[00:00:01] Speaker 00:
The next case is Polaris Industries versus Octocat, 2016, 1807, 2280.

[00:00:10] Speaker 00:
Mr. Vandenberg.

[00:00:11] Speaker 00:
Thank you.

[00:00:15] Speaker 02:
Good morning, Your Honors.

[00:00:16] Speaker 02:
May it please the Court.

[00:00:18] Speaker 02:
This is the case involving Polaris' industry-changing all-terrain vehicles.

[00:00:25] Speaker 02:
By selecting specific components and packaging them together,

[00:00:30] Speaker 02:
in a specific arrangement.

[00:00:32] Speaker 00:
These are all old components.

[00:00:34] Speaker 00:
There are only so many things you have to work with.

[00:00:38] Speaker 00:
A fuel tank and seats and an engine.

[00:00:41] Speaker 02:
But there are very, very many permutations of all those components.

[00:00:46] Speaker 02:
And what Polaris did was package them together in a way that created a new category within the ATV industry.

[00:00:54] Speaker 02:
It's hugely commercially successful and copied by others.

[00:00:58] Speaker 00:
I mean, a new category or a new name?

[00:01:00] Speaker 02:
No, it's a new category.

[00:01:02] Speaker 02:
The sport side-by-side all-terrain vehicle is recognized in the industry, we put in this evidence, as a separate category that has resulted in literally over a billion dollars of sales for Polaris.

[00:01:21] Speaker 01:
Even if we agree with you that Denny is directed to a dune buggy as opposed to an ATV, I don't understand why that's

[00:01:29] Speaker 01:
still doesn't make them analogous arts?

[00:01:31] Speaker 02:
We're not saying that this is a non-analogous art issue.

[00:01:36] Speaker 02:
The issue for Denny is twofold.

[00:01:39] Speaker 02:
And particularly, I'd like to focus, because we raised a lot of claims, but I'd like to focus this morning specifically on claims 17 through 19.

[00:01:48] Speaker 02:
And the reason is, there's a couple of reasons, but one is the sheer number of changes that you need to make to Denny to get

[00:01:59] Speaker 02:
from it to claim 17 through 19.

[00:02:01] Speaker 02:
17 through 19 are part of the string of dependent claims that keep adding more detail to the vehicle, so that by the time you get to even just claim 17, you need to make six changes to Denny.

[00:02:14] Speaker 00:
But they're all well-established things, adding a fuel tank?

[00:02:23] Speaker 02:
It's not simply a matter of

[00:02:28] Speaker 02:
adding the features, it's where they are added.

[00:02:30] Speaker 02:
Again, this is a packaging invention where you need to put all these components together in a vehicle, and that placement interacts with one another.

[00:02:38] Speaker 02:
So where you decide to do one thing is going to affect what you do with others.

[00:02:42] Speaker 02:
Again, we came up with an overall package that was unique and successful.

[00:02:48] Speaker 01:
You focus on the board's subjective preferences analysis, which I have to agree I do have some issues with.

[00:02:57] Speaker 01:
putting that aside, couldn't we read that as just sort of maybe a loose way to say that Denny really doesn't teach away from making all of these adjustments and that there would have been a motivation to combine all of these things?

[00:03:15] Speaker 02:
I wouldn't agree with that, Your Honor.

[00:03:16] Speaker 02:
They essentially re-characterized what is clear teaching away evidence.

[00:03:22] Speaker 02:
And again, this isn't simply Denny saying a certain design was preferable.

[00:03:26] Speaker 02:
He criticized the alternative.

[00:03:29] Speaker 02:
Don't have a vehicle like the secondary reference for Ohashi where you have that higher center of gravity.

[00:03:35] Speaker 02:
Instead, put the seats at the very bottom of the frame where you can maximize the low center of gravity.

[00:03:41] Speaker 02:
So first of all, it would simply be incorrect to characterize that as not teaching away.

[00:03:46] Speaker 02:
Arctic Cat didn't argue that it was not teaching away.

[00:03:51] Speaker 02:
And that's where I think

[00:03:53] Speaker 02:
I really want to focus the analysis on subjective preferences relative to claims 17 through 19, because the board's fundamental error on that point was in assuming that the issue for claim 17 through 19 was the same as it was for claim one.

[00:04:13] Speaker 00:
You think your argument regarding 17 and 19 is stronger?

[00:04:18] Speaker 00:
Then the commercial success argument relating to claims in the thirties.

[00:04:22] Speaker 02:
I think, I think they're both equally strong and my hope is to talk about 17 through 19 and then talk about 34 and 36.

