[00:00:00] Speaker ?:
So, I'm going to show you how to do it.

[00:00:30] Speaker 03:
All rise.

[00:00:32] Speaker 05:
The United States Court of Appeals for the Federal Circuit is now open.

[00:00:36] Speaker 05:
End session.

[00:00:37] Speaker 05:
God save the United States in this final court.

[00:00:41] Speaker 05:
Please be seated.

[00:00:44] Speaker 05:
Our first case today, 2016-2372, Inray Ellis, Mr. Oliveiro.

[00:00:59] Speaker 01:
please the court.

[00:01:00] Speaker 01:
Good morning.

[00:01:01] Speaker 01:
My name is Lawrence Oliverio for the appellant.

[00:01:08] Speaker 01:
And I'm not going to stand here and repeat what's in the briefs.

[00:01:11] Speaker 01:
You've read the briefs.

[00:01:12] Speaker 01:
You have them.

[00:01:14] Speaker 01:
You have certainly understood them as well as they can be understood.

[00:01:19] Speaker 01:
There are two things I would like to say, though, that are not necessarily stated in the briefs.

[00:01:26] Speaker 01:
I have some questions from the court, actually.

[00:01:29] Speaker 02:
In the blue brief, page 16.

[00:01:34] Speaker 01:
16?

[00:01:34] Speaker 01:
Yeah.

[00:01:35] Speaker 02:
Huh?

[00:01:38] Speaker 02:
I see a digital figure at the bottom of the page.

[00:01:42] Speaker 02:
A digital figure?

[00:01:44] Speaker 02:
Yeah, a cartoon kind of figure.

[00:01:45] Speaker 02:
A cartoon figure, yes.

[00:01:47] Speaker 02:
Yeah.

[00:01:47] Speaker 02:
Where is that in the record?

[00:01:50] Speaker 01:
It's stated in the reference itself, Your Honor.

[00:01:57] Speaker 01:
I'm sorry.

[00:01:58] Speaker 01:
The figure itself is not literally in the record.

[00:02:00] Speaker 02:
Oh, so it's not in the record.

[00:02:02] Speaker 01:
That's correct.

[00:02:04] Speaker 02:
And so the one at page 20 is not in the record.

[00:02:07] Speaker 02:
The one at 21 is not in the record.

[00:02:09] Speaker 02:
The one at 39 is not in the record.

[00:02:11] Speaker 01:
Cartoon figures are not in the record.

[00:02:14] Speaker 01:
Not literally in the record.

[00:02:16] Speaker 01:
That's correct.

[00:02:17] Speaker 01:
Well.

[00:02:19] Speaker 01:
A picture is worth a thousand words, Your Honor.

[00:02:22] Speaker 01:
That's the point.

[00:02:24] Speaker 01:
Then the point is, it's not in the record.

[00:02:26] Speaker 01:
The point is to make these briefs as expressive and as clear.

[00:02:33] Speaker 02:
Really?

[00:02:34] Speaker 02:
I thought the point was to confine your statements of factual information to the record.

[00:02:43] Speaker 02:
Well.

[00:02:43] Speaker 02:
This wasn't presented below, right?

[00:02:45] Speaker 02:
Pardon?

[00:02:46] Speaker 02:
These cartoons were not presented below.

[00:02:49] Speaker 01:
The cartoons were not included in the briefs in this literal form.

[00:02:53] Speaker 01:
That's correct.

[00:02:59] Speaker 04:
So what was it that you said is not necessarily stated in the brief?

[00:03:06] Speaker 01:
Well, the Patent Office, Your Honor, in its reply brief states, and I'm looking at page 19, they state at least four things on that page that are, as a matter of technology, factual reality.

[00:03:30] Speaker 01:
untrue, incorrect, and don't apply to this case.

[00:03:35] Speaker 01:
They say, for example... Page 19 did you say?

[00:03:38] Speaker 01:
I'm sorry?

[00:03:38] Speaker 03:
Page 19?

[00:03:39] Speaker 01:
Page 19.

[00:03:40] Speaker 03:
Okay.

[00:03:41] Speaker 01:
In which brief?

[00:03:43] Speaker 01:
In the patent office, the solicitor's... The red brief.

[00:03:46] Speaker 01:
...apply brief.

[00:03:48] Speaker 01:
Response, actually.

[00:03:49] Speaker 01:
They say, one of ordinary skill in the art

[00:03:53] Speaker 01:
would desire to reduce electrical arcing that would otherwise eventually degrade the connection characteristics of an electrical connection system.

[00:04:01] Speaker 01:
That's just flat out, as applied to the Schlesinger reference, not true.

[00:04:09] Speaker 01:
Well, how do we know it's not true?

[00:04:11] Speaker 01:
The reference itself, Your Honor, the Schlesinger references we've explained in the briefs,

[00:04:17] Speaker 01:
is confined.

[00:04:19] Speaker 01:
By the way, the slush is another point that I meant to make that I didn't necessarily make in these briefs.

[00:04:29] Speaker 02:
If you didn't make it in the briefs, you have points and authorities.

[00:04:34] Speaker 02:
Isn't a point waived if it's not in the briefs?

