[00:00:00] Speaker 01: So similarly as Pace v. Ford, 2017, 1387, and 1406. [00:00:04] Speaker 01: And Mr. Cordell's doing double duty, but Mr. Moore gets a break. [00:00:13] Speaker 00: I objected to that before the hearing, Your Honor. [00:00:15] Speaker 00: I just want you to know. [00:00:16] Speaker 01: Please proceed, Mr. Cordell. [00:00:17] Speaker 00: Thank you. [00:00:19] Speaker 00: The primary issue in the 1387 appeal has to do with incorporation of the reference. [00:00:24] Speaker 00: The fundamental issue revolves around in the chain of priority there was a PCT that was filed and Ford claims that it is a 102 reference because the inventor couldn't prove possession of the information that was set forth in the PCT prior to its critical date. [00:00:48] Speaker 00: In this case, the record is very clear that the application at issue incorporated by reference the material that was necessary... Mr. Cordell, it seems to me that it isn't clear at all. [00:01:03] Speaker 01: This isn't a clean incorporation by reference. [00:01:06] Speaker 01: The statement says where differences are not mentioned. [00:01:09] Speaker 01: All right. [00:01:11] Speaker 01: We understood that isn't incorporation by reference. [00:01:15] Speaker 01: But the obvious is [00:01:18] Speaker 01: where there are differences. [00:01:19] Speaker 01: There was no incorporation by reference, and there are differences here. [00:01:23] Speaker 01: The numbers are different. [00:01:25] Speaker 00: Well, so let me address that in stages, if I may. [00:01:28] Speaker 00: So the first sentence of the incorporation, and this is at appendix 11, this application discloses number of improvements over and enhancements to the hybrid vehicles disclosed in inventors, and I'm reading from the wrong place. [00:01:42] Speaker 00: My apologies, Your Honor. [00:01:45] Speaker 00: The incorporation by reference statement is, in fact, very clear. [00:01:52] Speaker 01: That's not a clean incorporation by reference. [00:01:56] Speaker 01: And it provides for an exception that applies, because the current and the voltage numbers in the 634 claims and the 970 patent are different. [00:02:10] Speaker 01: And that's what the board, that's why the board found no incorporation. [00:02:14] Speaker 00: Well, if I can just begin with the first sentence of the incorporation I now have in front of me. [00:02:21] Speaker 00: Column 18, lines 24. [00:02:22] Speaker 00: This application discloses a number of improvements over and enhancements to the hybrid vehicle disclosed in the inventor's US patent 5-343-970. [00:02:30] Speaker 00: Print the 970 patent, which is incorporated herein by reference. [00:02:36] Speaker 00: So if the application had stopped there, I think no one would have disputed that the 970 is incorporated by reference. [00:02:43] Speaker 00: And so the question then becomes, what does the law require for incorporation by reference? [00:02:48] Speaker 00: And does the second sentence that Your Honor mentioned somehow disable that incorporation? [00:02:53] Speaker 00: So the jurisprudence of this court has been very clear that when an applicant incorporates by reference, he or she is given the benefit of that incorporation. [00:03:01] Speaker 00: And we haven't nibbled at the edges. [00:03:03] Speaker 00: We haven't detracted from it. [00:03:05] Speaker 00: And the decision that we think is four square with where we are today is the Harari versus Lee decision. [00:03:12] Speaker 00: Because in that decision there was the same level of incorporation by reference and then there was a later statement that said there are specific aspects of the prior disclosure that will be incorporated herein. [00:03:25] Speaker 00: And this court decided that while that second incorporation was arguably inconsistent with the broad incorporation that happened initially, that we're not going to go there. [00:03:36] Speaker 00: We're not going to start to nibble at the edges of what has been a very bright line and useful test. [00:03:42] Speaker 00: So that when an applicant says, I'm including the 970, I get to include the 970. [00:03:46] Speaker 00: The legal requirements are very clear. [00:03:48] Speaker 00: You have to specifically identify what it is that you're incorporating. [00:03:52] Speaker 00: And here, that was done by patent number. [00:03:54] Speaker 00: It could not be clearer. [00:03:56] Speaker 00: And then the second requirement is that the disclosure be available to those of ordinary skill in the art. [00:04:00] Speaker 00: Again, a patent is readily available. [00:04:03] Speaker 00: So it meets that requirement. [00:04:04] Speaker 00: And if we're going to credit the second sentence as somehow disabling that, [00:04:09] Speaker 00: we're going to force the issue where we're second guessing, we're creating a trap for the unwary, where every characterization of the reference could now be arguably a disabling characterization. [00:04:21] Speaker 00: So in this particular case, I counted 49 references back to the 970 patent, including specific descriptions of how the electrical aspects of the 970 patent are used in what became the 634 patent specification. [00:04:36] Speaker 02: Well, do you read Harari to say that we just ignore any qualifications? [00:04:41] Speaker 00: I don't. [00:04:42] Speaker 00: But I read Harari as saying that to the extent that there is a qualification, it must be at least of equal dignity and perhaps even clearer in order to defeat the clear incorporation by reference that is made. [00:04:54] Speaker 00: So we can't simply say, well, there's a characterization of the prior disclosure. [00:04:58] Speaker 00: There's a discussion of it, and somehow that would defeat it. [00:05:02] Speaker 00: That simply can't be the law. [00:05:04] Speaker 00: But more to the point, [00:05:06] Speaker 00: Your honors are all familiar with the way that we patent lawyers put 16 embodiments into an application. [00:05:12] Speaker 00: And they're often inconsistent. [00:05:14] Speaker 00: In this case, sometimes we've had embodiments with two electric motors. [00:05:17] Speaker 00: Sometimes it's one electric motor. [00:05:18] Speaker 00: The fact that I have different disclosures and they might be