[00:00:00] Speaker 02:
Lois versus Autoliv.

[00:00:02] Speaker 02:
Same parties, just reverse in terms of who is the appellant and who is the appellee.

[00:00:07] Speaker 02:
This is case number 161896.

[00:00:10] Speaker 02:
So Mr. Hughes, you want 4 minutes for rebuttal?

[00:00:14] Speaker 04:
I have it.

[00:00:15] Speaker 04:
Thank you, Your Honor.

[00:00:22] Speaker 04:
This case involves just a simple claim of legal error, which is that the board applied the wrong test for obviousness that applied to narrow the test.

[00:00:31] Speaker 04:
Now, I think significant aspects of this appeal are undisputed, and that as a result, addressing these undisputed issues first will help narrow the scope of what's really before the court, because I think it's quite a bit narrower than appears on first blush.

[00:00:46] Speaker 04:
It's undisputed that as a general matter, the combination of the Inui reference and the Narin reference is obvious.

[00:00:54] Speaker 04:
Inui provides the structure of an airbag in a drawstring.

[00:00:58] Speaker 04:
Narin provides the cinch tube apparatus.

[00:01:02] Speaker 04:
The board and its institution decision found that this was an obvious combination to make.

[00:01:07] Speaker 04:
For example, is that appendix page 1158.

[00:01:11] Speaker 02:
Well, they didn't find that.

[00:01:13] Speaker 02:
They found that there was a sufficient basis

[00:01:16] Speaker 02:
to institute.

[00:01:18] Speaker 02:
They didn't find obviousness.

[00:01:21] Speaker 04:
Yes, Your Honor.

[00:01:22] Speaker 04:
They found that there was a sufficient basis to institute on this, but in their final decision, they never backtracked or challenged or never said that there was any reason to depart from that reason.

[00:01:34] Speaker 02:
They don't have to do that.

[00:01:35] Speaker 04:
Our case law is very clear on that.

[00:01:37] Speaker 04:
I understand, Yaron.

[00:01:38] Speaker 04:
They don't have to do that.

[00:01:39] Speaker 04:
What I'm saying is the issue before the court is not whether or not that combination is obvious because that, I think, was something at the very least the board assumed that it just didn't have to decide because it decided this case on a far narrower ground.

[00:01:51] Speaker 04:
I'm just trying to demonstrate that the narrower ground is all that's before the court here.

[00:01:55] Speaker 04:
That narrower ground is ... The combination of using the NUE general structure of the airbag with the cinch tube of Naran

[00:02:04] Speaker 04:
That's not the question before the court.

[00:02:06] Speaker 04:
The question is when that combination is made, when the airbag deploys without obstruction, does the terminal end of the cinch tube, is it drawn within the airbag or does it remain outside of the airbag?

[00:02:20] Speaker 02:
Do you rely on anything other than the Balevich's testimony on that point?

[00:02:26] Speaker 04:
That's our key piece of factual evidence, yes, Your Honor, is Ms.

[00:02:30] Speaker 04:
Balavich's testimony.

[00:02:32] Speaker 01:
Isn't your real problem here that there's also expert testimony on the other side that says the opposite?

[00:02:39] Speaker 01:
We're on a substantial evidence review.

[00:02:41] Speaker 01:
You may be right that this is actually the way these things do operate, but the board found otherwise based upon their expert.

[00:02:48] Speaker 01:
You're not challenging

[00:02:50] Speaker 01:
the admission of that testimony or the like, so I don't see what we can do.

[00:02:54] Speaker 04:
Your Honor, that factual determination, I think, is subsequent to the legal question that we're raising.

[00:03:00] Speaker 04:
The legal question that we're raising is the board went in search of a strict, is there a teaching suggestion or motivation?

[00:03:06] Speaker 04:
Relying on that testimony, they said there isn't a teaching suggestion or motivation, and that's where it ended its analysis.

[00:03:12] Speaker 04:
Our principal contention is that the board truncated its analysis too soon, that

[00:03:18] Speaker 04:
What the board needed to look for is whether or not there would be a rationale for a person of ordinary skill and the art to conceive of the combination.

[00:03:26] Speaker 04:
Typically, that would be done via a teaching suggestion or motivation.

[00:03:30] Speaker 04:
Here, however, there are additional ways that that rationale could have been reached that are apart from that evidence.

