[00:00:04] Speaker 04: Morning. [00:00:04] Speaker 04: Our first case this morning is number 16-1769, Outdry Technologies versus Geox SBA. [00:00:15] Speaker 04: Mr. Aldrich. [00:00:18] Speaker 04: Pardon me? [00:00:19] Speaker 04: We're going to handle an admission. [00:00:21] Speaker 04: Oh, no. [00:00:22] Speaker 04: Nobody told me about it. [00:00:25] Speaker 04: Just hold on one second. [00:00:26] Speaker 04: We have an admission here outside. [00:00:35] Speaker 04: I think Judge Raina has a motion there. [00:00:50] Speaker 03: Yes, colleagues. [00:00:52] Speaker 03: I move for the admission that Nathaniel E. Costiano, who is a member of the bar and is in good standing with the highest court of the District of Columbia, have knowledge of his credentials, [00:01:02] Speaker 03: And I'm satisfied that he possesses the necessary qualifications. [00:01:07] Speaker 03: Nathan, they say that time flies when you're having fun. [00:01:12] Speaker 03: And I've also heard to say that it flies when you work hard. [00:01:16] Speaker 03: If the latter is the case, then this past year must have been a blur for you because of your work ethic. [00:01:23] Speaker 03: And that work ethic has brought excellent product for the court and for my chambers. [00:01:31] Speaker 03: I've noticed that you've earned the respect of your peers, which speaks highly of your professional character. [00:01:38] Speaker 03: And with that, I wish you all the luck in the future. [00:01:41] Speaker 03: And could you stand? [00:01:43] Speaker 03: Because what I'm going to say, here stands in the well of the court a man that is an excellent lawyer and that will be a leading light in the US legal profession. [00:01:55] Speaker 03: With that, I'll make the motion. [00:01:58] Speaker 04: All right. [00:01:59] Speaker 04: Judge Raina, your motion is granted. [00:02:00] Speaker 04: Mr. Castellano, welcome to the bar of this court. [00:02:03] Speaker 04: And it's a pleasure to have you here. [00:02:05] Speaker 04: We look forward to seeing you argue some day before us. [00:02:09] Speaker 04: And I'm sure you'll do an excellent job. [00:02:13] Speaker 04: Thank you. [00:02:14] Speaker 04: Peter's turn. [00:02:15] Speaker 04: Do you have to say that? [00:02:17] Speaker 04: Do you solemnly swear that you will support yourself as an attorney and counsel with this court, uprising according to law, and that you will support the Constitution of the United States of America? [00:02:27] Speaker ?: I do. [00:02:32] Speaker 04: Okay, well we'll press the reset button here and begin with 16-17-69 outright technologies versus Geox SPA Mr. Albrecht. [00:02:56] Speaker 01: Your honors, my name is Niko Aldrich. [00:02:58] Speaker 01: I am an attorney at Schwabe, Williamson, and Wyatt. [00:03:01] Speaker 01: And I represent Appellant Outdry in this case. [00:03:04] Speaker 01: And thank you for your time. [00:03:06] Speaker 01: The claims in this case all recite a process for waterproofing leather by directly pressing a membrane to a piece of leather using a dense array of adhesive dots. [00:03:20] Speaker 01: This avoids pockets where water can build up and create a water cushion on the inside of the leather. [00:03:27] Speaker 01: Geox and the PTAB have managed to proffer that leather gloves made from a ruched or corrugated waterproof glove liner glued to an outer glove only for the purpose of preventing the glove from coming apart read on these claims. [00:03:46] Speaker 03: Councilor, are any of the claims directed, any of the terms of the claims directed to the water pocket solution or problem that you speak of? [00:03:56] Speaker 01: I believe that the preamble in all of the claims is directed to that. [00:04:00] Speaker 03: But the claims are not. [00:04:03] Speaker 01: Well, I believe that the preamble is part of the claims here. [00:04:06] Speaker 01: They set an antecedent basis for the term leather that comes up. [00:04:14] Speaker 04: Where does the preamble mention the water cushion? [00:04:17] Speaker 01: Well, it mentions a process for waterproofing leather. [00:04:20] Speaker 04: That doesn't mention the water cushion. [00:04:25] Speaker 01: I believe that the idea here is implied in the preamble. [00:04:31] Speaker 01: In the concept of waterproofing leather, it's implied that it's going to prevent water from going through and saturating on the inside. [00:04:39] Speaker 01: That's what the background of the invention is about. [00:04:42] Speaker 01: That's what the