somewhat inconsistent with one another doesn't answer the fundamental question, because when we return to first principles, what are we asking? [00:05:28] Speaker 00: We're asking whether the inventor was in possession of the subject matter at a particular date. [00:05:34] Speaker 00: And he shows that by incorporating by reference. [00:05:37] Speaker 00: He shows that by pointing to the 970 patent and saying, I am in possession of this material. [00:05:42] Speaker 00: And it turns out this material has become an issue because Ford says that it wasn't disclosed originally and added, and therefore the 455 PCT becomes an invalidating reference. [00:05:55] Speaker 01: You need the incorporation by reference to get over the PCT application. [00:06:01] Speaker 00: I will posit that it's a very important issue, certainly. [00:06:05] Speaker 00: But we believe we deserve it, because again, we have to look at the incorporation through the lens of how this evidence is to be used. [00:06:13] Speaker 00: Is it to be used as a way to [00:06:18] Speaker 00: to defeat a claim of written description perhaps, or is it used for other purposes? [00:06:24] Speaker 00: It could be lots of different reasons. [00:06:26] Speaker 03: Can I just see if I'm clear about the following and whether you agree with it? [00:06:33] Speaker 03: The first sentence of the crucial passage says the patent, the whole thing, is incorporated by reference. [00:06:40] Speaker 03: And in the very sense, it acknowledges that there are going to be differences, right? [00:06:44] Speaker 03: Because it refers to we've got enhancements and improvements. [00:06:47] Speaker 03: The second sentence doesn't use the language of incorporation by reference. [00:06:52] Speaker 03: So it might not, in fact, be talking about the relationship between the two documents. [00:06:58] Speaker 03: It is now talking about something else, something about features being applicable. [00:07:05] Speaker 03: I think you said in your blue brief a couple of times that's just the preferred embodiment. [00:07:10] Speaker 03: That seems a little bit too narrow. [00:07:11] Speaker 03: It might be all of the embodiments. [00:07:15] Speaker 03: But even if you got [00:07:17] Speaker 03: a vacator on the ground that this document actually, the 970 Severinsky, is actually incorporated by reference. [00:07:25] Speaker 03: That doesn't answer a question that the board did not find it necessary to ask and answer, namely, does the expanded document, 817 now with all the extra pages from the 970, provide the [00:07:41] Speaker 03: adequate written description support for, say, claim 58, a vehicle with a current maximum of whatever that one says, 150. [00:07:53] Speaker 00: So I would say two things. [00:07:55] Speaker 00: I would say, number one, that Ford at several points essentially admitted that the combined document would, in fact, support the written description necessary to defeat the 455 application. [00:08:11] Speaker 00: But having said that, I acknowledge the board didn't do that analysis. [00:08:14] Speaker 00: And would it be reasonable for this court to send back? [00:08:17] Speaker 00: Sure. [00:08:17] Speaker 00: Would I prefer a reversal? [00:08:19] Speaker 03: Yes. [00:08:19] Speaker 03: Part of the reason, I guess, is the slightly mysterious language of the second sentence. [00:08:27] Speaker 03: These features are not applicable to the vehicle shown, or some language quite like that, right? [00:08:33] Speaker 03: Yeah, applicable to the vehicle shown here. [00:08:36] Speaker 03: I wonder if that raises a question whether if you start with, say, claim 58, one of the current claims, which is a vehicle meeting all the claim one requirements in which the current to the electric motor stays below a maximum of, I think that's 150. [00:08:56] Speaker 03: 150 amps, yes. [00:09:01] Speaker 03: might that second sentence say, we're not actually here showing a vehicle that meets all the new stuff about torque and has this current maximum. [00:09:18] Speaker 03: But that's a written description question, not an incorporation question. [00:09:21] Speaker 00: Well, exactly. [00:09:22] Speaker 00: And you could have disclosures that are inconsistent. [00:09:25] Speaker 00: So I view that second sentence as a way for the reader to rationalize [00:09:30] Speaker 00: things that may seem inconsistent and therefore allow you to sort out the embodiments. [00:09:36] Speaker 00: But that's not the question we're answering. [00:09:38] Speaker 00: The question we're answering is not ultimately what is the best approach. [00:09:44] Speaker 00: The question we're answering is what did the inventor possess as of the date of that filing? [00:09:49] Speaker 00: And as a result, he's entitled to the entirety of what he incorporated by reference, even if he denigrates it later, even if he says it's not useful, even if he says it's bad. [00:09:59] Speaker 00: or you shouldn't use it in all cases. [00:10:01] Speaker 03: But that's an argument possibly for remand if you win on the incorporation by reference point. [00:10:08] Speaker 00: I think that's right. [00:10:09] Speaker 00: I think that ultimately what we're talking about here, again, I'm sure Mr. Moore will take a different view of what they did, but what we view is that Ford, as part of this process, has attempted to backfill that record and to try to create enough [00:10:26] Speaker 00: to at least ask for a remand. [00:10:28] Speaker 00: But at the board level, they didn't do that. [00:10:30] Speaker 02: You said that the board didn't argue that the written description wouldn't be satisfied if we conclude that the board was wrong with its incorporation by reference. [00:10:42] Speaker 02: But they never actually conceded that point, did they? [00:10:46] Speaker 00: I don't think they conceded. [00:10:47] Speaker 00: I think that's going too far. [00:10:49] Speaker 00: I think that. [00:10:50] Speaker 02: What incentive would they have had to argue that point instead of simply saying, we don't even get there? [00:10:57] Speaker 00: Well, that was certainly their position, is that the 970 was not incorporated by reference, and therefore there was no reason to reach that issue. [00:11:04] Speaker 