker 00:
But then applying this court's decision, it seemed constrained to then say we hadn't done what Midwest Faco did.

[00:10:57] Speaker 00:
But Midwest Faco, again, are not facts like ours at all.

[00:11:00] Speaker 00:
There was a specific reason to doubt.

[00:11:01] Speaker 03:
But I don't understand your answer to Judge Lynn, because the board says explicitly, given the issues raised by the requester, draw into question the weight that should be accorded the evidence of commercial success.

[00:11:15] Speaker 03:
So how do you read?

[00:11:17] Speaker 03:
I don't know, maybe I misunderstood what you were answering Judge Lin, but they didn't say that commercial success isn't a factor that would be considered and that they wouldn't consider your evidence, that this goes to a matter of how much weight it should be afforded.

[00:11:33] Speaker 03:
really not a legal question.

[00:11:35] Speaker 03:
It's one we would defer on substantial evidence.

[00:11:37] Speaker 03:
No.

[00:11:38] Speaker 03:
So why am I wrong about that?

[00:11:39] Speaker 03:
I assume you think I'm wrong.

[00:11:40] Speaker 00:
First, with respect to claim nine, certainly there was, whether it's substantial evidence review or legal error.

[00:11:46] Speaker 00:
No, I know.

[00:11:46] Speaker 03:
I thought Judge Lynn's questions were directed to the other papers.

[00:11:49] Speaker 00:
I'm sorry.

[00:11:50] Speaker 00:
You're right.

[00:11:50] Speaker 00:
That is right.

[00:11:52] Speaker 00:
I think we may be talking a little bit about semantics.

[00:11:55] Speaker 00:
It applied me to West Faco in a way that was not the way, not this holding of the court.

[00:12:00] Speaker 00:
And it read me to West Faco at 821.

[00:12:03] Speaker 00:
is having a principle that evidence directed to a very narrow application is insufficient when the relevant market is much broader.

[00:12:10] Speaker 00:
That is directly contrary to the precedent that says so.

[00:12:13] Speaker 02:
Where were you reading from?

[00:12:15] Speaker 00:
A21 in the board's decision.

[00:12:17] Speaker 00:
That is.

[00:12:18] Speaker 00:
A22.

[00:12:19] Speaker 02:
I think you're talking about A22.

[00:12:22] Speaker 00:
I can point it out to you in one moment.

[00:12:27] Speaker 00:
Maybe it's A22.

[00:12:29] Speaker 00:
Yes, excuse me.

[00:12:29] Speaker 00:
Sorry.

[00:12:30] Speaker 00:
That was my mistake.

[00:12:31] Speaker 00:
At the second full, last sentence of the full paragraph that under Midwest debate go, evidence directed to a very narrow application is insufficient when the relevant market is much broader.

[00:12:44] Speaker 00:
That's the opposite of this court's case law that says you don't have to show every embodiment, only if there's some sort of special reason, a technical concern in the embodiment, that it's not really going to be a fair representation.

[00:12:57] Speaker 00:
And again, we don't have any findings by the board.

[00:12:59] Speaker 00:
We don't have any evidence by the board.

[00:13:02] Speaker 00:
I'll briefly touch on the... Can I ask you just another thing?

[00:13:06] Speaker 03:
And I think maybe it wasn't commercial success also affected by, didn't the board also make certain findings discounting the extent of commercial success even with respect to vehicle eight?

[00:13:20] Speaker 03:
And they concluded that it appears that at least a portion

[00:13:26] Speaker 03:
was that success was affected by other matters.

[00:13:29] Speaker 03:
So are you challenging that finding here?

[00:13:33] Speaker 00:
Yes, Chief Judge Post.

[00:13:34] Speaker 03:
And that's a factual finding, right?

[00:13:35] Speaker 03:
That's not a legal question.

[00:13:38] Speaker 00:
We do believe it's legal in the sense that it discounted the sales because they were sales between entities related to a patent owner.

[00:13:44] Speaker 00:
This court has repeatedly recognized that a patentee's own sales can demonstrate commercial success.

[00:13:50] Speaker 00:
It took a very overly narrow and legally improper view of what kind of evidence could count.