[00:03:36] Speaker 04:
The first is that there were a finite number of options.

[00:03:39] Speaker 04:
There are only two ways.

[00:03:40] Speaker 04:
Either the thing ends up in the outside or the inside.

[00:03:43] Speaker 02:
This is all the stuff that you came up with in your reply brief, right?

[00:03:46] Speaker 04:
We discussed this argument in our reply brief, but this was articulated throughout, Your Honor, both the finite number as well as the obvious design choice.

[00:03:55] Speaker 04:
For example, the finite number of choices

[00:03:59] Speaker 04:
That was at page three of our statement of issues.

[00:04:01] Speaker 04:
It was at page 17 where we discuss at length that there are only two identified predictable structures and results.

[00:04:06] Speaker 04:
We had it at page 25 of our opening brief in the summary.

[00:04:09] Speaker 01:
Did you argue this to the board that whether it was inside or outside was a design choice?

[00:04:14] Speaker 04:
Yes, Your Honor.

[00:04:15] Speaker 04:
So to the board at pages 1658 and 1663 of the appendix, we identified that there were a finite number of choices, that there are only three possibilities.

[00:04:23] Speaker 01:
And did you provide any expert testimony or anything that suggested that it didn't matter whether it was inside or outside?

[00:04:30] Speaker 04:
Well, yes, Your Honor.

[00:04:30] Speaker 04:
Ms.

[00:04:30] Speaker 04:
Balevich did testify quite clearly that she didn't see any functional basis for this.

[00:04:36] Speaker 04:
Her testimony is that it didn't matter if it was on the outside or the inside, that the length of the drawstring was completely irrelevant.

[00:04:50] Speaker 04:
Also to the board at pages 1656 to 1658, we explained that there was no functional bearing on the claimed apparatus as to whether or not it was on the outside of the insides.

[00:04:59] Speaker 04:
This is an argument we've been making consistently.

[00:05:01] Speaker 03:
Your problem is that in its analysis, the board looks at your expert's testimony and says that at the bottom of 21, that she concedes the pulling action of the in-ways drawstring inside the airbag will not necessarily cause

[00:05:19] Speaker 03:
the end of the cinch tube and so on.

[00:05:22] Speaker 03:
And then they say that she's contradicting her original testimony and then we weigh it.

[00:05:33] Speaker 04:
So a few things about that, Your Honor.

[00:05:34] Speaker 04:
That does go to, as I said, I have really three separate arguments before the court.

[00:05:39] Speaker 04:
My finite option argument, my

[00:05:41] Speaker 04:
arbitrary design choice argument and my factual argument that the straightforward combination would yield that.

[00:05:46] Speaker 04:
Your Honor's point, that goes to my third argument, my factual argument that the straightforward combination.

[00:05:51] Speaker 04:
Now, the court did look to Ms.

[00:05:52] Speaker 04:
Balovitch's testimony where she said that wouldn't necessarily be so.

[00:05:56] Speaker 04:
The basis of that testimony though was a prior question where she was asked

[00:06:00] Speaker 04:
Could there be a way in which the combination could be made in which the cinch tube would not be pulled inside the apparatus?

[00:06:08] Speaker 04:
And she said, well, there could be ways if you lengthen the string.

[00:06:11] Speaker 04:
And that's where in the opening brief we discussed that as the modified NUE-NARIN combination and we had a lengthy discussion of that in the opening brief.

[00:06:20] Speaker 04:
But her straightforward testimony was making the combination between NARIN and NUE

[00:06:25] Speaker 04:
without doing any sort of rejiggering of the length of the drawstring would yield something that was on the inside.

[00:06:32] Speaker 04:
But at the very least what this goes to show is when you're in the course of making that combination, a person of ordinary skill in the art would at least conceive of the different options as to whether or not you draw the thing inside or you leave the thing on the outside.

[00:06:43] Speaker 04:
Because that's this whole process of going through and modifying the combination based on the length of the drawstring is going to trigger one of ordinary skill in the art to think about what are the two possible options here

[00:06:55] Speaker 04:
And that's why that only I think in our view confirms the obviousness analysis.

[00:07:01] Speaker 04:
So yes, her testimony did come that way, but I don't think that's actually has a bearing on the ultimate question.