00: And that's ultimately what the board decided. [00:11:06] Speaker 00: And so the board's decision, again under Chenery, was we don't need to go into the details because we don't believe the disclosure was, in fact, incorporated. [00:11:18] Speaker 02: But given that the description is [00:11:24] Speaker 02: factual is a factual determination, we have to send it back, wouldn't we? [00:11:31] Speaker 00: Again, I'm struggling for a reversal, which is really wrong. [00:11:36] Speaker 00: The reality is that the analysis is very detailed and very precise, and I freely admit that. [00:11:46] Speaker 00: But the board should have done it. [00:11:47] Speaker 00: They should have done it based on the record they were given. [00:11:49] Speaker 00: The record they were given didn't include that analysis. [00:11:53] Speaker 00: But again, would it be reasonable for you to send it back? [00:11:54] Speaker 00: Of course. [00:12:00] Speaker 03: I have a vague recollection. [00:12:02] Speaker 03: It's only if my recollection is wrong. [00:12:04] Speaker 03: You make a specific point about claim 293. [00:12:12] Speaker 03: Am I remembering that you say, even if you're wrong about a corporation by reference, the 817 application [00:12:22] Speaker 03: teaches, provides 120 written description support for claim 293 and that Ford never argued to the contrary. [00:12:34] Speaker 00: Well, so I think what we did with claim 293 is say that Ford doesn't meaningfully dispute the electrical limitations [00:12:50] Speaker 00: for things like claim 293 as having been disclosed in the 970 patent, if I'm remembering your honor's question correctly. [00:13:02] Speaker 00: There's a separate analysis where we believe the board simply failed to reach some of the critical limitations of claims. [00:13:08] Speaker 00: So for example, in claim 290, it talks about operating the engine at levels less than the set point under abnormal and transient conditions [00:13:19] Speaker 00: And we believe the board just missed these. [00:13:21] Speaker 00: They simply didn't do any analysis of things, for example, at Claim 290, the abnormal and transient conditions limitations. [00:13:33] Speaker 00: The same would be true for the FUDS limitations. [00:13:35] Speaker 03: So what I'm thinking of, I guess, is at the bottom of 26, of your blue brief at the top of 26. [00:13:43] Speaker 03: This is where you say, even putting aside the separation [00:13:49] Speaker 03: 970 Severinsky. [00:13:52] Speaker 03: Look at what the 817 application says. [00:13:55] Speaker 03: These disclosures are sufficient for the, I guess it's 75 amps of 293 in claim 293. [00:14:04] Speaker 03: In fact, and now this is nitalicized. [00:14:06] Speaker 03: Not even Ford argued that this limitation was not disclosed by the 817 application. [00:14:11] Speaker 03: And you cite to the certain pages of their petition, which I think do not discuss claim 293. [00:14:18] Speaker 00: And we maintain that argument, Your Honor. [00:14:19] Speaker 00: Thank you. [00:14:20] Speaker 00: That is a very forceful argument from our perspective. [00:14:28] Speaker 00: And just to tie it off, 293 depends from, I believe, 292, which also has the voltage limitation in it. [00:14:34] Speaker 00: And if I could stay with the incorporation by reference, it also bears mentioning that this is Ford's burden. [00:14:46] Speaker 00: So the way the case law breaks down on this incorporation by reference issue is that it is our burden to come forward with production. [00:14:52] Speaker 00: We need to point to some evidence that would allow the issue to be live, which we've done. [00:14:56] Speaker 00: We've got our seminal sentence that says it's incorporated by reference. [00:14:59] Speaker 00: The burden then shifts to forward to prove by clear and convincing evidence that it was not incorporated by reference. [00:15:05] Speaker 00: And we get that from the Tech Licensing Corp. [00:15:08] Speaker 00: v. Videotech, Inc. [00:15:10] Speaker 00: Case 545, F-1316. [00:15:13] Speaker 00: And then the pin side is 1327 through 28. [00:15:16] Speaker 01: But we have a decision by the board. [00:15:19] Speaker 01: And we're reviewing the decision of the board, which is entitled to deference on this issue, I think. [00:15:30] Speaker 00: That's true. [00:15:31] Speaker 00: But this is reviewed de novo as a matter of law under Harari Beeley. [00:15:37] Speaker 00: That was very clear. [00:15:38] Speaker 00: And so you have the power and the duty to review it. [00:15:42] Speaker 00: in the first instance and so Ford's burden remains. [00:15:46] Speaker 00: They have a clear and convincing burden to negate the incorporation by reference and I do think that's an important part of it. [00:15:56] Speaker 00: The entirety of the disclosure, if we're going to go to that second sentence, we need to go through the entirety of the disclosure and the disclosure over and over again talks about the fact [00:16:08] Speaker 00: that the 634 patent incorporates the electrical aspects of the 970. [00:16:13] Speaker 00: If I could just highlight one of them. [00:16:15] Speaker 00: So at the 634 lines, column 11, 14 through 25, which is appendix 627, which is also in the 817 application, which is at appendix 11175. [00:16:29] Speaker 00: It reads, the hybrid drivetrain shown in the 970 patent has many advantages with respect to the prior art, which are retained by the present invention. [00:16:38] Speaker 00: For example, the electric drive motor is selected to be of relatively high power, specifically equal to or greater than that of the internal combustion engine. [00:16:46] Speaker 00: And to have high torque output characteristics at low speeds, this allows the conventional multi-speed vehicle transmission to be eliminated. [00:16:53] Speaker 00: As compared to the prior art, the battery bank, motor generator, and associated power circuitry are operated at relatively high voltage and relatively low current, reducing losses due to resistive heating and simplifying component selection and connection. [00:17:07] Speaker 00: The entirety of that specification makes it very clear that whatever you think of the second sentence, the so-called debilitating sentence, it can't be