[00:04:28] Speaker 00:
I'd like to hear about commercial success.

[00:04:30] Speaker 02:
Well, and I appreciate that, your honor.

[00:04:33] Speaker 02:
Our argument there is really quite simple.

[00:04:36] Speaker 02:
The board rejected commercial success simply because it found that Polaris's experts

[00:04:45] Speaker 02:
declaration saying that the Polaris products are covered by the claims, they characterize it as conclusory.

[00:04:52] Speaker 02:
And Your Honor, there's simply no basis to do that.

[00:04:54] Speaker 02:
It was pretty short, but for a mechanical invention like this, it shows that he performed the exact methodology required.

[00:05:05] Speaker 02:
For mechanical invention, you read the patent, you construe the claims, you look at information relative to the products, and he said he looked at the products

[00:05:13] Speaker 02:
the manuals, the parts drawings, and he found all of the elements.

[00:05:17] Speaker 03:
But he didn't attempt to explain where any of those elements were, even in a summary fashion.

[00:05:23] Speaker 03:
I get it.

[00:05:24] Speaker 03:
I mean, this one to me seems very close.

[00:05:26] Speaker 03:
I mean, you have a declaration, but it is pretty bare bones.

[00:05:30] Speaker 03:
It says, I looked at the patents.

[00:05:32] Speaker 03:
I've looked at these vehicles.

[00:05:34] Speaker 03:
They're covered by the claims.

[00:05:36] Speaker 03:
You know, if I was the board, maybe I could accept that, but we're reviewing them on a pretty deferential standard here on whether to accept

[00:05:43] Speaker 03:
expert evidence are not as credible.

[00:05:46] Speaker 03:
And this seems conclusory to me without any attempt to map the claims to the parts of these vehicles.

[00:05:54] Speaker 03:
How would your opponent know how to challenge that in a deposition or something like that?

[00:05:59] Speaker 02:
It's a very interesting point, Your Honor, because these parties have been locked in litigation for years.

[00:06:03] Speaker 02:
They have our vehicles.

[00:06:05] Speaker 02:
And if they had a basis to dispute our expert, they could have said so.

[00:06:12] Speaker 02:
And that's what really tips the scale.

[00:06:14] Speaker 03:
But here's the problem, though.

[00:06:15] Speaker 03:
I get that.

[00:06:16] Speaker 03:
And if I were the board judge, I may have said, this is good enough for me.

[00:06:21] Speaker 03:
If you wanted to challenge it, you should.

[00:06:23] Speaker 03:
But I'm not reviewing that on a de novo standard.

[00:06:25] Speaker 03:
I'm determining whether the board was within its authority to reject this as conclusory.

[00:06:30] Speaker 03:
And I think that it seems like there's no abuse of discretion there.

[00:06:34] Speaker 03:
Or if you want to term it as a substantial evidence review, that there's not a lack of substantial evidence.

[00:06:40] Speaker 02:
This court has set up a legal standard for analyzing undisputed evidence on this issue of whether a patentee's own products are covered.

[00:06:50] Speaker 02:
They say that when the patentee has presented undisputed evidence that its product is the invention disclosed in the challenge claims, it is error for the board to find to the contrary without further explanation.

[00:07:02] Speaker 01:
But can we go so far as to say it doesn't matter how slim that undisputed evidence is?

[00:07:08] Speaker 02:
It makes sense in this case.

[00:07:09] Speaker 02:
It's not just the evidence itself, but there is other indicia of reliability associated with this expert's testimony.

[00:07:16] Speaker 02:
He didn't just make a blanket statement that says Polaris' products are covered by the patent.

[00:07:21] Speaker 03:
He didn't go much further.

[00:07:22] Speaker 02:
He called out specific claims, and he acknowledged that other claims weren't covered.

[00:07:28] Speaker 03:
No, I get all that, but I know the case you're citing too, and we can read it ourselves and determine, but I don't think it changed any evidentiary standards.

[00:07:37] Speaker 03:
I mean, I think it still means the board can reject expert evidence as conclusory if it wants to, and that's what it did here.

[00:07:45] Speaker 02:
Ultimately, though, again, just digging further into PPC, when it talks about further explanation, it's just not putting a label on it like that.

[00:07:52] Speaker 02:
It's saying what products, you know, what's missing in the case?

[00:07:57] Speaker 02:
They had, again, ARCTICAD could have come forward and identified something, said, well, look, look for this feature, look for that feature.