[00:07:08] Speaker 04:
As to the first two questions, the finite number of design choices, as well as that this is being an arbitrary design decision,

[00:07:15] Speaker 04:
Again, there's just simply no material evidence that this has any functional benefit, that it solves any stated problem, that it produces any unexpected result.

[00:07:26] Speaker 04:
Now, I believe Judge Hughes identified Dr. Hellman's testimony where he asserted that there could be some benefit to doing this and that it aids the cinching function.

[00:07:38] Speaker 04:
But the evidence here is quite clear.

[00:07:40] Speaker 04:
We just dispute that as an evidentiary matter because the evidence is quite clear in Naran and elsewhere.

[00:07:44] Speaker 04:
that that benefit for decoupling the cinching function, the closing of the vent from the pressure that's placed on the airbag is accomplished wholly by the use of the cinch tube.

[00:07:57] Speaker 04:
And that's described in there at great length.

[00:08:00] Speaker 04:
There is no basis in the expert report or anywhere else that there's a warrant for the claim that pulling internally has any bearing on accomplishing that function.

[00:08:11] Speaker 04:
And so we do think that it's error to rely

[00:08:13] Speaker 04:
on any sort of conclusory statement that doesn't have any supporting detail as to why that statement is in fact accurate.

[00:08:21] Speaker 04:
So again, we recognize that that statement was made.

[00:08:24] Speaker 04:
We don't think it has any bearing on this dispute because there's no explanation or warrant as to why it's correct.

[00:08:29] Speaker 01:
You're having a bit of a hard time here because here you're trying to tell us not to rely on the conclusory expert and in the last case your opponent is telling us not to rely on the conclusory expert testimony.

[00:08:39] Speaker 01:
I mean I think

[00:08:40] Speaker 01:
know, if experts say something and there's no challenge to what they say, as long as it's not completely incredible, it should be able to be substantial evidence, shouldn't it?

[00:08:50] Speaker 04:
Well, you know, I think there is a difference in whether or not there's a warrant that's given.

[00:08:53] Speaker 04:
I submit that our expert that we relied on, Ms.

[00:08:55] Speaker 04:
Balavich, we're talking about the same experts, did provide warrants and explanations as to why that's correct.

[00:09:01] Speaker 04:
But, Your Honor, I think here the point was simply there was no basis, in fact, for saying that there was any kind of benefit or unexpected or surprising result of pulling the tube internally.

[00:09:12] Speaker 04:
That's only confirmed.

[00:09:13] Speaker 01:
But it's your burden to show that.

[00:09:15] Speaker 01:
It's not their burden to show that.

[00:09:17] Speaker 01:
It's your burden to show that, isn't it?

[00:09:18] Speaker 04:
Well, we have, and we have shown that, Your Honor, because Ms.

[00:09:21] Speaker 04:
Balovitch, there is competing expert testimony here where she says, I don't understand

[00:09:25] Speaker 04:
the distinction between it because there's no functional basis.

[00:09:28] Speaker 04:
There's no functional benefit of pulling the tube inside versus leaving the tube on the outside.

[00:09:33] Speaker 04:
That's her consistent testimony.

[00:09:35] Speaker 04:
So there is contradictory testimony here that says there's no functional benefit that actually flows from this claimed limitation.

[00:09:44] Speaker 04:
there was nothing that was identifying the specification.

[00:09:46] Speaker 04:
To the contrary, the specification says that you can do it either way.

[00:09:50] Speaker 04:
The specification says you can pull it internal or you can leave it external and you can have an external closing.

[00:09:56] Speaker 04:
Specification is crystal clear that either option is perfectly sufficient and there's no

[00:10:01] Speaker 04:
There was no benefit or motivation that was identified in the specification as to one of the two options.

[00:10:07] Speaker 04:
The only reason this limitation came into the claims is because the initial application was disallowed by the patent office and they had to amend these claims in order to circumvent prior art, but there was never any identified basis.

[00:10:18] Speaker 02:
We're supposed to be looking at the limitations that are in the claims.

[00:10:21] Speaker 02:
They have to live with them, rise or fall on them for purposes of infringement, but you're going to have to live with them for purposes of obviousness too.

[00:10:29] Speaker 02:
But those are the limitations in the claims.

