[00:00:00] Speaker 03:
We have one remaining case this morning, which is number 16-1911, IP Venture Inc.

[00:00:08] Speaker 03:
versus FedEx Corporation, Mr. Thomas.

[00:00:11] Speaker 03:
Oh, I'm sorry.

[00:00:12] Speaker 03:
We have an admission.

[00:00:14] Speaker 03:
Hold on one moment.

[00:00:15] Speaker 03:
We have an admission here.

[00:00:16] Speaker 03:
Judge Hughes has a motion.

[00:00:18] Speaker 00:
Thank you.

[00:00:19] Speaker 00:
I'm happy to move the admission of my clerk, Christopher Michael Bruno, who is leaving me today.

[00:00:27] Speaker 00:
In fact, he served with me for the last year in a very outstanding capacity.

[00:00:32] Speaker 00:
I'm going to miss him and his work, but I'm happy to see him move on in his career.

[00:00:37] Speaker 00:
I wish him the best of luck.

[00:00:39] Speaker 00:
So I move the admission of Christopher Michael Bruno, who is a member of the bar and is in good standing with the highest court of New York.

[00:00:46] Speaker 00:
I have knowledge of his credentials, and I'm satisfied that he possesses the necessary qualifications.

[00:00:53] Speaker 03:
Should we grant a motion judging now?

[00:00:56] Speaker 02:
I think we ought to deliberate for a while, but I'm inclined to grant it.

[00:01:01] Speaker 03:
OK.

[00:01:02] Speaker 03:
Your motion is granted.

[00:01:03] Speaker 03:
And Mr. Bruno, welcome to the Bar report.

[00:01:06] Speaker 03:
And congratulations for a year of a job well done.

[00:01:09] Speaker 03:
And we look forward to seeing you here in the future, I hope.

[00:01:15] Speaker 01:
Thank you.

[00:01:15] Speaker 01:
Raise your hand, please.

[00:01:17] Speaker 01:
You solemnly swear that you will comport yourself as an attorney and counsel for this court of right doing and according to law, and that you will support the Constitution of the United States of America.

[00:01:25] Speaker 01:
I do.

[00:01:26] Speaker 01:
You're required to support the court.

[00:01:30] Speaker 03:
OK.

[00:01:31] Speaker 03:
Now, Mr. Connelly.

[00:01:35] Speaker 02:
Hard act to follow, right?

[00:01:44] Speaker 04:
May I please support?

[00:01:46] Speaker 04:
This is an appeal from a PTab decision concerning an inter-partage review.

[00:01:53] Speaker 04:
The patent in question, the 165 patent, serves to monitor position and shipping conditions for packages during their shipment.

[00:02:04] Speaker 04:
To support such monitoring, a wireless device is within or affixed to each package.

[00:02:13] Speaker 04:
FedEx petitioned the PTO

[00:02:15] Speaker 04:
and sought to invalidate all claims.

[00:02:17] Speaker 04:
The board rendered a decision finding all claims were proven invalid.

[00:02:24] Speaker 04:
However, the law and evidence shows otherwise.

[00:02:27] Speaker 04:
Generally speaking, our complaint is that the board improperly relied on unreasonably broad and distorted claim constructions in order to salvage a deficient petition.

[00:02:45] Speaker 04:
One specific issue is the phrase wireless tracking device, which appears in several of the independent claims.

[00:02:56] Speaker 04:
This, according to the board, and it's not disputed at this point, was construed to be a device that is capable of monitoring both position and shipping conditions and also capable of wirelessly communicating.

[00:03:13] Speaker 02:
Is there anything in the claims itself that where it says that the wireless tracking device, whether it's one unit or two pieces, has to be on the package?

[00:03:28] Speaker 04:
The phrase is a wireless tracking device, and it says it's a fixed or within a package.

[00:03:40] Speaker 04:
In fact, as a petitioner has the burden to prove

[00:03:42] Speaker 04:
in this case.

[00:03:45] Speaker 04:
And with respect to the wireless tracking device, according to the board, that device must do two things.

[00:03:53] Speaker 04:
It must monitor position and it must monitor shipping conditions.

[00:03:58] Speaker 04:
Despite the fact that in the petition FedEx only set forth that, in their opinion,

[00:04:12] Speaker 04:
The wireless tracking device was either what's called the sensors 1126, which is attached to a smaller item called cargo.

[00:04:23] Speaker 04:
And separately, they argued in the alternative that the wireless tracking device could also be what's called the monitor 1114, which is attached to a larger object called a trailer.

[00:04:36] Speaker 03:
If I read your brief correctly, you agree that the trailer is a package.

[00:04:42] Speaker 03:
Right.

[00:04:43] Speaker 04:
We're not disputing what is a package.

[00:04:47] Speaker 04:
It could be the cargo or it could be the trailer.

