[00:00:04] Speaker 03:
We have four argued cases this morning.

[00:00:07] Speaker 03:
The first one is number 16-1773, Richmond versus Colvin Cable, LSC.

[00:00:15] Speaker 03:
And Benavides, is that how you pronounce that?

[00:00:22] Speaker 00:
Yes, Your Honor.

[00:00:24] Speaker 03:
Okay, you're first.

[00:00:25] Speaker 03:
Oh, I'm sorry, you guys decided to change the order.

[00:00:29] Speaker 03:
Mr. Shields.

[00:00:30] Speaker 03:
Yes, Your Honor.

[00:00:32] Speaker 03:
Yeah.

[00:00:32] Speaker 03:
And we only want to hear rebuttal argument from one of you.

[00:00:36] Speaker 05:
I'm sorry?

[00:00:38] Speaker 03:
We only want rebuttal argument from one of you.

[00:00:40] Speaker 03:
Yes, we're aware of that.

[00:00:42] Speaker 03:
Okay, thank you.

[00:00:43] Speaker 03:
Go ahead, Mr. Shields.

[00:00:46] Speaker 05:
May it please the Court, I'm Theodore Shields of Shields Law firm, PC, Attorneys for Patent Owner and Appellant

[00:00:52] Speaker 05:
Simon Richmond.

[00:00:54] Speaker 05:
I will address the surround frame claims one and four.

[00:00:58] Speaker 05:
I'm dividing my time with my co-counsel, Marcus Benavides, who will address the Winnipeg claims.

[00:01:04] Speaker 05:
Your Honours, in IPRs, claims are given their broadest reasonable interpretation.

[00:01:10] Speaker 05:
Here the board read the specifications may surround language, may surround the lens in three dimensions phrase,

[00:01:18] Speaker 05:
as creating a, quote, possibility, unquote, of a three-dimensional surround frame.

[00:01:23] Speaker 05:
The board construed the surround frame based upon this as being any shape in three-dimensional space with no limit.

[00:01:33] Speaker 05:
But, Your Honors, even the broadest reasonable interpretation is not the problem.

[00:01:39] Speaker 04:
Let me ask you a question.

[00:01:40] Speaker 04:
Yes.

[00:01:41] Speaker 04:
You argue in the blue brief that I'm coined from page 56

[00:01:46] Speaker 04:
since glare is an abhorred lighting condition.

[00:01:49] Speaker 04:
But previously in the blue brief, at page five, you say lighting designers abhor a lighting condition called glare.

[00:02:01] Speaker 04:
And I'm quoting from J4233, from my work experience in constructing prototype lighting fixtures,

[00:02:16] Speaker 04:
glare is an important consideration because lighting designers abhor it.

[00:02:21] Speaker 04:
With that in mind, can you tell me if the wind chime pendulum disclosed in 370 is a lighting fixture?

[00:02:29] Speaker 05:
It is a lighting fixture, your honor.

[00:02:30] Speaker 04:
What evidence in the record supports that?

[00:02:34] Speaker 05:
That it's a lighting fixture?

[00:02:35] Speaker 05:
Yeah.

[00:02:37] Speaker 05:
It has an LED and batteries and a solar panel to provide power to illuminate the pendulum.

[00:02:46] Speaker 05:
But if I may, Your Honor, I'm really addressing the surround frame claims, which is a separate set of claims.

[00:02:51] Speaker 04:
Okay.

[00:02:51] Speaker 05:
And my co-counsel will address wind chime claims.

[00:02:55] Speaker 05:
All right.

[00:02:55] Speaker 05:
If you would, if you prefer, I could have him come up now and he could do a better job.

[00:03:02] Speaker 04:
I'll ask that.

[00:03:03] Speaker 04:
All right.

[00:03:03] Speaker 04:
Thank you.

[00:03:04] Speaker 04:
Let me ask you this.

[00:03:05] Speaker 04:
Yes.

[00:03:06] Speaker 04:
Since you're doing surround frame, in the red brief, appellee poses the question.

[00:03:13] Speaker 04:
Did Richmond waive his claim construction arguments for surround frame by proposing for the first time on appeal a 13-word VRI interpretation that is significantly different in scope from the 92-word broadest reasonable interpretation he argued before the board?

[00:03:32] Speaker 04:
Explain to me why you didn't waive that argument.

[00:03:34] Speaker 04:
Let me say this.

[00:03:36] Speaker 04:
To me, it appears you're not presenting an argument consistent with the one raised in front of PTAB.

[00:03:41] Speaker 04:
You have since subsequently changed the scope of what was argued.