[00:10:31] Speaker 04:
Those are, Your Honor, but if the limitation is one that is just a finite number of two or three options and KSR instructs that one ordinary skill in the art... But Helman specifically testified that they weren't, that it was a more sophisticated design choice than your expert was making out.

[00:10:48] Speaker 04:
Well, I'm not sure that that's a credible piece of testimony, Your Honor, because here it's quite clear even from their specification that the two options are the thing closes on the outside or the thing

[00:10:58] Speaker 04:
comes into the inside.

[00:10:59] Speaker 04:
I think his testimony, he suggests that it takes some sophistication in order to construct how it closes on the inside.

[00:11:05] Speaker 04:
Again, we don't think that there's a great deal of credibility to that.

[00:11:08] Speaker 04:
But beyond that, the problem with it is it doesn't undermine the point that there are only two possible options.

[00:11:16] Speaker 04:
But beyond that, even if it wouldn't be readily apparent to someone, when it's an arbitrary design choice, that's the sort of thing that can't render a claim non-obvious.

[00:11:24] Speaker 04:
because it's arbitrary.

[00:11:26] Speaker 04:
Anyone can identify a piece of prior art and then make a arbitrary modification to it that wouldn't have been expressly discussed in the prior art.

[00:11:35] Speaker 04:
You could paint a particular piece a turquoise green color and claim that.

[00:11:40] Speaker 04:
But if it has no functional basis, if it's only this sort of thing that's a design feature, something that's wholly non-functional, the court's cases have been quite clear that that can't be the basis of demonstrating

[00:11:53] Speaker 04:
non-obviousness.

[00:11:55] Speaker 04:
So I think that the court's decisions in Cooley and Rice are clear on that.

[00:11:59] Speaker 04:
Similarly, the court's recent decision in Acco Brands I think is directly on point.

[00:12:03] Speaker 04:
There the court was confronted with

[00:12:07] Speaker 04:
a paper shredder that had two sensors, a thickness sensor and a presence sensor.

[00:12:11] Speaker 04:
The question was, what order do those sensors need to be put in?

[00:12:14] Speaker 04:
The prior art showed them being put in one order.

[00:12:18] Speaker 04:
The court found it obvious to do them in reverse order without finding of any motivation or anything along those lines because it was just clear that there were only two ways of doing it.

[00:12:27] Speaker 04:
It had no basis bearing on function.

[00:12:29] Speaker 04:
A person with ordinary skill in the art would understand.

[00:12:32] Speaker 04:
how to make that combination without any further showing.

[00:12:34] Speaker 04:
And again, that was the legal, the board truncated its analysis and obviousness too quickly by not going through those further steps of understanding obviousness, and I'll save my time.

[00:12:45] Speaker 04:
Thank you.

[00:12:49] Speaker 00:
May it please the court.

[00:12:50] Speaker 00:
Good morning, Your Honors.

[00:12:51] Speaker 00:
Keith Grohl is on behalf of the Pelley auto leave in this appeal.

[00:12:56] Speaker 00:
First of all, I want to start out replying to the argument about

[00:13:01] Speaker 00:
the board making findings in the institution decision that now Appellant is attempting to rely on in this appeal.

[00:13:08] Speaker 00:
As Judge O'Malley pointed out, nothing in the institution decision binds the board.

[00:13:13] Speaker 00:
That was made clear as late as the Trivascular case last year.

[00:13:15] Speaker 00:
And so, although Appellant would like to say this is a more narrow ground of appeal, we believe there's sufficient evidence and sufficient basis to say that there's no motivation to combine here as well as no motivation to combine and make the changes to reach the claimed invention.

[00:13:30] Speaker 00:
It was Movis's burden to show that one ordinary skill in the art would have been motivated to combine the Anu and Niren references to achieve the claimed invention and would have had a reasonable expectation of success in doing so.

[00:13:42] Speaker 00:
Because there is substantial evidence supporting the board's inclusion, Movis has changed theories on appeal in its reply brief and attempts to convince this court that it essentially should adopt a new standard for obviousness.

[00:13:53] Speaker 00:
So I want to first address the factual findings that the board made with respect to the new Naran combination and those references, and then address Mobus's new theory.

[00:14:02] Speaker 00:
Again, we're under the substantial evidence standard of review here.