[00:08:04] Speaker 02:
The other thing that the board overlooked here is that there is a lot of record testimony showing the details of these products.

[00:08:14] Speaker 00:
We put that in our reply brief.

[00:08:16] Speaker 00:
Mr. Vandenberg, what about the board's statement that there was no nexus between the commercial success and the claims?

[00:08:24] Speaker 00:
Does nexus have anything to do with this if the claim covers the vehicle?

[00:08:32] Speaker 00:
Does Nexus have anything to do with this?

[00:08:34] Speaker 02:
Nexus is a critical issue here.

[00:08:36] Speaker 02:
But this is where our first error, that the board just erred in concluding that we hadn't proved that our products were covered, is critically important.

[00:08:46] Speaker 02:
Because the precedent of this court is clear that once there's a showing the products are covered, there is a presumption of Nexus.

[00:08:56] Speaker 02:
And the shoe goes to the other foot, as this court said in the DeMacco case.

[00:09:01] Speaker 02:
And in this case, Arctic chose not to put any evidence in on the Nexus issue.

[00:09:07] Speaker 02:
They chose not to put any evidence in on whether the product was covered, and they chose not to put any evidence in on the Nexus issue.

[00:09:14] Speaker 00:
Otherwise you're saying there's a presumption of Nexus.

[00:09:15] Speaker 02:
There's a presumption of Nexus.

[00:09:18] Speaker 02:
And then ultimately, when you get to the final issue of is this an obvious invention, this is exactly the sort of case where commercial success should

[00:09:31] Speaker 02:
tip the scales in favor of non-obviousness.

[00:09:34] Speaker 00:
Now, when might Nexus be refuted when the product is covered by the claim?

[00:09:40] Speaker 00:
Would it be refuted if there were evidence that this product simply supplanted a previous one that had similar market share, and therefore it wasn't for success of this product so much as previous ones?

[00:09:55] Speaker 02:
I think there are cases that suggest that that might not even be enough, but they can't

[00:10:00] Speaker 02:
put forth that case here, because again, this was a new type of product.

[00:10:05] Speaker 02:
It did not supplement some old product that went away.

[00:10:09] Speaker 02:
It took share away from other competitors, and we put evidence of that also in the record.

[00:10:14] Speaker 02:
But it wasn't just supplanting a Polaris product.

[00:10:18] Speaker 02:
They would need to show that it was something that Polaris did.

[00:10:21] Speaker 02:
It was all about its advertising or something else, but that just doesn't make sense here as well.

[00:10:25] Speaker 02:
It was the industry that latched onto this as a great invention.

[00:10:31] Speaker 02:
And again, this is a competitive industry.

[00:10:34] Speaker 02:
If this were such an obvious invention, any one of these other competitors would have loved to get that billion dollars plus worth of sales.

[00:10:43] Speaker 02:
And the fact that they didn't come out with it sooner makes this exactly the sort of case where commercial success should tip the scales.

[00:10:56] Speaker 00:
You're into your rebuttal time.

[00:10:57] Speaker 00:
I am into my rebuttal time.

[00:10:59] Speaker 02:
Well, I would like to go back to claims 17 through 19, because the fundamental error that the board made there was in assuming that this subjective preference issue was the same for 17 through 19 as it was for claim one, when it's clearly not.

[00:11:17] Speaker 01:
You refer to this being a packaging concept or an innovation.

[00:11:22] Speaker 01:
I mean, any time we're doing

[00:11:25] Speaker 01:
where we're combining two references, we're packaging things together, right?

[00:11:30] Speaker 01:
So is it just that you have to package more things and so therefore it's a problem?

[00:11:36] Speaker 02:
We are packaging a lot of different things.

[00:11:38] Speaker 02:
Again, many differences relative to the Denny case, but also ultimately you're trying to create a vehicle that has the right balance of features, that is maneuverable, stable, safe, all those things that you're looking for in a vehicle.

[00:11:53] Speaker 02:
to put everything together to try to maximize that, and that's what Paul Ayers did in this case.

[00:11:59] Speaker 03:
But if a person of ordinary skill would have thought to do that, it can be obvious, right?

[00:12:05] Speaker 02:
The mere fact that one skill in the art could have done it, there has to be a motivation to do so.

[00:12:11] Speaker 03:
Right, but don't we have, I mean, I know, I have issues myself with the board's subjective preference language.

[00:12:17] Speaker 03:
It seems a strange way to look at this, but I thought that there was expert testimony

[00:12:23] Speaker 03:
from your friend's side explaining why it would be obvious to put the fuel tank on one side, put the battery on the other side, and the like.