[00:03:47] Speaker 05:
Okay, if I may, Your Honor, we did present the same concept below.

[00:03:52] Speaker 04:
Yeah, you used that word concept.

[00:03:53] Speaker 05:
Yes, and that is in this Court's case law, that where the same concept is presented below and there's no practicable difference, that there is no waiver.

[00:04:04] Speaker 05:
And here, what we presented below, it is a brief... There's a substantial difference.

[00:04:09] Speaker 05:
The substantial difference, Your Honor, the difference is not case dispositive.

[00:04:17] Speaker 05:
The other differences were subsidiary points relating to how thick a surround frame could be or its maximum limits of thickness, which is supported by the extrinsic record, and also the subsidiary points related to how far partially would extend.

[00:04:34] Speaker 05:
Also those and those issues are separable from the one being argued here.

[00:04:39] Speaker 05:
The one being argued here is the one, the central core, which is the meaning of surround frame.

[00:04:46] Speaker 05:
It is unnecessary to decide for purposes of this appeal the thickness or the extent of the partiality.

[00:04:54] Speaker 05:
And so Your Honor respectfully submit that we did not waive the central concept, which was presented separately to the court below.

[00:05:03] Speaker 04:
Three different claim constructions were offered by Richmond.

[00:05:07] Speaker 04:
And they had substantive differences among them.

[00:05:11] Speaker 04:
And you've got all three of them subsumed into this in 13 words.

[00:05:16] Speaker 05:
Your Honor, the only thing that's in the 13 words relates to the primarily interplaying character of the surround frame.

[00:05:23] Speaker 05:
And that is the only character that is necessary to decide the heart appeal.

[00:05:28] Speaker 05:
And so that's what we argued.

[00:05:30] Speaker 05:
Everything else that was in our claim construction below was well supported by at least the extrinsic record.

[00:05:36] Speaker 05:
but it's unnecessary to decide those points and that's why we're not pressing them here.

[00:05:40] Speaker 05:
But undeniably, the primarily in a playing character was what we argued below and it was the central part of our argument and was separately addressed and argued in that way.

[00:05:53] Speaker 02:
I find your argument that

[00:05:56] Speaker 02:
that you're basically, you have the same concept in place.

[00:06:02] Speaker 02:
And I'm kind of troubled by that.

[00:06:05] Speaker 02:
I mean, we're looking at a claim construction.

[00:06:09] Speaker 02:
So we're looking at the preciseness of language, of words, not general concepts.

[00:06:16] Speaker 02:
And when you're arguing below a particular words, set of words,

[00:06:22] Speaker 02:
and you come to us and it's a different argument because there's different words added to it and you say, well, Your Honor, it's the same concept.

[00:06:31] Speaker 02:
I don't think our case law supports that.

[00:06:34] Speaker 05:
Your Honor, we are arguing the same interpretation.

[00:06:36] Speaker 05:
We are arguing it with fewer words and fewer limitations.

[00:06:41] Speaker 05:
If anything, our construction now is broader than what we presented below because our construction below had additional limitations that we're not currently arguing.

[00:06:51] Speaker 05:
Just because we're not currently arguing.

[00:06:53] Speaker 02:
So you are arguing a different claim construction.

[00:06:55] Speaker 05:
We are arguing only a portion of our claim construction argument below.

[00:07:01] Speaker 02:
That is, we're arguing a broader... See, the problem is if you change claim construction arguments and you're presenting something different to us, then that means that the board below didn't hear that argument and it's not part of its decision.

[00:07:17] Speaker 02:
That presents the waiver issue.

[00:07:21] Speaker 05:
I understand that presents a waiver issue, Your Honor.

[00:07:23] Speaker 05:
It's an issue, but I don't believe that it's properly, well, I don't believe it properly applies here because what we presented was, in essence, if you will, like a dependent, like a main claim and then dependent limitations.

[00:07:40] Speaker 05:
We're only arguing the main claim, the main claim portion of the construction below.

[00:07:47] Speaker 05:
And that is the primarily in a plain character.

[00:07:50] Speaker 05:
It's the primarily, what we argued below was that it had a primarily in a plane character and a certain limited reasonable thickness and a certain extent regarding the language partially.

[00:08:08] Speaker 05:
So we were construing a different term partially in that sense.

[00:08:12] Speaker 05:
And so as far as surround frame, we are presenting exactly the same construction, the primarily in a plane

[00:08:20] Speaker 05:
surround frame.

[00:08:22] Speaker 05:
That is what we presented below and that's what we're presenting here.

[00:08:25] Speaker 05:
And if I may, what's here, what the board did is the board read the specifications may surround the lens in three dimensions as creating a possibility of a three-dimensional surround frame.