description of the invention is about in the specification. [00:04:48] Speaker 01: The process for waterproofing leather implies the idea that we're not going to have water cushions developed on the inside. [00:04:54] Speaker 04: Did you argue to the board that the elimination of water cushions was part of the claim? [00:05:04] Speaker 01: I believe that that was argued throughout, largely in the context of the meeting. [00:05:08] Speaker 04: No, but did you ask for a claim construction that would read that into the claim as a requirement? [00:05:13] Speaker 01: I don't believe that we argued for that as part of the claim construction of process for waterproofing leather. [00:05:20] Speaker 01: I believe that that was part of the claim construction of directly pressing that was sought before the PTAB. [00:05:26] Speaker 04: Where did you argue that directly pressing should be construed as eliminating water cushioning? [00:05:32] Speaker 01: The construction of directly pressing that was sought before the PTAB was that there had to be direct contact, and it had to cover and contact, which meant... Well, that I understand, but there was no mention of avoiding water cushions. [00:05:46] Speaker 04: Those specific words were not mentioned, Your Honor. [00:05:50] Speaker 01: Moreover, Geox and the PTAB both suggest that a person of ordinary skill in the art would have thought to combine this idea with a design for cotton socks. [00:06:00] Speaker 01: But no evidence or even a rationale was provided to the PTAB for this proposition. [00:06:06] Speaker 01: And I'd like to start by addressing this latter point. [00:06:10] Speaker 01: This case is an example of the PTAB failing to identify a motivation to combine prior art. [00:06:16] Speaker 01: Here, the reason for the PTAB's failure [00:06:19] Speaker 01: was the petition failed to articulate any motivation to combine prior art, and Geox failed to submit any evidence in support of any theory. [00:06:28] Speaker 01: Even if the petitioner had identified a reason to combine the prior art, the PTAB must still articulate its reasoning. [00:06:35] Speaker 01: But the PTAB here only rubber stamped that the petitioner had provided a rationale, though it did not, without articulating why that alleged reason was sufficient. [00:06:45] Speaker 01: The PTAB's entire explanation [00:06:48] Speaker 01: is as follows. [00:06:50] Speaker 01: Petitioner also provided a rational underpinning for combining the disclosures of Scott and Hayden, which provide guidance for the density and size of adhesive dots to adhere a semi-permeable membrane to a porous layer. [00:07:03] Speaker 01: But combining Scott with Hayden isn't the issue. [00:07:06] Speaker 01: Geox proposes to combine Scott with Hayden with Thornton, and the PTAB never mentioned that. [00:07:13] Speaker 01: In essence, the board has simply said Thornton teaches a leather glove, [00:07:18] Speaker 01: made with dots of adhesive. [00:07:20] Speaker 01: Hayden teaches specific dots of adhesive on cotton socks. [00:07:25] Speaker 01: It's obvious. [00:07:28] Speaker 01: That is precisely what KSR and this court's precedents counsel against, using the own inventor's invention as a blueprint to the solution. [00:07:37] Speaker 01: Geox has now, for the first time in its appeal briefs, tried to articulate a motivation to combine. [00:07:42] Speaker 01: That explanation, it says, is common sense. [00:07:45] Speaker 01: But that argument was never raised before the PTAB in any form. [00:07:49] Speaker 01: And I word searched the entire record on appeal. [00:07:51] Speaker 01: The word common sense never appears anywhere. [00:07:53] Speaker 01: Common knowledge, common anything. [00:07:55] Speaker 01: The PTAB never had the opportunity to review whether it would in fact have been common sense to combine these references. [00:08:02] Speaker 01: There are numerous reasons why it would not have been. [00:08:04] Speaker 01: But that argument was raised for the first time on appeal. [00:08:07] Speaker 01: No evidence regarding common sense was submitted to the PTAB. [00:08:12] Speaker 01: This court has recently emphasized [00:08:14] Speaker 01: that the PTAB must articulate a reason why a person having ordinary skill in the art would combine the prior art references in the nuvasive case. [00:08:23] Speaker 01: It is not adequate to summarize and reject arguments without explaining why the PTAB accepts the prevailing argument, which is exactly what happened