[00:12:33] Speaker 03:
And if that's the case, isn't that substantial evidence for that conclusion?

[00:12:39] Speaker 02:
It isn't in this instance, Your Honor, because they don't dispute that in order to do that, you would have to raise Denny seats.

[00:12:47] Speaker 03:
OK, but that's a different question than the subjective preference stuff.

[00:12:51] Speaker 03:
In order to win that argument, you have to convince us that Denny teaches away, right?

[00:12:56] Speaker 02:
We certainly, a key part of our analysis is teaching away.

[00:12:58] Speaker 03:
If Denny doesn't teach away, if it just suggests this is a preferred embodiment, this is our invention, we think it's better than this alternative, not explicitly don't do this because it doesn't work.

[00:13:11] Speaker 03:
I mean, we all have our standards for teaching away.

[00:13:13] Speaker 03:
But if Denny doesn't teach away, then why isn't your friend's expert testimony enough

[00:13:20] Speaker 03:
on these claims?

[00:13:21] Speaker 02:
Because you're not trading off one benefit for another.

[00:13:25] Speaker 02:
They did their subjective preferences analysis in the context of claim one, where we were trading off one benefit, center of gravity, against a different benefit, four-wheel drive.

[00:13:36] Speaker 02:
But when you get to claim 17 through 19, there's no trading off of A and B. It's two As.

[00:13:42] Speaker 02:
They're basically saying, trade off putting heavy people right at the bottom of the frame for stability purposes,

[00:13:50] Speaker 02:
versus raising those seats so we can put something much lighter under the seat, a gas tank or a battery.

[00:13:58] Speaker 02:
So the whole idea, to the extent subjective preferences, dealt with balancing trade-offs and saying, OK, he teaches away from it, but not that strongly.

[00:14:11] Speaker 02:
It doesn't apply when you get to those things.

[00:14:13] Speaker 00:
Mr. Vandenberg, I think you probably do want to save some time.

[00:14:15] Speaker 02:
Thank you, Your Honor.

[00:14:24] Speaker 00:
Mr. Hericus.

[00:14:25] Speaker 04:
Yes, Your Honor.

[00:14:27] Speaker 04:
Good morning, Your Honors, and may it please the Court.

[00:14:29] Speaker 04:
This case is about a patent that in 2006 claimed as novel a rear-engine vehicle with four-wheel drive.

[00:14:37] Speaker 04:
And there are other claim limitations aside from that core aspect of the invention, like the fuel tank and the battery position.

[00:14:45] Speaker 04:
But this is a field where all of the relevant components in this patent were known.

[00:14:50] Speaker 04:
and the various advantages of locating those components in different positions as those advantages relate to maneuverability or balance of the vehicle were known and in this case supported by substantial evidence.

[00:15:04] Speaker 00:
The argument is that this collection and arrangement of parts created a whole new industry.

[00:15:12] Speaker 04:
Well, I think from a commercial perspective perhaps, but it's not

[00:15:16] Speaker 04:
But it's not something that's novel.

[00:15:18] Speaker 04:
It's a separate vehicle category, but not a novel idea.

[00:15:21] Speaker 04:
It's a company that had to cap it.

[00:15:22] Speaker 00:
You're talking about obviousness, right?

[00:15:24] Speaker 00:
Not novelty.

[00:15:26] Speaker 04:
Yes, Your Honor.

[00:15:28] Speaker 01:
So under your theory, basically, no one could ever come up with a new ATV that could be non-obvious.

[00:15:37] Speaker 04:
Well, I think given these features that we're talking about in this patent and given the evidence about the motivation of where to locate those components,

[00:15:46] Speaker 04:
In this case, that's true.

[00:15:48] Speaker 04:
I'm not saying that there's not an instance in which a new arrangement where there was nothing found in the prior art or no motivation to implement it couldn't result in a non-obvious patent.

[00:16:03] Speaker 01:
Part of my problem, this subjective preferences test, sort of ignores some basic principles like, what are some of the grand factors?

[00:16:12] Speaker 01:
They never really did analyze exactly

[00:16:14] Speaker 01:
what the prior art showed and what the differences are between the prior art and this claimed invention.

[00:16:20] Speaker 01:
Instead they just said, well, you would have just stuck all this stuff in there and it doesn't matter that you would have not been accomplishing a lot of the things that the patent was trying to accomplish.

[00:16:31] Speaker 01:
That Denny was trying to accomplish?

[00:16:33] Speaker 01:
Yes, or that ultimately the patent was trying to accomplish.