[00:04:49] Speaker 02:
Except with respect to claim 23.

[00:04:52] Speaker 04:
Except with respect to dependent claim 23, which specifies that the package has to be portable by a person, which is in dispute.

[00:05:02] Speaker 03:
And claims 23 and 24 were not invalidated for anticipation, but for obviousness, right?

[00:05:09] Speaker 04:
They were found obvious.

[00:05:12] Speaker 04:
But principally with respect to the package and the portability, the board relied and FedEx relies on the same reference we're dealing with with the wireless tracking device, the Richards reference, and it found that it disclosed a portable package.

[00:05:35] Speaker 02:
So despite the fact... So your position is that if the

[00:05:39] Speaker 02:
with respect to the first claim, if the truck is the package, then you've got one aspect of the wireless tracking device on the truck, the other within the truck, but they're two separate packages?

[00:05:59] Speaker 04:
Well, basically there's two packages and there's two devices, in our opinion.

[00:06:05] Speaker 03:
But if the trailer is the package, both of the devices are within the trailer, right?

[00:06:12] Speaker 04:
If the trailer is the package, then the monitor is attached to the package, and that provides the position sensor.

[00:06:21] Speaker 04:
And the sensors are attached to the cargo.

[00:06:26] Speaker 03:
But they're still within the package?

[00:06:29] Speaker 04:
Normally, they're not within the package.

[00:06:31] Speaker 04:
Why not?

[00:06:32] Speaker 04:
They're not within the trailer.

[00:06:33] Speaker 04:
Sometimes they may be within the trailer because it's a shipment and so you pick up the package, the small package, which is called the cargo from someone's home and you drop it off at the FedEx station and then the truck comes later and then the package is moved into the truck.

[00:06:56] Speaker 03:
So at that point... So at that point it's within the trailer.

[00:06:59] Speaker 04:
Yes.

[00:07:03] Speaker 04:
With respect to where you're going with that, with respect to claim 23, that has to deal with whether that trailer is portable by a person.

[00:07:11] Speaker 02:
And the part that I'm having trouble with is so the board decided it didn't have to decide the question of whether the truck is portable.

[00:07:19] Speaker 02:
Yes.

[00:07:19] Speaker 02:
Because they said as long as something's portable, the cargo inside the truck, that that's all they had to decide.

[00:07:28] Speaker 04:
Well, in the petition, the petitioner

[00:07:31] Speaker 04:
said that either the small cargo or the massive trailer or anything even larger than that would be portable by a person.

[00:07:42] Speaker 04:
So they said either one, either so-called package works for them.

[00:07:50] Speaker 04:
In our opinion, we're focusing on the trailer and we're saying that's with respect to claim 23, that there's no way that that can be portable by a person.

[00:07:59] Speaker 02:
Explain to me where Claim 23 came from.

[00:08:01] Speaker 02:
That was added.

[00:08:02] Speaker 02:
So what is it that was added where Claim 23 adds something to the prior art?

[00:08:12] Speaker 04:
I don't recall if it was added.

[00:08:14] Speaker 04:
You're suggesting it was added later during an amendment or something?

[00:08:16] Speaker 02:
It was added during the prosecution.

[00:08:18] Speaker 02:
It was not initially in the application.

[00:08:23] Speaker 04:
I don't recall.

[00:08:25] Speaker 04:
I don't think that's particularly germane.

[00:08:28] Speaker 04:
With respect to the portability of the package and claim 23, as I mentioned, FedEx position for the construction of that was basically unlimited as to package size and unlimited as to mechanical assistance such that it's capable of being moved.

[00:09:00] Speaker 04:
Our construction was what we thought was more appropriate would be that it refers to a package capable of being carried by a person.

[00:09:12] Speaker 04:
And the board went in sort of a weird direction.

[00:09:18] Speaker 04:
Their construction was basically they halfway decided it and said it means that not

[00:09:29] Speaker 04:
excluding all forms of mechanical assistance and as encompassing objects the size of a crate or refrigerator.

[00:09:41] Speaker 02:
So why does the refrigerator thing, I mean I'm not quite sure why you're so focusing on the refrigerator because isn't really the point that you're making is that

[00:09:54] Speaker 02:
that with respect to Claim 23 to be affixed on or within a package and if it's portable it's got to be on the same package as opposed to the truck and the internal package.

[00:10:10] Speaker 02:
In other words, isn't that the whole point?

[00:10:12] Speaker 04:
Well, that's one point.

[00:10:16] Speaker 04:
The case is somewhat confusing admittedly because

[00:10:20] Speaker 04:
the petition started saying that either things could be packages and either of the devices, the monitor or the sensors, could be the wireless tracking device.

[00:10:31] Speaker 04:
So they had sort of a broad view of things.

[00:10:35] Speaker 04:
And then during the trial before the board, because of the construction of what a wireless tracking device is, it had to do two things.