here. [00:08:32] Speaker 01: The PTAB here states that it adopted Geox's arguments. [00:08:36] Speaker 01: But as in nuvasive, the PTAB failed to provide reasoned explanations for crediting those arguments, which are, quote, [00:08:43] Speaker 01: nothing more than conclusory statements that a person having ordinary skill in the art would have been motivated to combine priorite references. [00:08:54] Speaker 01: Even if the PTAD had relied on common sense, which it did not, that would not be enough. [00:09:01] Speaker 01: Absent some articulated rationale, a finding that a combination of priorite would have been common sense or intuitive is no different than merely stating the combination would have been obvious. [00:09:13] Speaker 01: That's what this court said in the Van Os case. [00:09:16] Speaker 02: Now, do you have any argument, if I interpret the board's statement that the petitioner provided a rational underpinning for making this combination as having adopted the petitioner's arguments, do you have any basis for saying there's no motivation to combine then? [00:09:39] Speaker 01: Yes. [00:09:43] Speaker 01: is either in nuvasive or in the Van Os case, it is not enough to simply adopt and rubber stamp. [00:09:50] Speaker 01: The PTAB itself has to articulate its own reasoning so that this court can review that reasoning. [00:09:55] Speaker 02: On page 12, for example, of the board opinion, it explains, petitioner contends that Scott provides a reason for optimizing the amount of adhesive that Thornton and Hayton teach to apply to a semi-permeable membrane, which is to provide good adhesion while maintaining vapor permeability. [00:10:12] Speaker 02: That sounds like a very good reason. [00:10:14] Speaker 02: It's articulated by the petitioner. [00:10:16] Speaker 02: And then just a couple of pages later, the board, in my impression, adopts the petitioner's rationale for making this combination. [00:10:26] Speaker 02: So why isn't that sufficient? [00:10:28] Speaker 02: I mean, whether it's right or not, I don't know. [00:10:31] Speaker 02: But why isn't your argument seems to be more procedural? [00:10:34] Speaker 02: than substantive in that you're saying the board didn't articulate a motivation to combine and that it's required to do that. [00:10:42] Speaker 02: That's something I agree with and I think probably our hope for it. [00:10:46] Speaker 02: But I don't see how they didn't actually do exactly that in this opinion. [00:10:51] Speaker 01: To the best that I understand what was put forward in the petition, it said Thornton teaches everything other than the [00:11:04] Speaker 01: amount of dots, and that requires optimization. [00:11:10] Speaker 01: And then it points to a different patent, Hayton, that has dots, but it never explains why it would have been obvious to a person of ordinary skill in the art looking at Thornton to have adopted the number of dots in Hayton, particularly when that patent relates to cotton socks, a different invention, [00:11:30] Speaker 01: And in addition, there are a number of reasons why a person would not have looked to Hayden as we had to address in our reply brief with respect to common sense because that wasn't articulated prior. [00:11:41] Speaker 01: So simply saying one patent requires optimization and pointing to another patent I don't think is enough to identify a reason why those two ideas would have been merged. [00:11:55] Speaker 02: Well, you may not think it's enough, but it's decidedly a question of fact under our law, and we've got to give substantial evidence deference, don't we, to the board's decision on it? [00:12:06] Speaker 01: Yes, substantial evidence deference does have to be given, Your Honor. [00:12:10] Speaker 01: But again, I think here, combing through the petition and the oral argument, I don't think that any rational reason for combining this art has been provided. [00:12:23] Speaker 01: What distinguishes this case from Van Oss and Nubasive is that in those cases, the PTAP decision was potentially lawful, but insufficiently or inappropriately explained, as I think we have obviously here. [00:12:36] Speaker 01: It's insufficiently or inappropriately explained. [00:12:38] Speaker 02: I remember the Nubasive case quite clearly. [00:12:41] Speaker 02: And the difference there was the board articulated the petitioner argues, petitioner argues, petitioner argues, and it never adopted the arguments. [00:12:50] Speaker 02: And it never ever said we