over-read. [00:17:17] Speaker 00: It can't be over-read. [00:17:18] Speaker 00: And again, when we return to first principles, the question is what did the inventor know as of the date that he filed that application? [00:17:25] Speaker 00: And it's clear that he knew of the 970 and incorporated it by reference. [00:17:31] Speaker 00: Ford makes mention of the [00:17:34] Speaker 00: Holman v. Harari decision and suggest that that somehow lies in tension with the Harari v. Lee decision. [00:17:41] Speaker 00: And we disagree with that. [00:17:43] Speaker 00: The Holman decision really turned on whether or not there was a proper identification of the material to be incorporated. [00:17:50] Speaker 00: There was an ambiguity because of the way the applications were filed before patent or application numbers were assigned to them. [00:17:58] Speaker 00: And so in later applications, they referred to the application filed on the same date [00:18:03] Speaker 00: of this particular filing, and that was no longer true. [00:18:07] Speaker 00: And so that ambiguity is what the case turned on. [00:18:09] Speaker 00: It had nothing to do with whether the incorporation by reference was sufficient or not. [00:18:14] Speaker 00: It had to do with the ambiguity in the filing of the application. [00:18:17] Speaker 00: So I just want to put an oar in the water on that and hear from my colleague. [00:18:23] Speaker 00: With respect to the other issues remaining in the 1387 appeal, [00:18:29] Speaker 00: I mentioned before a little bit about the abnormal and transient conditions issue that in claim 290, for example, it reads the method of claim 267 further comprising operating the engine at torque output levels less than the SP or set point under abnormal and transient conditions to satisfy drivability and or safety considerations. [00:18:51] Speaker 00: The board simply didn't address these in the way that they really should have in order to meet the chennery. [00:18:59] Speaker 00: The first thing they did is they included the idea that you can start the engine as an abnormal or transient condition. [00:19:07] Speaker 00: But remember, Your Honors, the whole idea behind the comparison to setpoint is to start the engine. [00:19:13] Speaker 00: So if you say that starting the engine is an abnormal and transient condition, you've consumed the condition under which the decision is being made. [00:19:21] Speaker 00: You can't say that starting the engine below setpoint is okay. [00:19:25] Speaker 00: when you're in an abnormal and transient condition, and say that starting the engine is that condition. [00:19:30] Speaker 00: It's a circular analysis that really gets us nowhere. [00:19:33] Speaker 01: Starting the engine is not transient? [00:19:36] Speaker 00: The engine is transient. [00:19:37] Speaker 00: And there's a piece of the prosecution history where the PACE's attorney explained that when you start the engine, there is a transient period after you start it. [00:19:47] Speaker 00: But that doesn't satisfy the claim. [00:19:50] Speaker 00: The claim requires there to be an abnormal and transient condition [00:19:53] Speaker 00: that allows you to start the engine below set point. [00:19:56] Speaker 00: So that's the fundamental decision that you're making at that moment in claim 290. [00:20:02] Speaker 00: But more to the point, the idea is that the PTAB should have addressed these issues. [00:20:08] Speaker 00: And they should have given us real analysis under Chenery as to the abnormal and transient condition. [00:20:16] Speaker 02: In all circumstances, we assess alleged Chenery [00:20:20] Speaker 02: violations in context. [00:20:22] Speaker 02: And part of it has to do with what the technology is that they're talking about. [00:20:27] Speaker 02: And it has to do with our ability to look at their familiarity with the entirety of this record, right? [00:20:35] Speaker 00: That's true. [00:20:35] Speaker 00: But again, what we're talking about here, so for example, there are also claims, say, for example, in claim 279 that talks about, that actually says, this is when you start and stop the engine. [00:20:47] Speaker 00: That is the sum total of what [00:20:50] Speaker 00: needs to be shown, and Ford's response, and the PTAB pointed to this, was that, of course, you start and stop the engine. [00:20:58] Speaker 00: I mean, that must happen at some point. [00:21:00] Speaker 00: But whether or not it happens at some point is not the inquiry. [00:21:03] Speaker 00: The inquiry is whether or not it starts and stops because something has happened, because you – road load has exceeded a set point. [00:21:09] Speaker 00: Now, that set point may be adjusted for a reason. [00:21:12] Speaker 00: There's a cause-and-effect relationship there that is completely missing from this record, and so the board should have done that analysis. [00:21:18] Speaker 00: I think they just missed it. [00:21:20] Speaker 00: So and those were claims 91, 92, 125, 126, 252, 253, 278, 279, and 282. [00:21:30] Speaker 00: Chattery says that PTAD simply can't make a decision. [00:21:33] Speaker 00: They have to actually give us something to examine. [00:21:35] Speaker 00: It cuts forth a decision that we're very familiar with, reiterated that, and made it very clear. [00:21:44] Speaker 00: If I could spend just a few moments on the 1406 appeal, unless there are any further questions on 1387. [00:21:50] Speaker 00: The 1406 appeal extends the abnormal and transient condition analysis to the 097 patent. [00:21:59] Speaker 00: And the claims say, again, that you operate the engine when the road load is below a set point under abnormal and transient conditions. [00:22:08] Speaker 00: There are only four claims that remain, is the good news, because the prior appeal decided much of this. [00:22:15] Speaker 00: So the only claims that remain in the 1406 appeal are 717 [00:22:20] Speaker 00: 27 and 37. [00:22:20] Speaker 02: Now, are you arguing the claim construction in this appeal? [00:22:27] Speaker 00: We didn't do it as explicitly as we did in the prior appeal, the 1387 appeal, but we do argue that in fact the claim construction is live for two reasons. [00:22:40] Speaker 00: Number one, the abnormal and transient