[00:13:55] Speaker 00:
But second, in terms of substantial evidence review, what that did was drop our 80%, this overwhelming margin of success, to about 74%, so about five or six percentage points.

[00:14:09] Speaker 00:
And given the board's determination that it was persuasive, as a legal matter, that couldn't undo that by just a small drop.

[00:14:16] Speaker 00:
We still have an overwhelming amount of market success.

[00:14:18] Speaker 03:
With regard to the truck aid.

[00:14:21] Speaker 00:
Correct.

[00:14:22] Speaker 03:
Well, we're well into the rebuttal, so why don't we save it and hear from the other side.

[00:14:26] Speaker 00:
Thank you, Your Honor.

[00:14:44] Speaker 01:
Good morning, Your Honors, and may it please the Court.

[00:14:47] Speaker 01:
So I'd like to start with the discussion we just had about whether there was a reason

[00:14:52] Speaker 03:
Well, before you get to that, would you mind starting with just claim nine?

[00:14:56] Speaker 01:
Of course, Your Honor.

[00:14:59] Speaker 01:
So let's turn to the page that was cited in the opposing argument, which is, I think it's 1900, it was where they cited, and it's the same footnote.

[00:15:09] Speaker 01:
There are two reexaminations here, and the exact same footnote was used in both briefs of both reexaminations.

[00:15:17] Speaker 01:
That footnote is two sentences long.

[00:15:20] Speaker 01:
The first sentence of that footnote

[00:15:22] Speaker 01:
is just restating what claim nine says.

[00:15:26] Speaker 01:
The first part of that sentence isn't even talking about claim nine.

[00:15:28] Speaker 01:
It's talking about the argument with regard to all the claims.

[00:15:31] Speaker 01:
The second part just says, here's what claim nine says.

[00:15:35] Speaker 01:
And then the second sentence is merely a conclusory assertion, starting with the word clearly, that somehow claim nine meets the standard.

[00:15:44] Speaker 01:
There's no argument here.

[00:15:45] Speaker 01:
Certainly not.

[00:15:48] Speaker 03:
But stepping back a minute, if the board was relying heavily, or at least in part, on the fact that this class VIII vehicle, the commercial success was only shown with respect to this one class VIII vehicle, whereas a large swath of vehicles are actually covered by the claims, doesn't this reference and shout out with respect to claim nine

[00:16:14] Speaker 03:
clearly go to the point the board was raising?

[00:16:19] Speaker 01:
No, Your Honor.

[00:16:20] Speaker 01:
No?

[00:16:20] Speaker 01:
No, because this particular claim, claim nine, is not about class eight vehicles.

[00:16:25] Speaker 01:
If you look at the language of claim nine, it's about heavy duty diesel engines, which is not limited to class eight vehicles.

[00:16:32] Speaker 01:
And let me show you why we know that's the case.

[00:16:34] Speaker 01:
Let's turn to the patent itself.

[00:16:37] Speaker 01:
The patent itself, and this is in the appendix, Your Honor,

[00:16:41] Speaker 01:
And I'll use the 747 pattern even though they both have the same specification.

[00:16:46] Speaker 01:
So if we could turn to page 328 of the appendix, that's the 747 pattern.

[00:16:55] Speaker 01:
And then turn to page 335, which is column two of that 747 pattern.

[00:17:04] Speaker 01:
So page 335 of the appendix, column two, this is at line

[00:17:10] Speaker 01:
Starting at line 13, it discusses where there are particular applications.

[00:17:16] Speaker 01:
And it does say that there's a particular application to heavy duty diesel engines.

[00:17:20] Speaker 01:
So that's the claim nine language.

[00:17:23] Speaker 01:
And then it says, especially vehicle engines.

[00:17:26] Speaker 01:
So we know that claim nine is broader than vehicle engines.

[00:17:30] Speaker 01:
And then it says, for example, truck or bus engines.

[00:17:34] Speaker 01:
So we know that vehicle engines is larger than truck or bus engines.

[00:17:38] Speaker 01:
And then their evidence actually went to a particular type of truck engine, this particular class A. And let me tell you why that's critically important.

[00:17:46] Speaker 01:
Because the board made a specific final comment.

[00:17:50] Speaker 01:
If you could turn with me to page 23 of the record, Your Honor.