adopt or we find this is a rational underpinning or we agree with the petitioner. [00:12:56] Speaker 02: There was never a statement. [00:12:58] Speaker 02: It just articulated the petitioner argues and the board was standing in front of us saying, well, because we came to this conclusion, you should assume we adopted the petitioner's arguments. [00:13:06] Speaker 02: That's a pretty big difference between this case and that case if I [00:13:10] Speaker 02: interpret the sentence on page 15 of the board's opinion as adopting the petitioner's arguments. [00:13:15] Speaker 01: I believe that one difference with the nuvasive case is that evidence was actually submitted in that case in the form of expert testimony, but no such evidence was submitted here. [00:13:23] Speaker 01: I'd like to reserve the rest of my time for a reply, if possible. [00:13:26] Speaker 04: OK, thank you, Ms. [00:13:27] Speaker 04: Rall. [00:13:27] Speaker 01: Thank you. [00:13:40] Speaker 00: Thank you, Your Honor. [00:13:42] Speaker 00: Mr. Weirich? [00:13:43] Speaker 04: Weirach. [00:13:44] Speaker 00: Weirach. [00:13:45] Speaker 00: Thank you. [00:13:45] Speaker 00: Your Honor is correct. [00:13:49] Speaker 00: The board did not simply rubber stamp and say petitioner is correct. [00:13:55] Speaker 02: The points that... Yeah, but if it did that, why would that be a problem? [00:14:00] Speaker 02: If they articulate in a lot of detail a petitioner's argument and then say we agree with it, what's wrong with that? [00:14:05] Speaker 00: Exactly. [00:14:05] Speaker 00: That's my point. [00:14:06] Speaker 00: The PTAP did not just summarily say, [00:14:10] Speaker 00: We agree with them. [00:14:12] Speaker 00: The PTEP had an initial summary, then actually looked at the cited art. [00:14:18] Speaker 00: And Scott itself is a motivational reference. [00:14:23] Speaker 00: The Scott reference tells you that the amount of adhesive that you want to use to attach a membrane to a fabric is a matter to be optimized. [00:14:34] Speaker 00: And the reasons Scott gives are very similar to what the applicant argued during the original prosecution before the PTO in obtaining the 171 pet. [00:14:44] Speaker 00: So Scott itself tells you that the amount of adhesive in using dots to apply a membrane to a fabric is something to be optimized. [00:14:55] Speaker 00: You then have Hayton that gives us specific examples [00:14:59] Speaker 00: that overlap with what is claimed. [00:15:02] Speaker 00: And so we have Thornton that teaches everything except the number of dots and the size of the dots. [00:15:08] Speaker 00: We have Scott that teaches that that's an issue to be optimized, the amount, because you want to have good adhesion, but you don't want too many dots because that will block the cores. [00:15:20] Speaker 00: And then we have specific examples that overlap with the ranges that are claimed. [00:15:26] Speaker 00: And so I think that the PTAB clearly justified its findings. [00:15:31] Speaker 00: It pointed to the prior art. [00:15:34] Speaker 00: It just did not summarily say we agree with the petitioner. [00:15:37] Speaker 00: It actually looked at the citations and looked at the prior art. [00:15:43] Speaker 03: The other thing that was raised... Counselor, so what's the motivation for applying waterproofing techniques to stretchable fabric? [00:15:53] Speaker 03: I mean, we're talking about two items that have totally different properties. [00:16:01] Speaker 03: And as we look at the references, when you apply the adhesive to a stretchable fabric, you have to do it, and the fabric is stretched out to its extent. [00:16:12] Speaker 03: Then when it collapses, it creates this corrugated effect, correct? [00:16:18] Speaker 00: Yes, well the reason that Thornton does that is because if you do have something that's stretchable to which is going to be applied, when it's in use and it does stretch, you don't want the membrane to break. [00:16:30] Speaker 00: But Thornton actually specifically says that its process is not only applicable to socks, it's also applicable to leather. [00:16:41] Speaker 00: And it specifically says the [00:16:43] Speaker 00: leather glove embodiment can be made using the same process used for the sock embodiment. [00:16:51] Speaker 00: And that's at columns 21 and 22, I believe, of Thornton. [00:16:57] Speaker 00: And so Thornton tells us of the interchangeability and also the applicability of processes for fabric or socks to leather, such