[00:04:37] Speaker 01:
Your Honor, I'm not making a new argument.

[00:04:40] Speaker 01:
I'm just explaining in different words what's in the reference.

[00:04:44] Speaker 01:
This is not a new argument.

[00:04:48] Speaker 04:
Isn't what the prior shows a factual question that we have to give deference to the board's determinations?

[00:04:58] Speaker 01:
No, not if they're factually incorrect, not if the reference itself contradicts what the board concludes.

[00:05:04] Speaker 02:
At page 21 of your blueberry, you say any person skilled in the art would recognize immediately on reading Schlesinger

[00:05:13] Speaker 02:
that the 1 quarter inch Schlesinger phone jack of figure 12 will, quote, melt down, close quote, if modified in structure to incorporate a grounder subject to the use intended by melt.

[00:05:27] Speaker 02:
Putting aside your cartoon figure frying, I don't find any support for your factual argument of why a posita would have immediately recognized this.

[00:05:39] Speaker 02:
So show me in the record where that is.

[00:05:42] Speaker 01:
Well, it's in my reply brief, Your Honor.

[00:05:46] Speaker 01:
I cite numerous citations to support that.

[00:05:54] Speaker 02:
Where are you in the reply?

[00:05:56] Speaker 01:
Well, in my reply brief to the Patent Office.

[00:06:01] Speaker 02:
So where is that in the record, please?

[00:06:02] Speaker 01:
Well, perhaps the single best statement, I think, in this lesson you referenced, which is stated on page 11,

[00:06:12] Speaker 01:
of our reply brief is that this Schlesinger reference states that it uses a transformer.

[00:06:20] Speaker 01:
That all by itself tells you, tells a person skilled in the art that this device.

[00:06:29] Speaker 02:
And my question to you was, where in the record do we know that a person skilled in the art would know that?

[00:06:37] Speaker 02:
You know, I mean, you can say, well, you should know.

[00:06:41] Speaker 02:
But I need to know from the record.

[00:06:44] Speaker 01:
Well, what I'm saying is that the record teaches that to a person skilled in the art.

[00:06:49] Speaker 04:
Yes.

[00:06:50] Speaker 04:
Where does Schlesinger mention alternating current?

[00:06:52] Speaker 01:
I'm sorry?

[00:06:53] Speaker 04:
Where does Schlesinger mention alternating current?

[00:06:57] Speaker 01:
The fact that it talks about a transformer, first of all.

[00:07:02] Speaker 01:
Only alternating current can be transformed.

[00:07:05] Speaker 01:
Direct current cannot be transformed.

[00:07:09] Speaker 01:
Where's that in the record?

[00:07:10] Speaker 01:
That's just the reality of factual technology reality.

[00:07:14] Speaker 01:
It can't be.

[00:07:15] Speaker 01:
That statement in and of itself teaches any person who knows anything about electricity, knows anything about transforming electrical signals, that that signal is necessarily an alternating current signal.

[00:07:30] Speaker 04:
You previously characterized phone jacks such as those in ELLIS as DC current systems, right?

[00:07:39] Speaker 04:
Did you use that phrasing?

[00:07:40] Speaker 01:
Your Honor, I will admit here today on the record that we said that that is incorrect.

[00:07:48] Speaker 01:
It's false, it's wrong, it's incorrect, it's a mistake.

[00:07:52] Speaker 01:
That's not true.

[00:07:54] Speaker 01:
There is no discussion of D.C.

[00:07:56] Speaker 01:
This entire reference is devoted to A.C.

[00:08:02] Speaker 04:
Okay, so you were just wrong when you said that?

[00:08:04] Speaker 01:
That is correct.

[00:08:07] Speaker 01:
But we also did say that this reference in another place cannot be used for DC power.

[00:08:25] Speaker 03:
OK.

[00:08:28] Speaker 04:
Why haven't you waved your teaching away argument?

[00:08:33] Speaker 01:
Why haven't we waved our teaching away argument?

[00:08:36] Speaker ?:
Yes.

[00:08:37] Speaker 04:
I mean, you admitted to the board that you didn't make the argument in your briefs, right?

[00:08:41] Speaker 01:
No.

[00:08:42] Speaker 01:
We didn't admit that we didn't make a teaching away argument, right?

[00:08:47] Speaker 01:
It's not true.

[00:08:47] Speaker 01:
The entire record of the appeal was devoted to a teaching away argument.

[00:08:55] Speaker 04:
Where does the word voltage appear in your briefs before the board?

[00:09:03] Speaker 01:
Well, it's certainly in my oral argument.

[00:09:06] Speaker 01:
It's in the affidavit that was submitted in support of the brief.

[00:09:13] Speaker 02:
Must have been electrifying.

[00:09:18] Speaker 05:
Mr. Oliveira, would you like to save the remainder of your time for rebuttal?

[00:09:21] Speaker 01:
I'm sorry?

[00:09:21] Speaker 05:
I said, would you like to save the remainder of your time for rebuttal?

[00:09:23] Speaker 05:
Yes.

[00:09:24] Speaker 05:
OK.

[00:09:24] Speaker 05:
Let's hear from the Patent Office.