[00:10:49] Speaker 04:
the position and the sensing, and that's not available from either of them individually.

[00:10:56] Speaker 02:
So then the board... Am I correct?

[00:10:57] Speaker 02:
There was expert testimony that said they both could do both, but the board didn't rely on that.

[00:11:05] Speaker 04:
The board definitely didn't rely on it, and I don't really concede that the testimony from the expert said that.

[00:11:13] Speaker 04:
The testimony from the expert was generally inconsistent, would be my opinion.

[00:11:27] Speaker 04:
So I left off saying that the board had a sort of in-between or halfway baked construction.

[00:11:36] Speaker 04:
And that was with respect to the refrigerator.

[00:11:40] Speaker 04:
The refrigerator term appears in the reference.

[00:11:43] Speaker 04:
So they sort of crafted the construction to encompass the phrase in the reference.

[00:11:57] Speaker 04:
And the other thing that's confusing, well, we requested rehearing specifically to get clarification on how it is that the board is coming up with the notion that the trailer is portable by a person, since this was not clear at all.

[00:12:20] Speaker 02:
Right, and they said they didn't decide that question.

[00:12:22] Speaker 04:
And they refused again to decide it, but they added some language about

[00:12:27] Speaker 04:
basically blaming it on Mike R's side and they said IP venture does not demonstrate the claim 23 requires that the wireless tracking device be holding and exclusively affixed to the recited package or precludes the wireless tracking device from being partially affixed.

[00:12:50] Speaker 04:
So out of the blue they arrived at this theory that

[00:12:57] Speaker 04:
now after they've taken two separate devices and combined them somehow and saying that's the wireless tracking device and that thing has to be attached to a package and now with respect to the package they're saying that they never really clarify how they're getting over the two package issue but they said that it's

[00:13:23] Speaker 04:
It's enough to be partially affixed now.

[00:13:26] Speaker 03:
What does the specification of the prosecution history tell us about the meaning of portable?

[00:13:31] Speaker 04:
It doesn't really tell us anything about the meaning of portable.

[00:13:34] Speaker 04:
That's why we're relying on the general ordinary meaning to one skilled in the art.

[00:13:39] Speaker 04:
And there is a dictionary definition in the brief.

[00:13:45] Speaker 04:
We think clearly supports our plain meaning interpretation of that.

[00:13:53] Speaker 04:
Opposing counsel will probably tell you that he thinks that that definition support his position.

[00:14:03] Speaker 02:
What did the board mean by partially affixed?

[00:14:07] Speaker 04:
Partially affixed, I believe they mean that it's pretty clear in their decision that they're relying on the smaller cargo 1134 to be the so-called package.

[00:14:23] Speaker 04:
And so they are saying, they appear to be saying that the wireless tracking device, a part of that, the sensing part, is attached to that smaller cargo.

[00:14:39] Speaker 02:
Right, well there isn't.

[00:14:40] Speaker 02:
And they're ignoring the... Let's assume the sensors are attached to that cargo.

[00:14:44] Speaker 04:
Yes.

[00:14:45] Speaker 02:
But you don't have the other device attached to that cargo.

[00:14:49] Speaker 04:
The other device is completely different.

[00:14:51] Speaker 04:
It's like when you have a package, you're shipping it through FedEx.

[00:14:55] Speaker 04:
When you go to FedEx, it's your package, right?

[00:14:58] Speaker 04:
And then when it later goes into the truck in FedEx, does that package become a different package?

[00:15:06] Speaker 04:
It makes no sense.

[00:15:09] Speaker 04:
And the two packages don't travel together, and the devices are associated with these different packages.

[00:15:16] Speaker 04:
So how they get...

[00:15:19] Speaker 04:
from two things that travel differently in time and space as they become one.

[00:15:23] Speaker 04:
That's sort of the first issue.

[00:15:25] Speaker 04:
And then the second issue is kind of on top of that mess.

[00:15:32] Speaker 04:
It has to be, the package has to be portable by a person.

[00:15:35] Speaker 04:
And to the extent that the board is relying on the larger item, the trailer, that cannot be deemed portable by a person.

[00:15:46] Speaker 04:
That's completely unreasonable.

[00:15:50] Speaker 02:
Again, so why do you care about the refrigerator?

[00:15:53] Speaker 04:
I care less about the refrigerator.

[00:15:57] Speaker 04:
Opposing counsel loves the refrigerator because the refrigerator, the board was presumably convinced that the refrigerator is portable by a person.

[00:16:11] Speaker 02:
So what, even if it is portable by a person with the use of a dolly, it still wouldn't have both

[00:16:19] Speaker 02:
tracking devices on it.

[00:16:21] Speaker 04:
It still wouldn't, but the board artificially fabricated the combination of these two separate things.