as leather and gloves. [00:17:10] Speaker 00: And then Hayton is [00:17:12] Speaker 00: by the same assignee as Thornton, and it's describing a sock process. [00:17:18] Speaker 00: And Hayton gives us the particular dot size and dot density that overlaps with the range. [00:17:27] Speaker 00: I thought it was odd that Al Dry now says Hayton is so much different than Thornton that one would not apply the teachings of Hayton to Thornton, because in their opening brief, they said they were very similar. [00:17:40] Speaker 00: I think that's at page 16 of their opening brief. [00:17:43] Speaker 03: If we were to adopt your opponent's water cushion argument, would that change your arguments that you just made? [00:17:51] Speaker 03: What part? [00:17:52] Speaker 03: That that should be part of the claim construction, or? [00:17:55] Speaker 03: No, let's say that we agree that the claim element is water cushions, the water cushion problem. [00:18:03] Speaker 03: When your arguments change with respect to the motivation to combine the different references, [00:18:08] Speaker 00: No, I don't think the motivation changes. [00:18:12] Speaker 00: The argument on the water cushion is that the claims somehow require complete and continuous contact in the regions between the dots. [00:18:23] Speaker 00: First, that was not argued, as pointed out earlier, that was not argued as part of claim construction before the PTAB. [00:18:30] Speaker 00: Instead, that was a proposed limitation and a proposed amendment that was rejected and not appealed. [00:18:37] Speaker 00: And what the PTAT said is that at best, even if you would consider the claims to preclude formation of a water cushion and to require complete and continuous contact between the dots, that would only bring in the Driscoll reference that was cited during the original prosecution. [00:18:57] Speaker 00: Because Driscoll tells you, teaches applying two flat articles to each other with no reaching or corrugation. [00:19:06] Speaker 00: That was in the Driscoll reference cited during the original prosecution. [00:19:11] Speaker 00: The only thing that Driscoll did not teach was the size and density of the dots, and that's why the claims were allowed during the original prosecution. [00:19:21] Speaker 00: And so in the IPR, we had Thornton, which teaches interchangeability or applicability to both leather and fabric of the same processes. [00:19:32] Speaker 00: In addition to that, we have Scott that teaches the [00:19:36] Speaker 00: amount of the dots that you want to use is a matter to be optimized. [00:19:42] Speaker 00: And then we have Hayton that gives us specific examples of the dot size and dot density that are in the claims. [00:19:49] Speaker 00: And so it all fits together. [00:19:50] Speaker 00: And as the PTAP found, and this is in the section of the PTAP's written opinion relating to the rejection of their amendment, because that's where it was raised below. [00:20:01] Speaker 00: It's around pages 25 to 27. [00:20:04] Speaker 00: They said even if you would accept that water cushion and complete and continuous contact argument, at best that would only bring Driscoll into play because Driscoll teaches using dots to apply two flat articles together with the membrane being directly applied to the leather. [00:20:31] Speaker 04: Anything further? [00:20:32] Speaker 04: I have nothing further. [00:20:33] Speaker 04: Okay. [00:20:34] Speaker 04: Thank you, Mr. Forrest. [00:20:43] Speaker 01: Mr. Olmertsch? [00:20:46] Speaker 01: Council just spoke about the interchangeability within Thornton. [00:20:52] Speaker 01: Thornton teaches a process for making leather gloves and says that certain aspects of making fabric can be incorporated into that [00:21:00] Speaker 01: but that the leather glove manufacturer is a separate process where you first build an internal glove liner and then insert it into the leather glove. [00:21:11] Speaker 01: The dots that would be used for that purpose would inherently be different than dots used in other purposes for the reasons that are explained in our brief. [00:21:20] Speaker 01: The glove [00:21:22] Speaker 01: liner will shrink, and the only purpose of gluing the glove liner to the outside glove is to prevent the glove from coming apart when you pull your hand out. [00:21:31] Speaker 03: But doesn't the liner become a membrane at that point in time that waterproofens the glove? [00:21:37] Speaker 01: The membrane is a waterproof barrier