[00:16:36] Speaker 01:
That you could readjust all of these things and just change the whole dynamic.

[00:16:43] Speaker 04:
I don't think the board was saying that you would change the whole dynamic.

[00:16:46] Speaker 04:
I think the board was looking at the motivations to implement these different features and that they were found in Furuhashi, these other components, the drive shaft, the gas tank, and the battery.

[00:16:59] Speaker 04:
and that there would have been known reasons to implement those in Danny's frame to get the benefits of balance and maneuverability that would come from it.

[00:17:06] Speaker 03:
But they didn't tell us that.

[00:17:07] Speaker 03:
They just used this weird subjective preferences language, which sounds to me like they're almost calling it a design choice.

[00:17:15] Speaker 03:
But these can't be design choices because placing these different components in different parts have functional

[00:17:22] Speaker 03:
results.

[00:17:23] Speaker 03:
You agree with that.

[00:17:23] Speaker 03:
It's not just a design choice to put the fuel and the battery under the seat versus behind the seat or other places.

[00:17:30] Speaker 04:
Yeah, I agree, Your Honor.

[00:17:32] Speaker 04:
It's not just a design choice.

[00:17:33] Speaker 04:
And I don't think, a couple of things, I don't think the board rested on its design choice language.

[00:17:39] Speaker 03:
In the board's opinion, specifically appendix... But they didn't, at least with regard to 17 through 19, they didn't explain why

[00:17:48] Speaker 03:
it would be obvious to put the battery and the fuel under the seats, did they?

[00:17:54] Speaker 04:
I think they did, Your Honor.

[00:17:57] Speaker 04:
With respect to the fuel tank, the board looked at the evidence cited by our expert, and our expert said that there are advantages to locating heavier components towards the center of the vehicle, towards the center of gravity.

[00:18:11] Speaker 04:
One of those locations is under the seat.

[00:18:14] Speaker 04:
Our expert, Dr. Davis, submitted evidence on that point.

[00:18:18] Speaker 04:
That's an appendix 31.

[00:18:20] Speaker 04:
And the board credited it.

[00:18:23] Speaker 04:
The board about the battery.

[00:18:24] Speaker 01:
All the board found was it said a person of skill in the art would have known how to balance preferences and that it could have just ignored Denny's preferences.

[00:18:35] Speaker 04:
Well, I don't think the board is saying that they would have ignored Denny's preferences.

[00:18:39] Speaker 04:
I think what the board is saying is that, and this goes back to appendix 20,

[00:18:46] Speaker 04:
that one of ordinary skill in the art would have had the ability to balance those preferences.

[00:18:52] Speaker 01:
And they make a specific- It says so they could decide they want to ignore Denny's preferences.

[00:18:57] Speaker 01:
But that's not the way you're supposed to look at what's in the prior art, right?

[00:19:03] Speaker 01:
You're supposed to see what the prior art teaches.

[00:19:05] Speaker 01:
I think that's right.

[00:19:06] Speaker 01:
That's what you can pick and choose out of it.

[00:19:08] Speaker 04:
I think that's right.

[00:19:09] Speaker 04:
But I don't think that Denny's preferences are a teaching that's incompatible with the combination

[00:19:16] Speaker 01:
Denny suggests... Well, the board specifically said you can create this combination even though it is inconsistent with Denny's preferences.

[00:19:28] Speaker 01:
Well, I think what the board says... And they said even though it would outweigh Denny's preferences.

[00:19:33] Speaker 01:
I think they're saying that the... They used the word outweigh the benefits of Denny's.

[00:19:38] Speaker 04:
I think what the board is saying, although perhaps inartfully at times, is

[00:19:42] Speaker 04:
that a person of ordinary skill could consider Danny's preferences and find, as Your Honor said, that they do not outweigh the benefits of modifying Danny to include Furuhashi's teachings.

[00:19:55] Speaker 03:
And I think... Am I incorrect?

[00:19:58] Speaker 03:
Furuhashi doesn't have the battery under the seat, does it?

[00:20:02] Speaker 03:
It only has the fuel tank.

[00:20:04] Speaker 03:
Furuhashi has... Nobody has the battery under the seat.

[00:20:08] Speaker 04:
That's correct, Your Honor.

[00:20:09] Speaker 04:
Furuhashi's teaching is a fuel tank under a single-seat vehicle, the drive shaft to the right, and the battery to the right of that.

[00:20:18] Speaker 04:
And our expert's testimony was that one of ordinary skill would be motivated to implement that single-seat configuration in a two-seat configuration to get the balance.