conditions limitation remains the same. [00:22:46] Speaker 00: There's a distinction in that the drivability and safety considerations that we saw in the 1387 appeal, they're a little bit different in the 097. [00:22:56] Speaker 00: However, the PTAB made the same decision. [00:22:59] Speaker 00: They also evaluated the abnormal and transient conditions limitation through the lens of the construction drivability and safety considerations. [00:23:10] Speaker 00: And that became very odd when you read the PTAB's opinion because they [00:23:14] Speaker 00: they key on the idea that battery life is an abnormal and transient condition and that was something that surprised us when we read it in the opinion. [00:23:25] Speaker 00: They say that battery life somehow deals with safety or drivability because the prior art talked about making changes to the system in order to enhance battery life, the 970 patent in particular. [00:23:39] Speaker 00: We don't think that there's any [00:23:42] Speaker 00: basis to extend the construction of abnormal and transient conditions to battery life. [00:23:47] Speaker 00: And even if it is, it's an example of the board not doing the work they needed to do to explain why that would be included. [00:23:54] Speaker 00: Because those two concepts simply don't have much to do. [00:23:56] Speaker 02: So in this context, what would you think abnormal and transient conditions have to be? [00:24:03] Speaker 00: So you could, for example, have a situation where the engine suffers a fault. [00:24:10] Speaker 00: And the electric motor suffers a fault is probably a better example. [00:24:14] Speaker 00: So the main motor, the main traction motor in the system suffers a fault. [00:24:19] Speaker 00: And therefore, you have to start the engine below set point because the vehicle won't move without it. [00:24:24] Speaker 00: So that would be an abnormal and transient condition at large. [00:24:29] Speaker 02: But you're not arguing that Severinsky has to disclose starting or stopping the engine in order to disclose this abnormal and transient conditions limitation. [00:24:40] Speaker 00: That's true. [00:24:41] Speaker 00: We believe that starting and stopping the engine is not an abnormal and transient condition, and that's made perhaps clearer in the last appeal because we have claims that specifically talk about starting and stopping the engine apart from the abnormal and transient conditions. [00:24:58] Speaker 01: So if there are no other questions, I'll reserve a little time. [00:25:15] Speaker 04: Thank you, Your Honor, and may it please the Court. [00:25:17] Speaker 04: I'd like to start with something my friend said on the other side, with which I agree. [00:25:21] Speaker 04: He said, the patentee has to show possession of the invention. [00:25:26] Speaker 04: Then he says something that I disagree with. [00:25:28] Speaker 04: He said, in this case, he showed it by pointing to the incorporation by reference clause to Severinsky. [00:25:34] Speaker 04: But by way of a little bit of background, when the inventor first put this material in the specification was in 2001. [00:25:41] Speaker 04: That's in columns 50 and 51 of what ultimately became the 634 patent. [00:25:45] Speaker 04: No dispute about that. [00:25:46] Speaker 04: That's when those columns first appeared. [00:25:48] Speaker 04: And then when the inventor put the electrical claims into the patent later as an amendment in 2006, it's telling what the patentee pointed to to show support. [00:26:01] Speaker 04: Pointed not to a vague incorporation by reference clause, and I agree it's very ambiguous, pointed not to the 817 disclosure alone. [00:26:09] Speaker 04: What did the patentee point to? [00:26:11] Speaker 04: The patentee pointed to those very two columns, columns 50 and 51, and said, those clearly support the electrical claims. [00:26:20] Speaker 02: But I'm not sure I understand how you get around Harari versus Lee. [00:26:23] Speaker 02: I mean, you specifically said if there is a broad incorporation by reference, then you're bound by that, and you get it, both. [00:26:31] Speaker 02: And the fact that there might be some other phrases later [00:26:38] Speaker 02: disclosure that implies that maybe there's something you're not relying on for that particular piece, that doesn't change the full incorporation by reference. [00:26:48] Speaker 04: But don't dispute that that's what Harari teaches, that if you have two separate incorporation clauses, one that happens to be broader and one that happens to be narrower, as you say, the narrow one doesn't negate the broader one. [00:26:59] Speaker 04: The issue here is a little bit different. [00:27:01] Speaker 04: And Harari itself talks about reading all of this in context, as you always read a specification in context. [00:27:08] Speaker 04: And in this context, there are not two incorporation clauses. [00:27:11] Speaker 04: There's one. [00:27:12] Speaker 04: And it talks about incorporating, as you say, Judge Toronto, improvements, i.e. [00:27:18] Speaker 04: differences. [00:27:19] Speaker 03: No, it doesn't say that. [00:27:20] Speaker 03: It says there are improvements and enhancements of what we said in the 970 patent, comma, which is incorporated. [00:27:30] Speaker 03: It's the whole patent that's incorporated in a sentence that recognizes that there are differences. [00:27:37] Speaker 03: Point taken. [00:27:37] Speaker 03: Fair enough. [00:27:37] Speaker 03: Then the next sentence doesn't talk about incorporation in terms. [00:27:40] Speaker 03: You're arguing that, and the board found that, impliedly, it does in this language about details that are applicable to the vehicles shown in the current one. [00:27:53] Speaker 04: Precisely. [00:27:54] Speaker 04: And it's the juxtaposition of the two sentences back to back that we submit that the board correctly recognized that a person of ordinary skill would look at that [00:28:02] Speaker 04: That incorporation, as you say, it talks about the patent. [00:28:05] Speaker 04: It also talks, in that sense, about improvements. [00:28:07] Speaker 04: And in the very next sentence, it says where there are differences or where there are differences between the