that prevents water from getting to your hand, indeed. [00:21:51] Speaker 01: point about Scott. [00:21:51] Speaker 01: First of all, Scott has nothing to do with leather. [00:21:53] Speaker 01: In fact, Scott doesn't have anything to do with the dot density that you would apply in leather. [00:21:58] Speaker 01: Scott has to do with the density that you would put on a waterproof membrane in order to prevent the pores in the membrane, the micro pores in the membrane from being clogged by the glue. [00:22:10] Speaker 01: That has nothing to do with the, and it specifically says in Scott that it relates to fabric. [00:22:16] Speaker 01: So there's nothing in Scott that teaches the density that you would apply [00:22:20] Speaker 01: the density of dots that you would apply in putting a membrane on leather itself. [00:22:25] Speaker 01: This is the first invention that I'm aware of that discloses the idea of directly gluing with dots a microfiber, waterproof membrane directly onto leather using a fine array of dots. [00:22:40] Speaker 01: And then Hayden, again, deals with cotton socks. [00:22:43] Speaker 01: And the idea that the ratio of dots or the number of dots that you would use [00:22:49] Speaker 01: in building a cotton sock. [00:22:51] Speaker 01: Again, I don't believe that there's any articulated rationale for, other than this idea of optimization, which I don't think is a rationale. [00:23:01] Speaker 01: That's a reason searching for a rationale. [00:23:04] Speaker 01: We need to optimize, but why would you pick, why would somebody of ordinary skill in the art pick hatin'? [00:23:11] Speaker 01: What about hatin' solves the problem in Thornton? [00:23:17] Speaker 01: Why would somebody do that? [00:23:18] Speaker 01: And that's what seems to be lacking in both the PTAP's final written decision and also in Geox's papers. [00:23:30] Speaker 01: Very quickly on directly pressing, again I think this was well covered in the briefs, but the context of the claims here is building a waterproof leather sheet that can be incorporated into products like shoes. [00:23:48] Speaker 01: without water cushions. [00:23:50] Speaker 01: And somehow we've gotten to the point where a corrugated, ruched liner that intentionally has air pockets. [00:24:01] Speaker 01: Thornton specifically says that there's a benefit of those air pockets. [00:24:04] Speaker 01: They are there to provide insulation. [00:24:07] Speaker 03: So you use the term water cushions again. [00:24:09] Speaker 03: And the way I read the material, the water cushions creates a space between the liner [00:24:18] Speaker 03: and the outer material. [00:24:21] Speaker 03: And if you have a space there, then water gets in it. [00:24:26] Speaker 03: That's the water cushion, correct? [00:24:27] Speaker 03: Correct. [00:24:28] Speaker 03: But if you have a situation where you have a liner and you glue it onto the outer surface, and even though there's space, such as we see in Hayden, as long as you have a waterproofing effect, doesn't that resolve the water cushion problem? [00:24:48] Speaker 01: No, the patent is about shoes and you don't want bubbles of water in your shoes. [00:24:55] Speaker 04: You don't want water cushions in your gloves either, right? [00:25:01] Speaker 01: That doesn't seem to be a concern for Thornton. [00:25:03] Speaker 01: Thornton says that there's a benefit in having these air pockets in there for insulation. [00:25:07] Speaker 01: Not on the leather embodiment. [00:25:09] Speaker 01: Pardon? [00:25:10] Speaker 01: Not on the leather embodiment. [00:25:11] Speaker 01: Oh, in the leather embodiment as well, yes. [00:25:14] Speaker 01: You build the internal lining and then you collapse it. [00:25:17] Speaker 01: allowing it to shrink so that you end up with this ruched membrane liner internal structure that you then glue to the outer glove. [00:25:27] Speaker 01: That's the whole idea of Thornton is to build that structure like that so it has the flexibility on your hand. [00:25:35] Speaker 04: So the entire purpose of the invention is to... Where does Thornton say that you have ruches in connection with the glove embodiment? [00:25:44] Speaker 01: I would have to dig it out, Your Honor, and I believe my time is up, but it explains that the liner is made by building it on a former that's large. [00:25:54] Speaker 04: Okay, I think we're out of time. [00:25:56] Speaker 04: Thank you, Mr. Allers. [00:25:57] Speaker 04: Thank you very much, Your Honors.