[00:16:31] Speaker 00:
Well, it would if the dolly had one of the devices and the refrigerator had the other, which is comparable to the truck having one of the devices and the packet having the other.

[00:16:44] Speaker 04:
I'm not sure what your hypothetical includes, but a dolly traditionally has no electrical components.

[00:16:54] Speaker 04:
And it wouldn't expand the wireless tracking capability for... No, but the analogy is the same.

[00:17:00] Speaker 00:
The board is basically concluding that for a worldwide person, it doesn't mean unassisted.

[00:17:06] Speaker 00:
It can be assisted.

[00:17:07] Speaker 00:
It uses a dolly, but why isn't a forklift a comparable version of a dolly or a truck?

[00:17:16] Speaker 00:
And then you have both of the things attached.

[00:17:22] Speaker 04:
see the logic.

[00:17:23] Speaker 04:
What the reference says is what the reference says and the reference has one thing referred to as cargo and has another thing referred to as a tractor trailer and that trailer is designed to receive various different cargo pieces and it is able to wirelessly communicate with those things but only when they're within the truck and the

[00:17:52] Speaker 04:
The board did make some statements about the ability for the... I don't really understand how that temporal argument helps you.

[00:18:05] Speaker 00:
If the reference anticipates part of the time when all the elements are in the truck and the like, the fact that it may not anticipate when the car goes move doesn't seem to get you out of your problem.

[00:18:19] Speaker 04:
It depends how you consider the reference.

[00:18:22] Speaker 04:
directing your attention to that particular temporal argument.

[00:18:26] Speaker 04:
We don't think we need that.

[00:18:33] Speaker 04:
I think I'm beyond the scope of my time.

[00:18:37] Speaker 03:
Yeah, all right.

[00:18:38] Speaker 03:
We'll give you one minute for remodel.

[00:18:49] Speaker 05:
Good morning, Your Honor, and may it please the Court.

[00:18:53] Speaker 05:
I'm here representing FedEx, obviously, and we believe that substantial evidence in the record supports the board's conclusions in this particular case.

[00:19:03] Speaker 05:
All the claims are either

[00:19:05] Speaker 02:
Anticipated by the Richards reference or rendered obvious in the common there are two other references that you agree that the devices Whatever they are whether it's multiple devices or one device The

[00:19:30] Speaker 02:
And that's what the claims say.

[00:19:32] Speaker 05:
It says a fixture within a package.

[00:19:34] Speaker 05:
I agree that certainly at least, I mean, claim 13, of course, it's in the preamble.

[00:19:39] Speaker 05:
And if you look at the body of the claim, actually, I think it just says a package.

[00:19:43] Speaker 05:
So it says for use with.

[00:19:46] Speaker 05:
And so there could be an argument there, but we didn't make that argument.

[00:19:49] Speaker 05:
So I'm not going to get into that now.

[00:19:51] Speaker 02:
So the way you get, as it relates to those initial claims, before we get to claim 23, is that one is on the truck, which you say is, alternatively, a package.

[00:20:06] Speaker 02:
And then one is in the cargo, which is within the truck.

[00:20:09] Speaker 05:
So I think maybe it makes sense to take one step back and look at what the claim says.

[00:20:14] Speaker 05:
Because the claim says, actually, monitoring

[00:20:20] Speaker 05:
claim says monitoring at least position information and shipping condition.

[00:20:28] Speaker 05:
And that's consistent with the board's construction.

[00:20:31] Speaker 02:
And the monitor

[00:20:33] Speaker 02:
Absolutely.

[00:20:35] Speaker 02:
Right.

[00:20:35] Speaker 02:
So you said we've got two different things, wait, we've got two different things and one can do one and one can do the other, which is what I know you said you had expert testimony that said they both could do both, but the board didn't rely on that.

[00:20:48] Speaker 02:
The board said, no, all we have to have is one that can do one and one that can do the other.

[00:20:53] Speaker 05:
Now the board said that they work in conjunction, right?

[00:20:56] Speaker 05:
The board's holding was, I believe that, you know, the monitor 11 routine works in conjunction with the sensors.

[00:21:02] Speaker 02:
So here's where I'm going with this.

[00:21:04] Speaker 02:
So that together they were capable of doing that.

[00:21:05] Speaker 05:
Well, I think there's an assumption there that there are two devices, right?

[00:21:10] Speaker 05:
And that the device actually requires sensors as part of the device.

[00:21:16] Speaker 05:
I actually take you back maybe a step, because the claim just says it has to monitor, right?

[00:21:21] Speaker 05:
So the sensors 1126 that are on the packages there are providing information to the monitor 1114.

[00:21:27] Speaker 05:
The monitor is called a monitor, and it is monitoring information

[00:21:32] Speaker 05:
on the conditions within the structure 1116.

[00:21:35] Speaker 02:
I'm looking at what the board said.

[00:21:39] Speaker 02:
Yes.