[00:20:26] Speaker 03:
Well, your expert says that, but the board didn't rely on your expert for that point or didn't explain why your expert was correct.

[00:20:34] Speaker 03:
The problem I'm having here is we have a very limited number of components that can be combined in a bunch of different ways and if we accept the board's reasoning it seems like in those cases where there's limited components and limited combinations they're all obvious even if nobody ever thought of it before and the board doesn't give an explanation for why one would have come up with that particular combination.

[00:21:00] Speaker 04:
Well, so I think a lot of this goes back to the issues that were disputed before the board.

[00:21:05] Speaker 04:
And Claim 19 in particular, which I think where your honors question is focused to, which really wraps in the battery and the fuel tank with the drive shaft running between those components, the dispute before the board was very limited.

[00:21:20] Speaker 04:
And as I mentioned, Art Decat's expert introduced evidence as to why you would have implemented these features in the way that Furuhashi teaches.

[00:21:30] Speaker 04:
The only dispute from Polaris that Polaris presented to the board, and this is at Appendix 336 in their response, the only disputed issue was that this would have been contrary to Denny's teachings.

[00:21:43] Speaker 04:
So there wasn't a dispute about the benefits of this location or that one of ordinary skill would have known of those benefits.

[00:21:50] Speaker 04:
The only dispute was that it would have been contrary to Denny's teaching.

[00:21:52] Speaker 01:
But it was more than just the center of gravity teaching.

[00:21:55] Speaker 01:
In other words, there was multiple things that Denny was attempting to accomplish, all of which would have been undone.

[00:22:01] Speaker 04:
I don't think they would have been undone, Your Honor.

[00:22:07] Speaker 04:
What Polaris focuses on is raising the center of gravity.

[00:22:11] Speaker 04:
Denny says you want a very low center of gravity.

[00:22:13] Speaker 04:
He says it's an attractive feature.

[00:22:15] Speaker 01:
But there's also the distribution of the weight.

[00:22:18] Speaker 04:
There is the longitudinal distribution of weight.

[00:22:21] Speaker 04:
And I think that argument goes to claim 34, where Denny wants, essentially, longitudinally, a short wheelbase.

[00:22:29] Speaker 04:
But I don't think they're raising that argument in the context of raising the seats.

[00:22:33] Speaker 04:
And that's not something, raising the seats would not impact the wheelbase of Denny's vehicle.

[00:22:38] Speaker 01:
So where do you see an actual analysis, as the Supreme Court requires under KSR,

[00:22:47] Speaker 01:
veiled out clearly the motivation to combine all of these prior art elements.

[00:22:52] Speaker 04:
I think where the board lays that out most robustly is with respect to its analysis of claim one.

[00:23:01] Speaker 04:
And it addresses the motivation to implement this four-wheel drive, and it addresses the argument that Denny teaches away from that.

[00:23:10] Speaker 04:
And ultimately, unclaimed 20 reaches the conclusion that one of ordinary skill

[00:23:14] Speaker 04:
would weigh the preferences and find, would have had the ability to balance those preferences and implement Furuhashi's teachings.

[00:23:23] Speaker 03:
And so you don't have anything specific on 17 through 19?

[00:23:26] Speaker 04:
Well, what I think the board does then is because the issue before the board on 17 through 19 really, really was the same as it was for claim one is that, and that was what would it... Which is adding in more components.

[00:23:39] Speaker 04:
They're adding other components and the board had evidence that there are advantages of those components

[00:23:44] Speaker 04:
the board cited to the contrary evidence from Polaris's expert and found it not credible.

[00:23:51] Speaker 04:
But really, the core analysis, I think, is the same.

[00:23:54] Speaker 04:
And you see the board referencing back to their more robust analysis on claim one when finding claims 17 through 19 obvious.

[00:24:05] Speaker 01:
What about commercial success?

[00:24:08] Speaker 01:
The problem is you never disputed commercial success, right?

[00:24:15] Speaker 04:
I don't think that's quite right, Your Honor.

[00:24:18] Speaker 04:
We did not introduce evidence to challenge their conclusory assertion about embodying the... But you never disputed it at all.

[00:24:30] Speaker 04:
No, that's not true.

[00:24:30] Speaker 04:
We did.

[00:24:31] Speaker 04:
We disputed that there was a nexus.

[00:24:33] Speaker 04:
Did you dispute that it had embodied the invention?

[00:24:36] Speaker 04:
We disputed that they had introduced adequate proof to meet their burden of production.