[00:08:49] Speaker 05:
but the broadest possible interpretation is not the standard.

[00:08:52] Speaker 05:
Here the board's VRI would encompass enveloping three-dimensional hyperbolic spherical shells, and it's unreasonable.

[00:09:01] Speaker 05:
It's unreasonable because without rebuttal, it causes the prior art of record that was considered by the exam, Richmond 101 and ALSOP, and it's expressly found that that prior art did not teach all the elements.

[00:09:14] Speaker 05:
The claim construction adopted by the board, in fact, causes the claim

[00:09:19] Speaker 05:
Claim one and claim four to read element for element on at least those claims.

[00:09:24] Speaker 05:
This violates the 35 USC 282 presumption of validity and decades of this court's precedent, holding that where possible, claims should be construed to uphold validity.

[00:09:37] Speaker 05:
That does not occur with Richmond's proposed construction.

[00:09:40] Speaker 05:
In fact, it didn't occur with the proposed construction with additional limitations relating to thickness and impartiality below

[00:09:48] Speaker 05:
and it does not occur with the core of the construction.

[00:09:53] Speaker 02:
Councilor, how does your proposed construction read to the specification?

[00:10:00] Speaker 02:
You're looking for something that's partially, that's basically one dimensionally flat, yet the specification says it may surround the lens portion in two or three dimensions.

[00:10:13] Speaker 02:
Yes, Your Honor.

[00:10:15] Speaker 02:
If it's three-dimensional, isn't that inconsistent with your argument that it must be just flat, one-dimensional?

[00:10:22] Speaker 05:
Your Honor, we're not saying that it must be flat.

[00:10:24] Speaker 05:
What we're saying is that it must be construed in light of the specification and the drawings, and the drawings show at best a contour.

[00:10:34] Speaker 05:
And that was discussed by Dr. Shackel and also our experts, and the degree of contour

[00:10:42] Speaker 05:
is some degree of three-dimensional aspect.

[00:10:46] Speaker 05:
And perhaps that's what was being discussed in that section.

[00:10:50] Speaker 05:
But the fact is that the examiner clearly did not understand the claims to encompass a sphere or a hyperbolic shell.

[00:11:00] Speaker 03:
It's not what the examiner understood.

[00:11:02] Speaker 03:
It's what an applicant says.

[00:11:07] Speaker 05:
Your Honor, it's not just the prosecution history

[00:11:10] Speaker 05:
if I may, including the prior art, forms part of the intrinsic record.

[00:11:14] Speaker 05:
And the prosecution, the prior art of record, clearly shows that under the construction adopted by the board, there is anticipation of claim one and also claim four.

[00:11:26] Speaker 05:
And that, I submit, Your Honor, is not a reasonable construction.

[00:11:29] Speaker 03:
That's not the way claim construction works.

[00:11:32] Speaker 03:
Under that theory, you'd never have an invalid patent because you'd always construe it to avoid invalidity.

[00:11:37] Speaker 03:
That's not the rule.

[00:11:39] Speaker 05:
Your Honor, that is not a per se rule, but we are talking about evidence that we are talking about prior art of record that the examiner considered and expressly found that as he understood the broadest reasonable interpretation would not be encompassed by the prior art of record.

[00:11:57] Speaker 05:
And where this court, while it's not a per se rule, where this court is presented with two possible constructions, and I submit that Richmond's was a possible construction,

[00:12:07] Speaker 05:
It met claim construction requirements.

[00:12:09] Speaker 05:
It read on the preferred embodiment.

[00:12:12] Speaker 05:
And otherwise was a perfectly permissible construction that what they chose was a construction that read directly on the prior art of record.

[00:12:23] Speaker 05:
And that, I submit, is not a reasonable construction and violates the presumption that the patent was valid when it was issued.

[00:12:35] Speaker 05:
And I'd like to reserve the rest of my time.

[00:12:37] Speaker 05:
Oh, if I may, I'll say just a few words on Claim Four.

[00:12:42] Speaker 05:
Claim Four adds the words, encircles the lens.

[00:12:45] Speaker 03:
Okay, you're out of time.

[00:12:49] Speaker 03:
There was clearly no way.

[00:12:50] Speaker 05:
You're out of time, Mr. Schoenze.

[00:12:51] Speaker 05:
Okay, I'm sorry.

[00:13:09] Speaker 03:
Mr. Benavides.

[00:13:32] Speaker 00:
Your Honor, I'd like to provide two minutes of my time to Mr. Shields for rebuttal.

[00:13:39] Speaker 00:
And I'll take three.