[00:21:40] Speaker 02:
So the board said essentially that you've got the sensors who can do the location information and the sensors who send information to the monitor and therefore the monitor is able to determine the conditions inside the truck, right?

[00:21:55] Speaker 05:
The board said that the two work together in conjunction.

[00:21:58] Speaker 05:
I acknowledge that.

[00:21:59] Speaker 05:
I'm not saying that that's not the case.

[00:22:01] Speaker 05:
We do have an alternative position, of course, where the monitor actually provides all of the functionality.

[00:22:07] Speaker 05:
Right.

[00:22:08] Speaker 05:
But the board didn't rely on that.

[00:22:09] Speaker 05:
Well, honestly, I think you could say that the board did rely on that.

[00:22:14] Speaker 05:
But I'm not making that argument as my primary argument here.

[00:22:18] Speaker 05:
I'm saying that the board understood that the two work together.

[00:22:21] Speaker 05:
Absolutely.

[00:22:22] Speaker 02:
So in order to have a fixed

[00:22:25] Speaker 02:
on or within, you've got basically have to have the truck as part of the package, right?

[00:22:34] Speaker 05:
No, the truck, I mean, first of all, it's a structure, right?

[00:22:38] Speaker 05:
It's actually, it's shown in that one picture as a trailer.

[00:22:42] Speaker 02:
It's described as a structure.

[00:22:44] Speaker 05:
Okay, and that's already been conceded that that's a package, right?

[00:22:48] Speaker 03:
So now...

[00:22:51] Speaker 05:
Oh, that's for Claim 23, Your Honor.

[00:22:53] Speaker 03:
Absolutely.

[00:22:53] Speaker 03:
I think the focus here is on Claim 23.

[00:22:55] Speaker 03:
OK.

[00:22:56] Speaker 02:
OK.

[00:22:56] Speaker 02:
So let's look at Claim 23.

[00:22:59] Speaker 02:
No, but I'm trying to say there's got to be a logical flow here.

[00:23:03] Speaker 02:
So the board said you have to have the two.

[00:23:06] Speaker 02:
And so my problem is if one is on the bigger structure and the other is in the big structure, wait till I finish my question.

[00:23:15] Speaker 02:
You get to Claim 23 that says affordable by a person, and the board says,

[00:23:20] Speaker 02:
OK, we don't have to decide if the bigger structure is portable by a person.

[00:23:26] Speaker 02:
And that's where I've got a problem.

[00:23:30] Speaker 02:
I don't understand how they can say we don't have to decide that.

[00:23:32] Speaker 05:
OK, so can I take that in two parts?

[00:23:35] Speaker 05:
Yes.

[00:23:35] Speaker 05:
If that's OK?

[00:23:36] Speaker 05:
First of all, I think the issue is what a device is, right?

[00:23:40] Speaker 05:
Because the board said that the device here could be made up of two things in combination working.

[00:23:46] Speaker 02:
But those two things then have to be on or in the package?

[00:23:48] Speaker 05:
Have to be on or affixed to the package.

[00:23:50] Speaker 05:
So let's look at the monitor 1114 as an example.

[00:23:54] Speaker 05:
Because I think that's where we're getting at in 23.

[00:23:58] Speaker 05:
The monitor 1114 is affixed or within the structure, which is 1116.

[00:24:03] Speaker 05:
And the sensors, 1126, are within.

[00:24:07] Speaker 05:
Those are within, for sure.

[00:24:09] Speaker 02:
And they're both within a package.

[00:24:11] Speaker 02:
But that's only assuming that we say the big structure, whether it's a cargo ship or whatever, is portable by a person.

[00:24:18] Speaker 05:
OK.

[00:24:19] Speaker 05:
So it sounds like perhaps the crux to the issue is whether or not the structure 1116 is portable by a person.

[00:24:28] Speaker 05:
Right.

[00:24:29] Speaker 05:
OK.

[00:24:29] Speaker 02:
So let's talk about it.

[00:24:31] Speaker 02:
The board expressly did not decide.

[00:24:34] Speaker 05:
The board said it did not need to decide that, correct, because in its view, the device

[00:24:39] Speaker 05:
could be comprised of the two parts, right, and that is the two parts working in conjunction.

[00:24:46] Speaker 05:
And it found, and this was the rehearing decision that counsel referred to, and it found that at least one of those components, right, of the device, because there's no structure here, right, the specification actually says I'm not going to tell you what the structure is because it's not important to my invention, okay?

[00:25:05] Speaker 03:
Does the record for the board show that it would have been obvious to attach the monitor as well as the sensor to a smaller package within the trailer?

[00:25:19] Speaker 05:
Certainly our expert, the only expert testifying the case, says that he says actually both things, right?

[00:25:28] Speaker 05:
He says that the cargo essentially

[00:25:33] Speaker 05:
the cargo 1134.