two. [00:28:15] Speaker 04: And we submit the board correctly read that as saying differences are not incorporated. [00:28:21] Speaker 04: And the fact that it doesn't use the word incorporation in the next sentence doesn't mean that it doesn't speak to the scope of the incorporation. [00:28:29] Speaker 04: And a great case to look for for that proposition is the Callaway case. [00:28:32] Speaker 04: that my friend cited in their brief in a footnote. [00:28:35] Speaker 04: In Callaway, there was one sentence that talked about employing certain features of the prior art. [00:28:40] Speaker 04: It didn't mention incorporation at all. [00:28:43] Speaker 04: And this court said that read on the scope of the incorporation, that determined the scope of the incorporation. [00:28:50] Speaker 04: So merely not having the word incorporation is not dispositive. [00:28:54] Speaker 04: It's, again, the whole context, which Harari talked about, read everything in context. [00:28:58] Speaker 04: Another great case to look at, I think, [00:29:00] Speaker 04: is the Husky case, and that's 838 F3 at 1249, where there were two separate closets that talked about a certain prior art reference. [00:29:11] Speaker 04: One of them said cross references to the prior art are hereby incorporated. [00:29:16] Speaker 04: The other reference said the prior art certain features are brought in or something to that effect. [00:29:22] Speaker 04: And this court did not simply jump and say, well, there is a holistic incorporation here, so we don't need to look at the other one. [00:29:29] Speaker 04: It looked at both in context and said, at least what we know is that certain things are incorporated. [00:29:35] Speaker 04: And so that, again, supports the notion that this has to be a holistic inquiry, which we submit the board properly did. [00:29:41] Speaker 04: The board's expert came to the same conclusion that a person of ordinary skill would read these two in concert. [00:29:48] Speaker 04: And so the question then becomes, once you read those two together, is it sufficiently detailed, detailed particularity [00:29:56] Speaker 04: And I disagree that there's some sort of additional burden here. [00:29:59] Speaker 04: Again, it's looking at the context as a whole, reviewing the board's decision de novo. [00:30:05] Speaker 04: But it is certainly illustrative that the three board members and Ford's expert all thought a person of ordinary skill would read these together. [00:30:13] Speaker 02: Again, not support. [00:30:14] Speaker 02: The incorporation language in the 347 is the same as the incorporation language at issue here, right? [00:30:21] Speaker 04: In the 347 patent? [00:30:22] Speaker 02: Yeah. [00:30:22] Speaker 02: Yes. [00:30:23] Speaker 02: And we found that that language was sufficient to incorporate Severinsky in its entirety, right? [00:30:32] Speaker 02: We didn't draw any of these qualifications that you're trying to draw. [00:30:35] Speaker 04: I don't believe any arguments were raised. [00:30:37] Speaker 04: And I don't recall the exact context of that. [00:30:41] Speaker 04: But certainly in the context of this case, the board looked at both together because it was PACE that was trying to, in this case, bring in the incorporation to ante date [00:30:52] Speaker 04: what I think was clearly intended to be the support for those claims in 2001. [00:30:56] Speaker 04: So I would submit it's a substantially different situation. [00:31:01] Speaker 02: Well, a substantially different situation, because in one case, the incorporation, by reference, invalidates the patent. [00:31:07] Speaker 02: And in the other case, it doesn't, right? [00:31:13] Speaker 04: Again, I don't recall the exact context for what those statements were. [00:31:17] Speaker 04: I think certainly in this case, that reading them together. [00:31:20] Speaker 01: It's saying it wasn't dealt with there. [00:31:22] Speaker 01: For that reason, it wasn't determinative. [00:31:25] Speaker 04: Exactly. [00:31:26] Speaker 04: Exactly. [00:31:28] Speaker 04: And so what we have here are differences. [00:31:30] Speaker 04: So we know that there's not incorporation in full. [00:31:34] Speaker 04: But even if we thought there were some amount of incorporation of Severinsky, certainly the electrical components themselves, those are different between the 817 and Severinsky. [00:31:45] Speaker 04: In the 817, you have a 768 [00:31:48] Speaker 04: voltage embodiment, open circuit, i.e. [00:31:51] Speaker 04: not under load. [00:31:52] Speaker 04: In the Severinsky, you have up to 75, excuse me, you have 500 to 1500 voltage, and those are open circuit, and you just simply can't compare those two, so those are different. [00:32:06] Speaker 02: In the 817... If we were to disagree with you on the incorporation by reference, what's your response to Mr. Crudel's argument that we could reach a determination on written description on the [00:32:18] Speaker 02: face of the materials without having to remand? [00:32:22] Speaker 04: I would disagree, Your Honor. [00:32:23] Speaker 04: I think this is quintessentially what Chenery talks about, that the type of situation where the board is empowered to make that judgment in the first instance is a fact question, intensely factual question. [00:32:35] Speaker 04: Actually, this court has called it written description. [00:32:37] Speaker 04: And we certainly didn't concede it. [00:32:39] Speaker 04: At page 50 of our brief, we pointed out that the correct procedure at that point would be to remand for the board to address in the first instance. [00:32:47] Speaker 04: But in any event, we do think that we have a strong case that incorporating Severinsky wouldn't solve their problem for much of the same reasons we've talked about, because there are so many differences. [00:32:58] Speaker 04: And so the ranges you end up with are not sufficient support for the ranges that are ultimately claimed. [00:33:03] Speaker 04: And that's our position. [00:33:05] Speaker 04: And I can go into that further if you'd like. [00:33:07] Speaker 04: But our position is that should be for the board, in the first instance, if you disagree with the incorporation by reference. [00:33:13] Speaker 04: And so I wanted