[00:17:56] Speaker 01:
And this is in the board's decision.

[00:18:00] Speaker 01:
On page 23, in the first full paragraph, the last sentence,

[00:18:05] Speaker 01:
The board says the patent owner state that it chose Class 8 heavy duty vehicles, quote, because they are the largest class of trucks in the United States and because of their size, it is hardest to design emissions control systems to meet EPA 10 for Class 8 trucks, period.

[00:18:26] Speaker 01:
So the board relied on the admission of the appellant that Class 8 trucks were very special.

[00:18:32] Speaker 01:
that they are different than other types of trucks, that they're different than other types of heavy duty engine applications of this invention.

[00:18:42] Speaker 01:
Not only did the board have a reason to distinguish the Class 8 data from the overall data for these claims, its reason was an admission by the opponent that it's different.

[00:18:55] Speaker 04:
Do the Class 8 trucks as a group contain

[00:19:01] Speaker 04:
heavy-duty diesel engines?

[00:19:05] Speaker 01:
I don't believe the record establishes that all Class VIII trucks include heavy-duty diesel engines.

[00:19:10] Speaker 01:
There is, in the expert declarations, the appellant's experts did opine that they did, and there's nothing contradicting that in the evidence run.

[00:19:22] Speaker 03:
What about the final point your friend made about the error of law with respect to

[00:19:28] Speaker 03:
the slicing and dicing the 21% and what portion of this is attributable to... Your Honor, that was part of the overall factual analysis here of the board.

[00:19:40] Speaker 01:
So it was part of the overall weighing process, but it is not a legal error.

[00:19:45] Speaker 01:
What the appellants pointed to was that you take into account the patentee sales.

[00:19:50] Speaker 01:
Of course you take into account the patentee sales.

[00:19:52] Speaker 01:
I mean, the whole point of commercial success is that the patentee was very successful, so those sales matter.

[00:19:57] Speaker 01:
Here, it's not a question of the patentees' sales.

[00:20:00] Speaker 01:
It's a question of the patentees' control over the customers, over the ones buying, not the seller, the buyer.

[00:20:08] Speaker 01:
And looking at secondary considerations and commercial success, it is, of course, important to note that maybe those buyers were buying not because of how great the invention was, but because they were controlled by the seller.

[00:20:21] Speaker 01:
So it was not a legal error to take that into account.

[00:20:24] Speaker 01:
the board had substantial evidence.

[00:20:26] Speaker 01:
And I will note one other point that was very important to the board's analysis that isn't contested at all today or even effectively in the briefs.

[00:20:35] Speaker 01:
And that is that the board said, you have an obviousness priority date of 1998.

[00:20:42] Speaker 01:
More than a decade later, in fact, 13 years later, you give me some evidence about the market in 2011.

[00:20:50] Speaker 01:
The only evidence appellants gave here about commercial success was from 2011.

[00:20:56] Speaker 01:
So 13 years after the date where we're trying to figure out whether it would have been obvious, you say, oh, we have this great commercial success, which was only one year after the very regulations that they admit drove this market situation.

[00:21:10] Speaker 01:
The board certainly had substantial evidence to discount the weight

[00:21:14] Speaker 01:
of this commercial success in view of its lack of relationship to the actual priority date when obviousness is determined.

[00:21:22] Speaker 01:
There is an intervening event, which was these regulations in 2010, specific to Class 8 trucks, which explained the commercial success, not the invention, the intervening regulation.

[00:21:34] Speaker 01:
That's exactly the type of factual determination that the board has within its power, within

[00:21:40] Speaker 01:
Now with regard to, I do want to address that claim nine point because I think it is important that we take into account that the board should not, based on a conclusory footnote, have to do separate analysis of any claim that a patentee drops one footnote that just gives the claim language and says clearly and gives a conclusion.

[00:22:00] Speaker 01:
If that were the case, patentees could put in that type of footnote for all of their dependent claims and all of a sudden the board would have this obligation.

[00:22:08] Speaker 01:
And this is especially true.

[00:22:09] Speaker 04:
But it does seem like an oversight, or at least an oversight.

[00:22:13] Speaker 04:
They talk about Class 8 as being relating to heavy-duty diesel trucks.