[00:13:43] Speaker 00:
Your Honor, Judge Walsh, thank you for having me here, Mark Spinavides.

[00:13:48] Speaker 00:
To your question, I believe you were referring to some of Dr. Shackle's testimony.

[00:13:52] Speaker 00:
Is it a lighting fixture?

[00:13:54] Speaker 00:
And your question was whether the claimed invention was a lighting fixture.

[00:13:57] Speaker 00:
And Mr. Shields indicated that it was.

[00:13:59] Speaker 00:
And yes, it is.

[00:14:00] Speaker 00:
The patent indicates that.

[00:14:02] Speaker 00:
And I believe the question you're asking is whether

[00:14:05] Speaker 00:
Dr. Shackle in referring to glare as pertinent to lighting fixtures, in that testimony, he was being asked about glare in the context of the invention.

[00:14:18] Speaker 00:
Specifically, he said that we were talking about the display effect and how Dr. Ducharme had used that term.

[00:14:27] Speaker 00:
And there is evidence there from Dr. Shackle that he knew what that term was.

[00:14:31] Speaker 00:
And that term implicated glare.

[00:14:34] Speaker 00:
In other words, display effects use glare.

[00:14:37] Speaker 00:
And later on in the questioning, he says, when asked about whether there are ways of calculating glare, he said, not so much calculating, but in taking account in the design of lighting fixtures.

[00:14:48] Speaker 00:
So I believe the testimony of Dr. Shackle should be taken as a positive for the appellant in terms of tying glare as an abhorrent lighting effect to

[00:15:00] Speaker 00:
evidence of non-obviousness, in fact, strong evidence of non-obviousness.

[00:15:05] Speaker 00:
And what we have in the claimed invention, and I think this Court has said it, is that non-obviousness, and I'm quoting from Dupuis, is especially strong where the prior arts teaching undermined the very reason being offered as to why a person of ordinary skill

[00:15:29] Speaker 00:
would have combined the known elements.

[00:15:31] Speaker 00:
We believe that evidence of non-obviousness, glare, being abhorrent and in a big time consideration, that's the words of Dr. Shackle, is evidence that undermines the reason that persons of ordinary skill would have combined the inventions of Grube and Uyen.

[00:15:49] Speaker 00:
And so, and we can look through the evidence that it's not consistent with the

[00:15:58] Speaker 00:
with the evidence at issue.

[00:16:02] Speaker 00:
Lighting, for example, we have that Dr. Shackler said that glare is a big-time consideration.

[00:16:09] Speaker 00:
It's an important consideration with lighting designers that pour it.

[00:16:11] Speaker 00:
Very important to make sure they don't experience glare.

[00:16:15] Speaker 00:
And one thing to note is that the decision of the board has no discussion of this.

[00:16:20] Speaker 00:
There's one discussion of glare, page 16.

[00:16:24] Speaker 00:
It talks about the relevance.

[00:16:25] Speaker 00:
It actually affirms the relevance of glare

[00:16:28] Speaker 00:
And it also undermines the evidence that Dr. Shackle said that minimized glare.

[00:16:34] Speaker 04:
So how is the wind chime pendulum a lighting fixture, as opposed to that from which it hangs?

[00:16:44] Speaker 00:
Well, we can also draw a comparison also to the kube also, which involves a lighting fixture.

[00:16:50] Speaker 00:
It calls it a solar fixture.

[00:16:52] Speaker 00:
And one of our arguments there is that you wouldn't have combined the solar fixture.

[00:16:56] Speaker 00:
So that's a term.

[00:16:57] Speaker 00:
That's a term of art.

[00:16:58] Speaker 00:
that applies to wind chimes as well.

[00:17:00] Speaker 00:
So there's a connection there.

[00:17:02] Speaker 00:
But in the patent itself, it describes a wind chime, as we all know, but that has a solar fixture with a light put into the pendulum assembly, such that the pendulum assembly emits light.

[00:17:16] Speaker 00:
So in that sense, it is a fixture.

[00:17:18] Speaker 00:
And I'm going to cede the remaining of my time for rebuttal.

[00:17:25] Speaker 00:
Thank you.

[00:17:28] Speaker 04:
Mr. Nelson.

[00:17:32] Speaker 04:
You can shed some light on this for us.

[00:17:41] Speaker 01:
Good morning, Your Honors.

[00:17:42] Speaker 01:
Mark C. Nelson for the appellees.

[00:17:46] Speaker 01:
So the claims here are divided into two groups, the surround frame claims and the wind chime claims.

[00:17:50] Speaker 01:
I want to first address the surround frame claims.