to make one other point [00:33:17] Speaker 04: My friend spoke at one point about if there's not incorporation by reference, at a minimum, the 817 application alone would support certain claims. [00:33:28] Speaker 04: And so just to clarify what claims those are, they only make that argument as to the amperage claims. [00:33:36] Speaker 04: So as to the voltage and the ratio claims, they don't make any argument that 817 alone supports those. [00:33:43] Speaker 04: So we're only dealing with the amperage claims there. [00:33:45] Speaker 04: And I'm going to submit again. [00:33:47] Speaker 03: And what about specifically, I think I asked about the claim 293. [00:33:52] Speaker 04: Yes. [00:33:53] Speaker 03: Yes, Your Honor. [00:33:53] Speaker 03: And PACE says that page 26 through 27 of its brief that Ford did not contest as to 293 the sufficient disclosure in the 817 of that claim. [00:34:13] Speaker 04: I believe at the pages they cited, we did not raise that. [00:34:16] Speaker 04: But here's why it doesn't matter. [00:34:18] Speaker 04: As my friend pointed out, the 293 claim incorporates by reference the 292. [00:34:24] Speaker 04: It's a dependent claim to 292. [00:34:26] Speaker 04: And 292 has the voltage limitation. [00:34:30] Speaker 04: So if that's not supported, and we're assuming by now that there's no incorporation by reference, and they're just relying on the 817. [00:34:40] Speaker 04: And for that, they only made the argument [00:34:42] Speaker 04: as to the amperage claims. [00:34:44] Speaker 04: So we would have a limitation that would not be supported. [00:34:47] Speaker 03: What do you mean they only made the argument as to the amperage claims? [00:34:50] Speaker 03: In the blue brief at the pages that I cited, they expressly make the argument that the 817 application, even without incorporation of 970 Severinsky, supports 293, and you never dispute that. [00:35:06] Speaker 04: And so just to clarify, the 75 claim that they're talking about is an amperage claim. [00:35:10] Speaker 04: So I'm including that in the [00:35:12] Speaker 04: set of things that they are making the argument about, the 75 amp limit and the 150 amp limit. [00:35:19] Speaker 04: And so they cite pages from our brief below and admittedly did not address 75. [00:35:25] Speaker 04: And so I'm just explaining now why it doesn't matter. [00:35:28] Speaker 04: Once we've determined that they only have the 817 to rely on, in other words, we're assuming no incorporation by reference, and you only have the 817, there is also in that very claim a voltage limitation. [00:35:43] Speaker 04: that would therefore not be supported. [00:35:46] Speaker 04: And they're not making the argument that the 817 alone supports the voltage. [00:35:49] Speaker 04: Therefore, the dependent claim even, let's assume that the 75 limitation would be supported. [00:35:57] Speaker 04: The claim as a whole wouldn't, because it incorporates the 292 voltage limitation. [00:36:04] Speaker 02: What about the turning the engine on and off limitations? [00:36:07] Speaker 02: I mean, it does even giving the board a break. [00:36:12] Speaker 02: I mean, all they did was cite to the petition, which in turn cites to your own expert. [00:36:17] Speaker 02: They didn't do any other analysis. [00:36:19] Speaker 02: How do we say that's enough? [00:36:22] Speaker 04: Well, my response, Your Honor, is to look at how and what the other side raised as to these claims. [00:36:27] Speaker 04: The only argument for patentability over the prior art that they made as to these claims, what I call the on-off claims, was the same argument they made as to the underlying claims, i.e. [00:36:38] Speaker 04: Severinsky doesn't teach a torque-based control system. [00:36:42] Speaker 04: it teaches speed-based. [00:36:44] Speaker 04: And so in a footnote at A24363, note two, that's where they raise the issue and they say, oh, and for that same reason, the on-off claims are also patentable. [00:36:57] Speaker 02: So if we find that Severinsky teaches a torque-based system, you say all of the claims fall. [00:37:02] Speaker 04: That's right. [00:37:02] Speaker 04: And they have now conceded in this appeal that Severinsky does teach a torque-based system, as this court previously held. [00:37:09] Speaker 04: the other side, uh, wisely narrowed the appeal in the reply and jettisoned that issue, um, as to the underlying claims. [00:37:17] Speaker 04: And therefore it immediately follows that they have no basis to contest on the on-off claims because that's the only basis they raised. [00:37:24] Speaker 04: And the board rejected that expressly explained in, uh, page a 98 note three and said, pace is only arguing the same argument they made as to all the other claims about speed versus torque. [00:37:38] Speaker 04: And therefore, [00:37:39] Speaker 04: the argument fails as to these claims as well. [00:37:42] Speaker 04: And that's certainly sufficient explanation as this Court held invasive and in other cases where the explanation of the board only needs to be commensurate with the arguments raised. [00:37:54] Speaker 04: And this was a kind of throwaway argument. [00:37:56] Speaker 04: Anyway, all the arguments we heard now about causation and on-off were not the reasons they gave below. [00:38:02] Speaker 04: And so even if you accepted that it was somehow raised [00:38:08] Speaker 04: blow beyond the speed versus torque comparison, there's certainly substantial evidence to confirm that a torque-based system whereby the engine turns on and off when it needs to will turn on and off. [00:38:21] Speaker 04: I mean, it's hard to imagine something more obvious than that. [00:38:24] Speaker 04: So all of that in total, the board cannot be faulted for not saying more than PACE itself did. [00:38:46] Speaker 04: And finally, as to the abnormal and transient conditions claims, the patentee itself expressly in the file history said that turning the engine on and off is precisely the type of abnormal and transient condition that was contemplated. [00:39:01] Speaker 04: That's at A12489. [00:39:03] Speaker 04: I don't believe my friend referred to that, but that makes a very clear statement. [00:39:09] Speaker 04: And it makes sense, because