[00:25:35] Speaker 03:
Where does he, show me where he says that it would have been obvious to attach the monitor to a smaller package.

[00:25:49] Speaker 05:
So he begins with, I think it's actually 23, I think it's appendix 1474, your honor.

[00:25:59] Speaker 05:
That's where he's dealing with the obviousness of this.

[00:26:02] Speaker 05:
Can I address one thing with respect to this?

[00:26:04] Speaker 03:
No, no, not yet.

[00:26:05] Speaker 03:
Oh, sorry.

[00:26:06] Speaker 03:
Finish with this, and then you can address that.

[00:26:07] Speaker 03:
Absolutely, Your Honor.

[00:26:09] Speaker 03:
1474.

[00:26:10] Speaker 03:
Right.

[00:26:12] Speaker 05:
So he says, a person of an ordinary skill in New York would have understood that a refrigerator and other types of cargo disclosed in Richards and structure are both portable by a person, because they are both capable of being moved by a person.

[00:26:25] Speaker 05:
The hang-up here is,

[00:26:27] Speaker 02:
The appellants construction refrigerator and items smaller than a refrigerator a refrigerator that Okay Bigger structure the overall big structure is portable by a person no inches.

[00:26:43] Speaker 05:
Oh

[00:26:43] Speaker 03:
are both portable.

[00:26:44] Speaker 03:
No, he says structural 116 is also portable.

[00:26:49] Speaker 03:
I agree.

[00:26:50] Speaker 03:
But that wasn't my question.

[00:26:51] Speaker 03:
My question is, does he say that it would have been obvious to attach the monitor to a smaller package within the trail?

[00:26:58] Speaker 03:
Did he say that?

[00:27:04] Speaker 05:
Well, just further down, he does say a person of ordinary skill in the art would have understood that the sensors and monitor could be placed in any size package,

[00:27:12] Speaker 05:
and would not prevent a package from being capable of being removed by a person.

[00:27:16] Speaker 05:
Is that address where you're going?

[00:27:18] Speaker 05:
Yes.

[00:27:18] Speaker 05:
Yeah, OK.

[00:27:19] Speaker 05:
So I want to, there's a notion.

[00:27:22] Speaker 02:
Unfortunately, the board didn't rely on that, did it?

[00:27:26] Speaker 05:
Yes, actually.

[00:27:27] Speaker 05:
The board did rely on this expert testimony.

[00:27:29] Speaker 02:
I understand it simply said you can have these two different things on two different entities.

[00:27:38] Speaker 02:
And then in its reconsideration decision says, and on these two different items, and says, and we conclude that just a portion of this can be attached.

[00:27:50] Speaker 05:
Well, Your Honor, I believe it's the same thing.

[00:27:56] Speaker 02:
I mean, I'm not saying you didn't have some testimony in the record.

[00:28:00] Speaker 02:
On page 26.

[00:28:01] Speaker 02:
But the board didn't rely on it.

[00:28:03] Speaker 05:
On page 26, it does say, Dr. Hill testified that a person of ordinary skill in the art would have understood a refrigerator and smaller items to be portable by a person and in sites 80.

[00:28:12] Speaker 05:
And then the next sentence, it says that there's nothing contrary.

[00:28:17] Speaker 02:
That's still talking about a refrigerator and smaller items.

[00:28:19] Speaker 02:
It's not talking about the big structure.

[00:28:22] Speaker 05:
Yeah.

[00:28:22] Speaker 05:
There's this notion that this is a massive structure.

[00:28:25] Speaker 05:
And I would, you know... You mentioned cargo ships.

[00:28:28] Speaker 02:
That's pretty massive.

[00:28:30] Speaker 05:
Actually, the definition of structure, which we do cite in our brief on page 52, in paragraph 52 of the Richards reference, explains that a structure can be anything, pretty much.

[00:28:40] Speaker 05:
And then on 126, it talks about how the structures are any types of structures, and they can be mobile.

[00:28:46] Speaker 05:
Of course, that means that they can be moved, right, which is consistent with the board's construction.

[00:28:50] Speaker 02:
But a structure can't be anything in, I mean, you can't have just anything and fall within the bounds of portable by a person.

[00:29:00] Speaker 05:
I take you back to the point, I think, that you made, which is this was a claim that was added during prosecution.

[00:29:04] Speaker 05:
And there is no disclaimer of the scope or disavowal of the scope of this claim.

[00:29:12] Speaker 05:
So the board looked at the plain and ordinary meaning, pardon me, boardless reasonable interpretation, and said it had two dictionaries.

[00:29:20] Speaker 03:
It had actually one dictionary.

[00:29:21] Speaker 03:
Why was the worldwide personal notation added?

[00:29:25] Speaker 03:
Was that to overcome prior art?