[00:09:38] Speaker 00:
Good morning, Your Honors.

[00:09:39] Speaker 00:
May I please the court, Philip Warrick, for the PTO?

[00:09:43] Speaker 00:
This case, at its heart, is really just about adding a third ground contact to the electrical contacts that are already disclosed in Schlesinger.

[00:09:53] Speaker 00:
And we know this because Mr. Ellis is not making any specific arguments about the claims that don't involve a ground contact of claims 14, 18, and 19.

[00:10:03] Speaker 04:
You don't take the position that Mr. Ellis is not qualified to

[00:10:08] Speaker 04:
to express opinions on this area of art, do you?

[00:10:13] Speaker 00:
We're not taking that position.

[00:10:14] Speaker 00:
I don't know that we would concede that he is an expert in the area, but he certainly permitted to submit a declaration and the examiner considered the declaration actually in great detail.

[00:10:25] Speaker 00:
If you look at Appendix 675, he explains referencing the final office action where the specific problems with the declaration were identified.

[00:10:36] Speaker 00:
where he nonetheless said that he considered the declaration as part of the totality of the evidence and considering whether the claims were obvious or anticipated.

[00:10:46] Speaker 04:
But do I understand that the examiner ultimately said he discredits it in its entirety or did he just discredit specific portions of it?

[00:10:53] Speaker 00:
Well, he rebutted specific portions of it, but he did consider it.

[00:10:57] Speaker 00:
So he noted there were problems with it.

[00:10:59] Speaker 00:
There was a lack of evidentiary basis.

[00:11:01] Speaker 00:
For example, there was not any specific analysis of the claim language at issue, but then he went on, and this is appendix 675 in particular, to go on to say that he was considering the declaration.

[00:11:19] Speaker 00:
They went on to consider paragraph by paragraph and rebut why the points made by Mr. Ellis were not persuasive.

[00:11:26] Speaker 00:
on obviousness.

[00:11:28] Speaker 04:
What's your response to your friend on the other side when he says that the presence of a transformer in Schlesinger necessarily requires alternating current?

[00:11:39] Speaker 00:
Well, I don't know that that is necessarily true.

[00:11:42] Speaker 00:
I'm not aware of anything in the record that says one way or the other.

[00:11:45] Speaker 00:
That same paragraph in Schlesinger also talks about the possibility of being run on battery power, which is typically direct current.

[00:11:53] Speaker 00:
But in any event, the examiner found

[00:11:56] Speaker 00:
that the teachings of Schlesinger would support either alternating current or direct current.

[00:12:02] Speaker 00:
And there's been no real rebuttal to that finding.

[00:12:05] Speaker 00:
And at the end of the day, we have a prior art system that has already the positive and negative contacts.

[00:12:12] Speaker 00:
And we're just talking about adding the third contact for a ground, which is something that Mr. Ellis in his reply brief at page eight admits is universally known to any person, even someone not skilled in the art, to have a third contact.

[00:12:24] Speaker 00:
And the reason the examiner specifically looked to MAL is that MAL teaches a ground contact that makes a connection before the positive and negative contacts do, which reduces sparking.

[00:12:35] Speaker 00:
MAL taught that that is a problem in other plug and jack connections, standard connections, such as what Schlesinger uses.

[00:12:45] Speaker 00:
And so it would be obvious to, instead of using that standard phono jack and plug that is disclosed in Schlesinger, to substitute the MAL reference.

[00:12:56] Speaker 00:
If Your Honor's have no further questions.

[00:12:59] Speaker 05:
Okay, thank you, Mr. Warwick.

[00:13:01] Speaker 05:
Mr. Oliveiro, you have some rebuttal time?

[00:13:03] Speaker 01:
Your Honor, just one point.

[00:13:05] Speaker 01:
The examiner did not consider anything that Larry Ellis submitted in his brief, and I will just add one last thing.

[00:13:14] Speaker 01:
My client, Mr. Ellis, asked me to come here to tell you

[00:13:18] Speaker 01:
that it is literally impossible to reinvent, re-engineer his device from a phone jack.

[00:13:29] Speaker 01:
The phone jack is the one and only embodiment of roughly 12 different iterations that are disclosed in this Schlesinger reference that's even relevant to this case.

[00:13:42] Speaker 01:
The rest of those iterations, the rest of that disclosure doesn't

[00:13:46] Speaker 01:
call for or disclose a mounting system, an electrically powered device that mounts via a connection that penetrates a mounting wall.

[00:13:58] Speaker 01:
The only iteration is that one phone jack.

[00:14:03] Speaker 01:
And that phone jack, as depicted in that patent and described, is something that every person skilled in the art knows is purposely designed

[00:14:14] Speaker 01:
to work on microvolts, not on megavolts, not on tens of volts, not on ones of volts.

[00:14:21] Speaker 01:
They are two entirely different technologies, the Mao and the Schlesinger, to a person skilled in the art who reads those patents.

[00:14:34] Speaker 05:
Okay, thank you.

[00:14:35] Speaker 05:
Thank both counsel for their argument.

[00:14:36] Speaker 05:
The case is taken under submission.