[00:24:42] Speaker 01:
is not the only thing that the board should look at.

[00:24:45] Speaker 01:
Under the APA, they're supposed to look at the entirety of the record as a whole.

[00:24:49] Speaker 01:
And there was a lot of evidence with respect to how these elements fit into the practicing device, correct?

[00:25:01] Speaker 04:
There was commercial success evidence showing the vehicle itself, and the board could look at

[00:25:08] Speaker 04:
that and see where the engine is.

[00:25:09] Speaker 01:
And they said it was pretty easy to figure out where all these parts are.

[00:25:12] Speaker 01:
I mean, if you look at the rest of their argument, which is anybody could have put all this stuff together, then how could the board say that they can't look and see whether or not this expert testimony was correct, regardless of how conclusory it was?

[00:25:25] Speaker 04:
Because I think they have to do that.

[00:25:27] Speaker 04:
Polaris has to introduce more than mere conclusions here from their expert.

[00:25:31] Speaker 01:
Why, if it's that easy?

[00:25:32] Speaker 01:
If the technology is as easy as the board said it was.

[00:25:37] Speaker 01:
Why isn't that enough?

[00:25:39] Speaker 04:
Well, I think because it's essentially asking the board to call in the entire record for this rather than having... Wait, the board can have it both ways?

[00:25:47] Speaker 01:
They can say we can easily put all this stuff together and decide that it's just design preferences, but when you've got an expert that ties each element to each claim that we can't figure that out?

[00:26:00] Speaker 04:
Well, I don't think the expert was tying each element to each claim.

[00:26:04] Speaker 04:
And it goes not just to

[00:26:07] Speaker 04:
the environment issue, but also to the nexus issue.

[00:26:10] Speaker 04:
If you recall, the board found that there was no nexus here.

[00:26:15] Speaker 01:
But the board found there was no nexus after saying we refused to presume a nexus.

[00:26:22] Speaker 04:
Well, and I think that in the presumption of nexus analysis, there's a threshold evidentiary question that there needs to be evidence as to how the product maps up to the claims, if at all.

[00:26:35] Speaker 04:
in order for the board to assess whether it's reasonably commensurate in scope with the claims.

[00:26:40] Speaker 04:
And that evidence just wasn't in the record for the board to be able to conduct that analysis.

[00:26:45] Speaker 01:
It's only a preponderance of the evidence standard, correct?

[00:26:48] Speaker 01:
You've got one expert saying it does, and you've got all this other evidence about how the system works, and you put in zero evidence.

[00:26:58] Speaker 01:
Where's the preponderance?

[00:26:59] Speaker 04:
Well, I don't think that there's not a preponderance, because as the board said, there were simply conclusory statements and no analysis whatsoever.

[00:27:06] Speaker 04:
And I think the board was within its discretion here to find that there wasn't substantial evidence to make a finding that Polaris had met its burden of production.

[00:27:19] Speaker 04:
I'd like, Your Honors, if I could move to the cross appeal.

[00:27:23] Speaker 04:
Go ahead.

[00:27:25] Speaker 04:
I think at this point in the briefing, all parties are in agreement that the board's construction was too narrow.

[00:27:34] Speaker 04:
The board required that the driveshaft extend the entire distance between the transmission and the axle assembly.

[00:27:41] Speaker 04:
And under either our construction or what Polaris appears to be now offering, there are... Even if we agree with you on that, how does that help you?

[00:27:49] Speaker 01:
Because there's another limitation that you don't even address.

[00:27:52] Speaker 04:
And what is that, Your Honor?

[00:27:53] Speaker 01:
That the board found that was not satisfied.

[00:27:58] Speaker 01:
Let me go back and pull it out for you.

[00:28:05] Speaker 01:
So the board found that the different limitation that's not at issue on appeal was not satisfied.

[00:28:15] Speaker 01:
So that they agreed that the shaft structure that transmits torque together with connecting hardware excludes

[00:28:22] Speaker 01:
interactable differentials.

[00:28:24] Speaker 01:
The board rejected that construction and instead construed the term differently.

[00:28:29] Speaker 04:
I believe Your Honor is referencing the construction of the driveshaft term.

[00:28:33] Speaker 04:
Yeah.

[00:28:34] Speaker 04:
Even if the board's finding on the driveshaft term is upheld, under our construction, there is still a long straight shaft that would fall within the court's construction of driveshaft that would meet the definition of extending between.

[00:28:51] Speaker 04:
So even if the driveshaft construction is upheld, with our construction... But you would have to agree, though, that if that construction is upheld, the driveshaft is upheld, then there's a limitation that's not being practiced.