[00:14:06] Speaker 00:
With respect to obviousness, the board undertook a thorough analysis within the interior limitation, which is the critical limitation here on appeal.

[00:14:14] Speaker 00:
It first looked closely at the differences in the prior art and the claimed invention.

[00:14:19] Speaker 00:
And the board found that with respect to Naran,

[00:14:21] Speaker 00:
Nothing in Naran or Anu describes or suggests pulling the terminal end of a cinch tube partially within the airbag interior as required by the claims.

[00:14:29] Speaker 00:
In fact, the board found that Naran works the exact opposite manner of the claimed invention because the Naran nozzle actually expands away from the airbag as the airbag is deploying, whereas the claimed invention pulls the terminal end of the cinch tube toward the airbag interior.

[00:14:46] Speaker 02:
So what's the benefit of the internal closure?

[00:14:49] Speaker 02:
Your friend on the other side wanted to hit really hard on that.

[00:14:51] Speaker 00:
Sure.

[00:14:52] Speaker 00:
The benefit of the internal closure, again, we don't have the burden to show any benefit.

[00:14:56] Speaker 00:
An inventor doesn't even have the burden to put the benefit in the patent.

[00:15:01] Speaker 00:
But the benefit here is our expert looked at this and he said,

[00:15:06] Speaker 00:
The benefit here is that it assists in closing the terminal end.

[00:15:10] Speaker 00:
So once you pull that terminal end within that airbag and it's deploying quickly, it actually essentially works as a suction.

[00:15:17] Speaker 00:
So when it pulls in, it then assists in closing the sit suit.

[00:15:20] Speaker 00:
So that is the benefit.

[00:15:23] Speaker 00:
their experts said, I don't really understand what the benefit is here.

[00:15:27] Speaker 00:
So basically you have the two experts disagreeing, one saying, I don't understand the benefit, and our experts saying, well, I fully understand the benefit with hindsight.

[00:15:34] Speaker 00:
When I look at this, I believe the inventors did it for this reason.

[00:15:38] Speaker 00:
So the board started out by considering.

[00:15:40] Speaker 02:
But that, of course, is only one option that's disclosed, right?

[00:15:45] Speaker 00:
I'm not sure I understand the question, Judge O'Malley.

[00:15:47] Speaker 02:
Well, I mean, the argument is that you're saying it could be either or.

[00:15:51] Speaker 00:
Well, it's not either or.

[00:15:53] Speaker 00:
I think it depends on what you mean by either or.

[00:15:58] Speaker 00:
The testimony here is you could design myriad number of airbags to close on the outside because we're dealing with the force rushing during deployment.

[00:16:07] Speaker 00:
And so the testimony is to turn that terminal in and pull it within the interior requires much more force than simply cinching on the outside.

[00:16:15] Speaker 00:
And that's important because with respect to the ANEW reference, what the board found

[00:16:20] Speaker 00:
was a new actually teaches it's the it's the cinched hole and what a new teaches is you never actually close the hole fully because what happens is in airbag design you deal with this ride down effect because what you don't want to happen is when an airbag deploy the person bounces off of it like a

[00:16:38] Speaker 00:
rock skipping off a pond.

[00:16:39] Speaker 00:
And so you have to deal with the ride down effect.

[00:16:42] Speaker 00:
And so you want the airbag to ride down as the person is engaging the airbag.

[00:16:47] Speaker 00:
And so the way a new does that, it actually teaches leaving that hole partially open.

[00:16:53] Speaker 00:
Now, if you combine that with the fact that it requires more force to pull that terminal in within the interior of the airbag to keep it out, well, one ordinary skill in the art would never look at a new and combine it with narrowing and say, okay,

[00:17:05] Speaker 00:
I want to put this nozzle on this new airbag and turn that terminal in and pull it within and close it.

[00:17:10] Speaker 00:
Because again, a new teaches leaving that hole open for purposes of ride down to address that issue.

[00:17:17] Speaker 02:
Now, what's your response to the argument that, well, this is all well and good, but it's still an arbitrary design choice?

[00:17:23] Speaker 00:
Well, the arbitrary design choice argument is an interesting one because it relies on two embodiments, the one disclosed of closing on the outside and the one disclosed closing on the inside.

[00:17:32] Speaker 00:
Well, Judge O'Malley, as you pointed out,

[00:17:34] Speaker 00:
That is classic patent prosecution.