[00:22:19] Speaker 04:
Claim 9 talks about trucks that have heavy-duty diesel engines.

[00:22:26] Speaker 04:
And yet, there's not even a sentence in passing.

[00:22:31] Speaker 01:
First of all, I would note, Claim 9 is not limited to trucks.

[00:22:35] Speaker 01:
If you look at Claim 9, there's no limitation to trucks.

[00:22:38] Speaker 01:
And that's important for the reason I pointed out in the patent, because the patent itself acknowledges that heavy duty diesel engines are not just used in vehicles.

[00:22:46] Speaker 01:
They're not even just used in trucks.

[00:22:48] Speaker 01:
So there's a big distinction there, and it's acknowledged in the patent.

[00:22:51] Speaker 01:
Secondly, I would point out that the board's analysis makes perfect sense because the board starts their opinion by saying, claim one is representative.

[00:23:00] Speaker 01:
And if you look at the board's opinion, if they had disagreed with that, they could have moved to reconsideration and said, oh, you're wrong.

[00:23:08] Speaker 03:
That does give one reason for pause, but they're not required to do that.

[00:23:12] Speaker 03:
So there's nothing to hang your hat on.

[00:23:14] Speaker 01:
If they had made a sufficient argument under this court's precedent to preserve that issue, I agree with you, Judge Gross.

[00:23:21] Speaker 01:
They wouldn't be required to do that.

[00:23:23] Speaker 01:
But when you put in a two-sentence footnote that has no analysis, just a conclusion, and then the board says, we're treating claim one as representative, and you don't say anything,

[00:23:36] Speaker 01:
I do think the board is within its discretion and should not be tasked with having to address any claim that have had need to drops of one or two sentence footnote with a conclusory assertion.

[00:23:48] Speaker 01:
The board should at least have that discretion and it does under this court's law.

[00:23:53] Speaker 01:
This court has said agencies do not have to address conclusory arguments.

[00:23:58] Speaker 01:
where those arguments are not made with a full argument illustration of the argument.

[00:24:07] Speaker 01:
This footnote 10 for claim 9 definitely meets that standard.

[00:24:12] Speaker 01:
The board should not have footage of it.

[00:24:14] Speaker 01:
But I do want to point out that the regulation in 2010 that the board found showed the commercial success wasn't about the invention.

[00:24:22] Speaker 01:
It was about this regulation.

[00:24:23] Speaker 01:
That applies equally to claim 9.

[00:24:27] Speaker 01:
Claim nine is all about a regulation of these class eight trucks.

[00:24:32] Speaker 01:
So of course, if the board had said, well, here's claim nine, their same analysis would have applied because that regulation was specific to those trucks.

[00:24:43] Speaker 01:
And it was that regulation, which had been one year before the only data that they'd given us, was much more likely, even under a preponderance of the evidence test,

[00:24:55] Speaker 01:
it would be much more likely that that regulation caused this success than that the success was due to a combination applied for 13 years prior as of the priority date.

[00:25:07] Speaker 01:
That's the kind of way that the board is supposed to do.

[00:25:11] Speaker 01:
They look at the initial proposal, and the board said, look, if this was the only thing in the record, maybe we would have gone for it.

[00:25:18] Speaker 01:
Maybe it would have been important.

[00:25:20] Speaker 01:
That doesn't mean they found it being persuasive.

[00:25:22] Speaker 01:
That means that they found

[00:25:24] Speaker 01:
In the hypothetical of us only looking at the appellant's evidence, we would have found it to have more weight.

[00:25:30] Speaker 01:
Certainly, that only shows that the petitioner put forward a good rebuttal.

[00:25:35] Speaker 01:
And that good rebuttal is established on substantial evidence, which is the review standard that we should apply here today.

[00:25:45] Speaker 01:
Overall, what this case presents is a situation of known technologies being used for their known effects and putting them together.

[00:25:55] Speaker 01:
The board found not only that you could combine a particulate filter with an oxidation catalyst, and that you could combine an SCR subsystem with an oxidation catalyst, but it even found, and this is on appendix page five, that you could combine the filter with the SCR subsystem.

[00:26:17] Speaker 01:
That's the last sentence on page five.