[00:29:07] Speaker 04:
No, that's not true, Your Honor.

[00:29:08] Speaker 04:
Because there does remain a driveshaft in Hickey's vehicle that is a solid piece that is a driveshaft under the court's construction.

[00:29:21] Speaker 04:
I think what the court was finding, or the board was finding that the drive shaft doesn't extend all the way because there are additional pieces other than that middle shaft.

[00:29:31] Speaker 04:
Other than that middle shaft.

[00:29:36] Speaker 00:
All right.

[00:29:36] Speaker 00:
Your time has expired.

[00:29:40] Speaker 00:
We will give you a minute for a cross appeal if Cross Appellee discusses that issue that you have

[00:29:48] Speaker 00:
to give you the opportunity to rebut.

[00:29:52] Speaker 02:
Thank you, Your Honor.

[00:29:54] Speaker 00:
Mr. Vandenberg.

[00:29:55] Speaker 02:
Your Honor, you're putting me in a spot there.

[00:29:58] Speaker 02:
I do want to talk just briefly back to Judge Hughes' question about... I'm going to ask you about 17 to 19, if you can.

[00:30:04] Speaker 03:
Okay, please.

[00:30:05] Speaker 03:
And so here are the two issues.

[00:30:07] Speaker 03:
Let me just start with this.

[00:30:09] Speaker 03:
Assume I disagree with you that Denny teaches away, and then place your response in

[00:30:17] Speaker 03:
in response to your friend's suggestion that the board was merely carrying over the theory it had for claim one, and assume I agree with the board on claim one.

[00:30:29] Speaker 03:
Given all that, and if we find that the board has found for claim one that a person with ordinary skill can make all these trade-offs for weight, function, and the like for claim one, and I affirm that, why can't I affirm that for claim 17 and 19?

[00:30:44] Speaker 02:
Two reasons, Your Honor.

[00:30:45] Speaker 02:
One is because ultimately their analysis of Claim 1 didn't require raising the seats.

[00:30:52] Speaker 02:
It didn't require any balancing.

[00:30:54] Speaker 02:
They ultimately said you could put the front driveshaft into Denny without having to raise the seats.

[00:30:59] Speaker 02:
So there was no trade-off analysis for Claim 1.

[00:31:02] Speaker 02:
There clearly needs to be one for Claim 17 through 19 because nobody's saying that you don't have to raise the Denny seats in order to put these elements in.

[00:31:12] Speaker 02:
And then my second point is, and I believe I tried to say this before, you're not trading off benefits at that point.

[00:31:19] Speaker 02:
What is the motivation?

[00:31:21] Speaker 02:
Ultimately there has to be a motivation.

[00:31:23] Speaker 02:
Their expert merely gave a motivation to put a gas tank or a battery under a seat.

[00:31:28] Speaker 02:
He didn't say there was a motivation.

[00:31:29] Speaker 02:
to lift a seat up, to lift 400 pounds of passengers.

[00:31:33] Speaker 03:
So you think that even if the board had done the analysis and had relied on their expert, it would still lack substantial evidence?

[00:31:40] Speaker 02:
Indeed.

[00:31:41] Speaker 02:
And that's why we believe you shouldn't just vacate on that issue because they didn't do the analysis.

[00:31:46] Speaker 02:
You actually should reverse.

[00:31:49] Speaker 02:
Briefly on the issue of... I'll give you a minute.

[00:31:53] Speaker 02:
Oh, thank you, Your Honor.

[00:31:56] Speaker 02:
Did the board abuse its discretion in finding that our expert's declaration was conclusory?

[00:32:01] Speaker 02:
In addition to the PPC broadband case we cite, we also cite a PTAB case, the Intraplex Technologies case.

[00:32:08] Speaker 02:
And certainly, we dug into the briefs in that case and showed to this court that there was no more evidence in that case than there was here.

[00:32:18] Speaker 02:
And the board there simply said, yeah, that's good enough.

[00:32:22] Speaker 02:
One way that an agency can abuse its discretion is to reach different

[00:32:26] Speaker 02:
conclusions in different cases without a basis for distinguishing between the two.

[00:32:31] Speaker 02:
Here we again have the simplest of technology in terms of, you know, it's mechanical, you can look at it, all you need to do is hold it in front of you and you can see where the elements are.

[00:32:42] Speaker 02:
There's no basis to distinguish the Interplex case.

[00:32:45] Speaker 00:
Thank you very much.