[00:17:36] Speaker 00:
You start out claiming the broadest invention you can, and then when the examiner rejects it, you amend your claims.

[00:17:40] Speaker 00:
And so what happened is, how can it be arbitrary when the pictures show that it's pulling within, all the operative pictures show that it's pulling within, the prosecution history shows that claims were amended to argue over prior art, talking about that.

[00:17:56] Speaker 00:
And the claim language has that.

[00:17:58] Speaker 00:
So it certainly can't be arbitrary.

[00:17:59] Speaker 00:
It's a limitation of the claims, as you pointed out.

[00:18:01] Speaker 01:
Well, it can be arbitrary if it has no functional purpose.

[00:18:05] Speaker 00:
Well, but again, Judge Hughes, we're under the substantial evidence standard.

[00:18:08] Speaker 01:
No, I understand that.

[00:18:09] Speaker 01:
And it doesn't seem to me that they've met their burden of showing that it's

[00:18:13] Speaker 01:
that it has no functional purpose.

[00:18:15] Speaker 01:
But just the fact that it's different during the claim prosecution doesn't quite do it on this review.

[00:18:22] Speaker 01:
You still have to show that, or they have to show that it's not functional.

[00:18:27] Speaker 01:
But we're asking you, I mean, did you show

[00:18:29] Speaker 01:
I guess you've identified some arguments about why it actually is a design, not just a design choice, but a functional choice.

[00:18:38] Speaker 00:
That's correct.

[00:18:39] Speaker 00:
That's where our expert said he looked at this and he said it helps closing the terminal end of the tube on the inside of the airbag.

[00:18:45] Speaker 00:
And that's the functional purpose.

[00:18:47] Speaker 00:
And he went beyond that and said, you know, this was against conventional wisdom at the time, which we know because all the art was closing on the outside.

[00:18:54] Speaker 00:
And he said, no one would design it this way because you're dealing with more force.

[00:18:59] Speaker 00:
And so you're going to have to reinforce the stitching.

[00:19:02] Speaker 00:
You're going to have to have the nozzle.

[00:19:04] Speaker 00:
to blow harder, you're going to have to have fabric so it doesn't blow out because you're trying to pull this terminal into this tube within this airbag opening.

[00:19:11] Speaker 00:
So all of those factors together, along with the advantage, shows that this wasn't simply an arbitrary design choice and certainly is supported by substantial evidence in the board's conclusion.

[00:19:20] Speaker 00:
Now, we submit that because MOBUS knows that it's supported by substantial evidence, they're actually changing theories on appeal of obviousness.

[00:19:32] Speaker 00:
And what they say is,

[00:19:35] Speaker 00:
They want this court to believe that in an obvious design choice case, and in those types of cases, petitioners are not required to show a motivation to combine.

[00:19:42] Speaker 00:
Well, they're wrong on both counts.

[00:19:45] Speaker 00:
As an omission matter, they've waived this argument because we saw it for the first time in their reply brief.

[00:19:49] Speaker 00:
But even beyond that, Mobus's new theory is, it's contrary to this court's longstanding precedent.

[00:19:55] Speaker 00:
KSR even made clear that showing a motivation to combine is an important requirement of obviousness.

[00:20:01] Speaker 00:
And this court said in 2015 in Belden versus Birktek, quote, obviousness concerns whether a skilled artisan not only could have made, but would have been motivated to make the combination.

[00:20:14] Speaker 00:
And the would have been motivated to make the combination is missing here.

[00:20:17] Speaker 00:
There is nothing in the prior art that teaches closing on the inside at all.

[00:20:21] Speaker 00:
And there's no motivation to combine the anew and narrow references to make that combination.

[00:20:26] Speaker 00:
And also none of the cases that they actually rely on in their apply brief

[00:20:31] Speaker 00:
support the theory that this court has ever departed from requiring a motivation to guide.

[00:20:35] Speaker 00:
For example, they cite the Burroughs case.

[00:20:37] Speaker 00:
Well, the Burroughs case is a conception case.

[00:20:40] Speaker 00:
It has nothing to do with obviousness.

[00:20:42] Speaker 00:
They cite the Shire case in their reply brief.