[00:29:27] Speaker 05:
Actually, I believe it was added so that he would have a claim directed at our client, Your Honor.

[00:29:32] Speaker 05:
I don't know how to put it any other way.

[00:29:35] Speaker 05:
There was no prior art presented with respect to this at all.

[00:29:37] Speaker 05:
It was just an added during prosecution.

[00:29:40] Speaker 05:
There's a series of related applications.

[00:29:42] Speaker 05:
No explanation?

[00:29:43] Speaker 05:
No.

[00:29:44] Speaker 05:
There's a series of related applications.

[00:29:46] Speaker 05:
And actually, Your Honor, issued, I think, an order in connection with an appeal, an inter-parties re-examination that's related to this case, actually.

[00:29:55] Speaker 05:
So you'll see in looking at the whole record that there's a relationship there.

[00:30:00] Speaker 05:
And you can see in the background of the invention section, there's a reference to FedEx in there as well.

[00:30:04] Speaker 05:
So it's really that focused.

[00:30:07] Speaker 05:
But I encourage you to look at it.

[00:30:08] Speaker 05:
I mean, what we've cited in Richard's, Your Honor, Judge Malley, was we did cite to these points that a structure is something that's movable by a person, which is consistent with the board's construction of what portable by a person was.

[00:30:23] Speaker 05:
The board said, I don't need to decide whether or not something is movable by a person with some kind of assistance or not, although we believe the claim actually encompasses that.

[00:30:36] Speaker 05:
But the board said, we don't need to do that.

[00:30:38] Speaker 05:
Why?

[00:30:38] Speaker 05:
Because there's a description in Richards of what cargo is.

[00:30:41] Speaker 05:
Now, to the point of the structure.

[00:30:44] Speaker 02:
But the board said the reason is because we think it could be partially affixed.

[00:30:49] Speaker 02:
And I don't understand.

[00:30:50] Speaker 02:
I mean, look at page 35.

[00:30:53] Speaker 02:
It says, we don't have to decide if 116 is part of the package.

[00:31:00] Speaker 05:
Well, I think their point there is actually twofold, Your Honor.

[00:31:05] Speaker 05:
Number one is, again, they took the position, and we believe it's actually fair and consistent with the specification.

[00:31:12] Speaker 05:
There's no specification here that says,

[00:31:14] Speaker 05:
that you can't have a device, a wireless tracking device that is made up of two components.

[00:31:20] Speaker 05:
The issue there has to do with the fixture.

[00:31:23] Speaker 02:
But my problem is that both components have to be affixed to the relevant package.

[00:31:30] Speaker 02:
And if your relevant package is the big

[00:31:33] Speaker 02:
You don't have to be affixed or within.

[00:31:34] Speaker 02:
If your relevant package is the big structure, fine.

[00:31:38] Speaker 02:
You got me on those early plans.

[00:31:40] Speaker 02:
I just don't understand if your relevant package is portable by a person, whether it's a refrigerator or a piece of something on a crate, why you don't have to have them both either affixed or within those relevant packages.

[00:31:56] Speaker 05:
Well, we understand.

[00:31:57] Speaker 05:
I think we're in agreement that 116

[00:32:00] Speaker 05:
has a wireless tracking device affixed to her within, right?

[00:32:04] Speaker 02:
And so the issue is now... I'm giving you that for purposes of this.

[00:32:06] Speaker 05:
I understand, I understand.

[00:32:08] Speaker 05:
And that fails with the earlier... Looking at, looking at figure 11, the main figure of Richards, right?

[00:32:16] Speaker 05:
You'll note in the left-hand side there of the truck, it is labeled 1134, which is an example of cargo, right?

[00:32:24] Speaker 05:
The specification, and the board pointed this out as well,

[00:32:28] Speaker 05:
But the specification in Richards explains that the individual cargo items can be large items, such as a refrigerator, or a number of smaller items on a pallet or in a crate.

[00:32:37] Speaker 05:
A number of smaller items in a pallet or in a crate.

[00:32:40] Speaker 05:
One item is a number of items in a smaller or in a crate.

[00:32:46] Speaker 05:
Despite that, OK?

[00:32:48] Speaker 05:
Even if you were to take issue with that.

[00:32:51] Speaker 02:
So we just don't have both aspects of the tracking

[00:32:57] Speaker 02:
the package referenced in claim 23.

[00:33:00] Speaker 05:
No, no, 1134.

[00:33:01] Speaker 05:
In this example, right, 1134.

[00:33:03] Speaker 02:
I see that it's a smaller package, but it doesn't have, you don't have both the monitor and the sensors affixed to that smaller package.

[00:33:13] Speaker 05:
There's no requirement that it be affixed to the same package.

[00:33:17] Speaker 05:
I think that's what the issue is with this.

[00:33:20] Speaker 05:
What it says is,

[00:33:21] Speaker 02:
Wait, wait, wait.