when you turn the engine on and off, for example, in city traffic to charge the battery, [00:39:17] Speaker 04: There's going to have to be a ramp-up time whereby the engine starts at nothing and moves through its inefficient range and perhaps gets to its efficient range, or perhaps not. [00:39:27] Speaker 04: Severinsky actually teaches a situation where, and what Severinsky says is, on occasion, it would make sense for the engine to be used inefficiently, for example, if you're in city traffic and charging the battery. [00:39:41] Speaker 04: They didn't mean to limit it to that, but that's certainly one example. [00:39:47] Speaker 04: is the abnormal transient condition claims, and those are the only four claims that are involved in the other appeal as well, the 1406 appeal. [00:40:02] Speaker 04: And so finally, I would just conclude, unless the court has other questions, a return to where I started, that if you want to take the patentee at its word, it didn't point to a vague [00:40:13] Speaker 04: incorporation by reference clause. [00:40:14] Speaker 04: It didn't point to other aspects of the 817 application to support its new electrical claims. [00:40:21] Speaker 04: What it said was it was supported by columns 50 and 51. [00:40:25] Speaker 04: And the board recognized this at A19 and at A8977 is where the patentee said, it's those columns. [00:40:33] Speaker 04: And so the patentee knew how to support those claims and did not do so, did not incorporate by reference. [00:40:41] Speaker 04: We submit the board's decision to be affirmed. [00:40:43] Speaker 01: Thank you, Mr. Bell. [00:40:47] Speaker 01: Thank you. [00:40:47] Speaker 01: Mr. Cordell, the board distinguished Harari by pointing out that the so-called qualification there was several pages later, whereas the qualification here was really in the same paragraph. [00:41:03] Speaker 01: It was part of the incorporation by reference statement. [00:41:09] Speaker 01: There's a big difference there, isn't there? [00:41:11] Speaker 00: I disagree, Your Honor. [00:41:12] Speaker 00: I think that if we start down that path, it's a very difficult one to tread. [00:41:17] Speaker 01: What's the path? [00:41:18] Speaker 00: Well, the path is deciding how closely the statements are made to one another. [00:41:22] Speaker 00: If you read the statement that we're talking about here, which is, I guess, at column 10, lines 40 plus, it actually concludes with a sentence saying, don't misconstrue the claims of the 970 patent. [00:41:34] Speaker 00: And therefore, you could argue that that middle sentence, the one that Ford claims is disabling, [00:41:40] Speaker 00: somehow deals with its impact on the 970 patent rather than on its incorporation by reference. [00:41:46] Speaker 00: The seminal statement is clear. [00:41:48] Speaker 00: The 970 is incorporated by reference. [00:41:49] Speaker 00: All of its works, all of its benefits, whatever it is. [00:41:52] Speaker 00: And so, again, the question we're trying to answer is, did the inventor have possession of that information, is answered in that incorporation sentence. [00:42:01] Speaker 00: If we start going down that pathway, we end up, whether it was separated by three paragraphs or three sentences, we will [00:42:09] Speaker 00: put our patent prosecution brethren and sisters in a difficult posture. [00:42:15] Speaker 00: They'll have to. [00:42:16] Speaker 01: They wouldn't want to do that. [00:42:17] Speaker 00: No. [00:42:19] Speaker 00: Well, they'll drum me out of the farm. [00:42:21] Speaker 01: But speaking of possession here, the amperage and the voltages in the 934 patent are quite different from those in the 970 patent. [00:42:31] Speaker 00: But there is a fair amount of overlap as well. [00:42:34] Speaker 00: And so we have a discussion in the briefing of the various ranges and how the ranges do align. [00:42:39] Speaker 00: If this were a chemical case, we'd be talking about whether we had sufficiently disclosed the genus in order to claim the species. [00:42:46] Speaker 00: And we have a lot of overlap. [00:42:48] Speaker 00: There's discussion, the one that I read earlier, where they specifically reference the 970 patents' ability to use high voltage and low current. [00:42:55] Speaker 00: And then that's extended into particular examples. [00:42:57] Speaker 00: I do need to correct one thing I said, which was I said the burden is on forward. [00:43:01] Speaker 00: show by clear and convincing evidence, and it shows you my amount of time I spent in district court. [00:43:06] Speaker 00: Here it's preponderance because it's an NPTAB decision. [00:43:09] Speaker 00: But it does remain their burden. [00:43:10] Speaker 00: They need to convince you that, in fact, there was no incorporation by reference. [00:43:14] Speaker 00: If I can use my last few moments to talk about the abnormal and transient conditions and the engine on-off issue. [00:43:26] Speaker 00: My colleague said that, well, PACE took the position in front of the board that [00:43:30] Speaker 00: It was the speed distinction, and that's what we were pointing to, that the claims required a torque threshold and the prior art only showed speed, and therefore there was no showing of turning the engine on and off or the abnormal and transient conditions. [00:43:44] Speaker 00: It is true that we argued that in fact the prior art was deficient because it didn't show the use of torque in order to accomplish those things. [00:43:52] Speaker 00: But that doesn't absolve the board from pointing to something. [00:43:56] Speaker 00: So if they disagreed with us, if they disagree that the prior art [00:44:00] Speaker 00: was only speed-based and therefore limited and couldn't invalidate, that doesn't absolve them of the responsibility under cuts forth in January to tell us why and what it is that they found turned the engine on and off. [00:44:12] Speaker 00: And they've got to do that. [00:44:13] Speaker 00: They can't simply throw up their hands and say that it must be in there someplace. [00:44:19] Speaker 00: And if there are no further questions, I'll... Thank you. [00:44:21] Speaker 01: Mr. Cordell will take these cases under advisement as well. [00:44:25] Speaker 00: Thank you.