[00:20:44] Speaker 00:
But that case, Shire says, quote, for a patent to be obvious, some kind of motivation must be shown so that the jury can understand why a person of ordinary skill in the art would have either thought of combining two or more references or modifying one to achieve the patent in dimension.

[00:20:59] Speaker 00:
And to be clear, the test is no different for, quote unquote, obvious design choice cases.

[00:21:04] Speaker 00:
This court still goes through the typical obvious analysis in those kinds of cases.

[00:21:08] Speaker 00:
But to be clear, the 450 patent is not an obvious design choice.

[00:21:12] Speaker 00:
For example, in the Henry Chu case, which is an obvious design choice case that they rely on in their reply brief, the court made clear where there is no teaching or suggestion in the prior art that would leave one of ordinary skill in the art to modify the prior art to achieve the claimed invention

[00:21:26] Speaker 00:
the claim invention cannot be the result of an obvious design choice.

[00:21:30] Speaker 00:
The court also noted in Chu that the patentee in that case had presented evidence that the claim structure and its function were different from the prior art, which indicated that Chu's claim design could not be an obvious design choice.

[00:21:42] Speaker 00:
Well, we've got similar evidence in this case.

[00:21:45] Speaker 00:
The configuration of pulling or then requires a more sophisticated design to overcome the additional forces of pulling or then, including, again, like I indicated earlier, the size and shape of the airbag, the materials and structure of the airbag, the nozzle configuration.

[00:22:01] Speaker 00:
All of those are different structural considerations you have to take into account to pull within the interior versus closing on the outside.

[00:22:09] Speaker 00:
Mr. Hughes also relies on the Acklebrand's case.

[00:22:11] Speaker 00:
Well, the Acklebrand's case, again, was an obvious design choice case.

[00:22:15] Speaker 00:
but the court engaged in the typical obviousness analysis in that case.

[00:22:19] Speaker 00:
The patent claimed a shredder that prevents paper jams using a combination of two sensors, a present sensor and a thickness sensor.

[00:22:27] Speaker 00:
The patent also claimed a controller that only turned the shredder on when the present sensor indicated that paper was present and the thickness sensor detects that the paper in the feed does not exceed the shredder's maximum capacity.

[00:22:41] Speaker 00:
This court, correctly reversing the board, found

[00:22:44] Speaker 00:
that the examiner in that case hadn't made a prima facie showing of obviousness because all of the elements of the claimed invention were in the prior art.

[00:22:52] Speaker 00:
The prior art also provided the motivation to combine, and it was the same motivation to combine, solving the same problem as the patent, cutting the motor after too much paper was detected in the shredder to avoid wear on the motor.

[00:23:06] Speaker 00:
So all of the prior art elements were there in the claimed invention.

[00:23:10] Speaker 00:
as well as the motivation to design.

[00:23:12] Speaker 00:
Now you compare that to this case.

[00:23:15] Speaker 00:
The claim structural design of the airbag in this case and its function is found nowhere in the prior art and MOBA's presented no evidence to show one of Ornish-Gilney art would have modified the prior art to achieve the claimed invention.

[00:23:26] Speaker 00:
So it simply cannot be an obvious design choice under an obviousness analysis here.

[00:23:32] Speaker 00:
The other argument that I want to make or address that Mr. Hughes made is this decoupling argument.

[00:23:37] Speaker 00:
He suggests that Naran provides this decoupling motivation.

[00:23:42] Speaker 00:
Well, if you look at the prosecution history of the patent, the decoupling argument with respect to Naran was made in relation to element, I'm going to call it 1D, but it's the next to the last element, whereas 1E, the last element of the claim, is the element that we're talking about here.

[00:23:58] Speaker 00:
So the decoupling argument was made with respect to the language of element 1D and it appears without necessitating closure of the base end of the cinch tube.

[00:24:07] Speaker 00:
And so that argument in prosecution, Naren wasn't in prosecution, but that argument was made about that distension point with respect to element 1D.

[00:24:15] Speaker 00:
With respect to element 1E that we're talking about here today, the claim language was added to say pulling within and it was distinguished over the prior art saying nothing in the prior art pulls within

[00:24:26] Speaker 00:
And that would not have been something that would have been intuitive to one of ordinary skill in the art at the time because you're pulling in and pulling in has to overcome those additional forces of pushing the airbag during deployment out.