[00:33:23] Speaker 02:
So you're saying that you could have like seven packages in the truck and one could have the monitor and one could have the sensor, and those would all be covered?

[00:33:32] Speaker 05:
I would say that the board's construction, yes, that is consistent with the board's construction, and that is consistent with the specification.

[00:33:42] Speaker 05:
There's no limitation in this specification that says, I can't have it that way.

[00:33:48] Speaker 05:
I can't have these.

[00:33:49] Speaker 05:
In fact, when we argued, Your Honor,

[00:33:51] Speaker 05:
that the sensors, okay, because we actually argued for a construction that included sensors, okay, and the board rejected that in response, recognizing the patent owner's argument that sensors don't need to be a part of it.

[00:34:05] Speaker 05:
And in fact, looking in the specification, I think it's paragraph, I can get you the paragraph, excuse me, column eight, it talks about how sensors, this is actually an example of a chemical sensor, it says a chemical sensor

[00:34:20] Speaker 05:
can be provided within.

[00:34:22] Speaker 05:
It's optional.

[00:34:24] Speaker 05:
There's no requirement.

[00:34:25] Speaker 05:
And then I refer back to column 4, lines 27 to 29 of the 165 pat, and it says components have not been described in detail.

[00:34:34] Speaker 02:
So because it could be on or it could be optionally could be within.

[00:34:40] Speaker 02:
Right.

[00:34:40] Speaker 02:
And I gotcha on the, on when you're talking about the package being the large structure.

[00:34:47] Speaker 02:
Right.

[00:34:47] Speaker 02:
truck, the crate, your big cargo ship.

[00:34:54] Speaker 02:
But when you're talking about a package that has to be portable by a person, I don't understand how you can say that you could have the sensors within, but the other portion of the tracking device doesn't have to be on it.

[00:35:06] Speaker 05:
But the claim says affixed or within.

[00:35:11] Speaker 02:
So you have to have them both.

[00:35:13] Speaker 02:
They are affixed or within.

[00:35:14] Speaker 05:
They are.

[00:35:16] Speaker 05:
In once in my I'm sorry your honor, but my example in 116.

[00:35:21] Speaker 05:
Yeah Thank you very much for the

[00:35:43] Speaker 03:
Mr. Thomas, do you agree that the portable by a person language covers all the objects that are contained within a trailer?

[00:36:01] Speaker 04:
Portable by a person, in that context, the board relied on the Cargo 1134, which is a so-called package within the trailer.

[00:36:11] Speaker 03:
I'm trying to figure out the claim construction here.

[00:36:14] Speaker 03:
Do you agree that the portable by person language includes all the objects within the trailer, all the objects that are transported, for example, by FedEx, which is what the specification describes?

[00:36:34] Speaker 04:
I'm not sure that's exactly commensurate with what the claim's covering, but the 1134 were

[00:36:44] Speaker 03:
For purposes of this appeal, we are... I'm not talking about the trailer itself.

[00:36:48] Speaker 03:
I'm asking a question as to whether portable by a person covers all the objects within the trailer.

[00:36:55] Speaker 03:
I don't know what you mean by all the objects, but what I'm saying for the purpose of this appeal... The specification itself talks about objects.

[00:37:06] Speaker 03:
You don't know what objects are?

[00:37:08] Speaker 04:
An object is, in this context, a package.

[00:37:11] Speaker 04:
And in this case, what's referred to as cargo, 1134.

[00:37:14] Speaker 03:
Do you agree that portable by a person includes all items of cargo within the trailer?

[00:37:22] Speaker 04:
Each one of them could be considered, for purpose of this argument, yes, portable by a person.

[00:37:28] Speaker 04:
And I think figure 12 shows several of them in an outline referring to the trailer.

[00:37:35] Speaker ?:
OK.

[00:37:37] Speaker 04:
I'll give you a couple of sentences here.

[00:37:44] Speaker 04:
The Richards patent, which is the prior art, wirelessly communicates between the two devices.

[00:37:51] Speaker 04:
And the gist of that patent is what's called impulse radio communications.

[00:37:57] Speaker 04:
It's the wireless linkage between them.

[00:38:01] Speaker 04:
It makes no sense to say that these two are one device

[00:38:05] Speaker 04:
because the whole point of that reference is for them to wirelessly communicate.

[00:38:09] Speaker 02:
And the patent has... Because you can see at the hearing that there's nothing in the specification that says it has to be one device.

[00:38:16] Speaker 04:
You might argue it makes no sense, but... The claim says a wireless tracking device.

[00:38:23] Speaker 03:
Okay, I think, Mr. Commons, we're out of time.

[00:38:25] Speaker 03:
Thank you.

[00:38:26] Speaker 03:
Thank both counsels.

[00:38:28] Speaker 04:
Thank you.

[00:38:30] Speaker 04:
All right.