[00:26:20] Speaker 01:
So we've got two different things we need to combine,

[00:26:24] Speaker 01:
a teaching in the art, which is the bell reference, and it's cited on page five, that the board found had not been contested or disputed by the patent owner.

[00:26:35] Speaker 01:
And that's on page six at the end of that paragraph.

[00:26:37] Speaker 01:
They say, look, all of these findings are not disputed by the patent owner.

[00:26:43] Speaker 01:
So in a situation where we not only have the KSR facts of each piece as being used for its intended purpose,

[00:26:50] Speaker 01:
None of that's disputed by the patent owner in terms of the prior art.

[00:26:53] Speaker 01:
And you have the prior art teaching, taking all the different pieces and saying, these can all be used together.

[00:26:58] Speaker 01:
That's the type of situation where the board has substantial evidence.

[00:27:01] Speaker 01:
There's no error in that finding.

[00:27:04] Speaker 01:
And as to these objective evidence, because the board took into account all of the evidence, not just appellant's evidence, but the evidence put forward by petitioner and weighed it and found it just didn't outweigh a crime and fascia case that was very strong, this court should affirm.

[00:27:20] Speaker 01:
If judges have no further questions, I'll let it go.

[00:27:23] Speaker 01:
Thank you.

[00:27:36] Speaker 00:
Thank you for the additional time, Your Honor.

[00:27:38] Speaker 00:
Let me point out that on page 23 of our gray brief in footnote 4, that's where we noted that the board repeatedly considers arguments raised in footnotes.

[00:27:48] Speaker 00:
With respect to the point about seeking motion for reconsideration, let me make the point that the patents expired in 2019.

[00:27:56] Speaker 00:
It didn't have to seek reconsideration, and a timely review was important.

[00:28:01] Speaker 00:
What's critical about the board's failure on claim nine is that it doesn't have to address every argument that's made by a party.

[00:28:11] Speaker 00:
But it certainly can't enter reasonings that contradict itself and that contradict claim nine.

[00:28:17] Speaker 00:
that does completely set apart that we did separately raise claim nine.

[00:28:22] Speaker 00:
And then my final point would be where the opposing counsel touched on the prima facie case, there the board did expressly ignore an entire argument that we presented in our briefs.

[00:28:34] Speaker 00:
At 35.08 of the appendix, you'll see part of our table of contents where we called out many other options to try, and we spent four pages

[00:28:44] Speaker 00:
detailing different ways that you could combine different types of technology beyond the two categories that the board considered.

[00:28:51] Speaker 00:
The board took a very KSR-like approach by saying what we have before us is SCR and particulate trap, and then we need to figure out how to put them together.

[00:29:00] Speaker 00:
That's not what faced the person of ordinary skill in the art.

[00:29:03] Speaker 00:
We told the board there were seven different ways to treat NOx.

[00:29:08] Speaker 00:
There were six different ways to treat particulate matter.

[00:29:11] Speaker 00:
There were different orders.

[00:29:12] Speaker 00:
We use an oxidation catalyst that has two purposes.

[00:29:15] Speaker 00:
And the catalyst plus the trap make sure that there's enough NO2 out of that second mechanism out of the trap after the oxidation catalyst to ensure that the SCR is going to work.

[00:29:28] Speaker 00:
It's not a simple mechanical putting together.

[00:29:30] Speaker 00:
There are complicated chemical technologies involved.

[00:29:33] Speaker 00:
And the board entirely missed that argument.

[00:29:35] Speaker 00:
So it missed both.

[00:29:37] Speaker 00:
On the secondary considerations, it not only missed our argument at footnote 10, but it

[00:29:42] Speaker 00:
decided the issue in a way that contradicted its own findings that Claim 9 is commensurate in scope with Class 8.

[00:29:52] Speaker 00:
And then a final point on Claim 9, it is limited to vehicle applications.

[00:29:57] Speaker 00:
It depends from Claim 8, which distinguishes vehicles, ships, and stationary sources.

[00:30:03] Speaker 00:
So certainly, Claim 9, under the board's own reasoning, is reasonably commensurate in scope with the commercial success evidence.

[00:30:10] Speaker 00:
Thank you.

[00:30:11] Speaker 03:
We thank both sides and the case is submitted.