[00:24:41] Speaker 00:
And so pulling that terminal end is different than the prior art.

[00:24:43] Speaker 00:
So that argument about decoupling was not made with respect to element 1E, it was made with respect to element 1D.

[00:24:51] Speaker 00:
So at the end of the day, your honors, what MOBUS is asking the court to do is depart from

[00:24:56] Speaker 00:
the typical obviousness analysis because what it believes is it believes this is a simple invention.

[00:25:01] Speaker 00:
But we would urge the court to engage in the standard obviousness analysis and along with the substantial evidence standard, affirm the board's decision.

[00:25:10] Speaker 00:
Unless you have any questions, that concludes my presentation.

[00:25:26] Speaker 04:
Thank you, Your Honor.

[00:25:26] Speaker 04:
So I'll just make two brief points.

[00:25:29] Speaker 04:
The first point is that our fundamental point is a legal question that the Board made in error of law.

[00:25:34] Speaker 04:
Now, Judge Hughes mentioned that we hadn't met our burden of showing evidence here, but I think the problem with that is because the Board never engaged in the correct fact-finding.

[00:25:43] Speaker 04:
That's because the board didn't realize the depth of the obviousness inquiry that it needed to undertake.

[00:25:49] Speaker 04:
Once it found no teaching suggestion or motivation, it stopped the analysis.

[00:25:54] Speaker 04:
It did not proceed to consider whether or not this was a circumstance of finite design options, and it did not stop to consider whether or not that there was

[00:26:02] Speaker 04:
a lack of benefits such that the arbitrary design choice rationale would apply.

[00:26:06] Speaker 04:
So it's true that the board made no factual findings in support of us, but that's because it was infected by the legal error of understanding too constricted a view of what the obviousness test requires.

[00:26:17] Speaker 04:
In this circumstance, the right result would be to reverse as a matter of law to identify the proper obviousness test that includes not just the teaching suggestion motivation,

[00:26:27] Speaker 04:
but a broader search for a rationale that one would conceive of the combination and reverse to the board to consider the evidence before it under the proper legal standard that looks at all of these different factors in understanding whether or not there's a rationale to make that combination.

[00:26:43] Speaker 04:
We submit that that's the proper outcome.

[00:26:46] Speaker 04:
The second basis for decision in this case

[00:26:48] Speaker 04:
is there's still, I don't believe, any clear answer to the straightforward argument that the simple combination of Inui and Narin would result in a device where the drawstring, because of its length, would pull the cinch tube internal to the bag.

[00:27:03] Speaker 04:
The only way you result in a device where the cinch tube is on the outside at the time that the bag is fully inflated is if you add further modifications to that of lengthening the drawstring.

[00:27:16] Speaker 04:
in order to make those modifications, which again Ms.

[00:27:18] Speaker 04:
Balevich said you might think to do.

[00:27:20] Speaker 04:
But in the course of making those modifications, one option that a skilled artist would necessarily think of

[00:27:26] Speaker 04:
is the difference between the tube terminating within the bag and without the bag.

[00:27:31] Speaker 04:
Because to make the decision of lengthening the drawstring requires one to think about the position of the tube at the point that the bag is fully inflated.

[00:27:40] Speaker 04:
That's a separate additional reason why there would have been a clear rationale to make the combination that exists in the prior art.

[00:27:46] Speaker 04:
And again, the board failed to consider that and that's an additional basis.

[00:27:51] Speaker 03:
Specifically and explicitly considered your proposed combination.

[00:27:56] Speaker 04:
But what they didn't consider was whether in making that combination, one would think along the way as one of the steps.

[00:28:01] Speaker 04:
They said one would lengthen the string in order to avoid this result.

[00:28:06] Speaker 04:
And maybe that's so.

[00:28:07] Speaker 04:
But in making the decision to lengthen the string, one would think along the way of, if I don't lengthen the string, I'm going to have an internal draw.

[00:28:14] Speaker 04:
And so that option, that would be obvious apparent.

[00:28:18] Speaker 04:
And the additional testimony is that there is no unpredictable or surprising result that would come from that.

[00:28:22] Speaker 04:
All of these things were fully predictable to one who was skilled in the art.

[00:28:28] Speaker 02:
Thank you.

[00:28:29] Speaker 04:
Thank you.