[00:17:57] Speaker 01:
As counsel indicated, the dispute here is whether the claim is properly limited to this primarily in a plain structure.

[00:18:06] Speaker 01:
And the intrinsic evidence certainly does not support that.

[00:18:10] Speaker 01:
As some of the court's questioning noted, the intrinsic evidence specifically rebuts that primarily in a plain construction.

[00:18:18] Speaker 01:
You have the specification talking about the surround frame maybe partially encircling the lens.

[00:18:26] Speaker 01:
or maybe partially or fully surrounding the lens in two or three dimensions.

[00:18:32] Speaker 01:
That's very clear evidence from the specification that the surround frame is a three-dimensional structure.

[00:18:39] Speaker 01:
If you look at the claim language, the board looked at the claim language and the surround frame first appears in claim one.

[00:18:46] Speaker 01:
In claim one, the limitations on surround frame is it has to be attached to this connecting frame support structure

[00:18:53] Speaker 01:
and it has to receive light, at least be partially lit from below.

[00:18:57] Speaker 01:
Other than that, there isn't any limitation on what a surround frame is or isn't.

[00:19:03] Speaker 01:
The board then looked at dependent claims four and 50, and based on claim differentiation, decided that encircle and surround have different meanings, and that the surround frame of claim one must be broad enough to encompass both.

[00:19:20] Speaker 01:
They looked at claim 49, which talks about the surround frame having different geometric shapes.

[00:19:26] Speaker 01:
It could be an insect, could be a flower, could be other things.

[00:19:29] Speaker 01:
There's no indication based on the claim language that these are limited to two-dimensional structures.

[00:19:35] Speaker 01:
And if you take the specification, Richmond clearly understood how to use the term 2D and 3D.

[00:19:42] Speaker 01:
So if there was any intention in the claims to limit these to two-dimensional structures,

[00:19:47] Speaker 01:
He should have put two-dimensional structures in there.

[00:19:49] Speaker 01:
The specification clearly indicates that he contemplated that, looked at it, and decided, no, that's not what I want.

[00:19:58] Speaker 01:
So then turning to the prosecution history, that also supports the board's construction.

[00:20:06] Speaker 01:
Claim 50 was added by amendment, and it was added to add the phrase, the surround frame partially surrounds the lens.

[00:20:13] Speaker 01:
Doesn't say anything about dimensionality.

[00:20:17] Speaker 01:
But what Richmond said in the context of that amendment was that he was adding it in reference to paragraph 152 of the application, which is the paragraph that describes the, may surround in two or three dimensions.

[00:20:33] Speaker 01:
So the prosecution history also is consistent with everything else here.

[00:20:39] Speaker 01:
So I want to turn, first, counsel mentioned this a little bit.

[00:20:44] Speaker 01:
He makes an argument based on the prosecution history

[00:20:47] Speaker 01:
and this reasons for allowance based on this Alsop and Richmond reference, which we didn't assert in the IPRs as prior art.

[00:20:56] Speaker 01:
And the reasons for allowance here is a generic reason for allowance.

[00:20:59] Speaker 01:
It's we find the claims patentable.

[00:21:01] Speaker 01:
I'm trying to remember the exact language here.

[00:21:05] Speaker 01:
Let's see here.

[00:21:11] Speaker 01:
I can't find it right now, but it's a generic reason for allowance.

[00:21:15] Speaker 01:
It doesn't call out these references at all.

[00:21:18] Speaker 01:
In fact, these references aren't even discussed by the examiner.

[00:21:22] Speaker 01:
They're part of an IDS with 40 plus other references.

[00:21:26] Speaker 01:
And at the board hearing, counsel was asked to try to connect the dots here.

[00:21:31] Speaker 01:
Is there any disclaimer in the prosecution history regarding these references?

[00:21:35] Speaker 01:
Is there any teaching in the prosecution history regarding surround frame that the board could

[00:21:41] Speaker 01:
could grasp onto to look at, you know, it did the patentee limited in some way.

[00:21:46] Speaker 01:
And there's nothing there.

[00:21:48] Speaker 01:
Counsel couldn't connect those dots because there's no dots to be connected.

[00:21:51] Speaker 01:
These references are simply part of an IDS.

[00:21:55] Speaker 01:
And we don't know why the examiner allowed the claims over these references.

[00:22:02] Speaker 01:
It could have been because he didn't think they had a surround frame.

[00:22:04] Speaker 01:
It could have been for any other number of reasons.

[00:22:06] Speaker 01:
There's just nothing in the record.

[00:22:08] Speaker 01:
And there's nothing legally that

[00:22:11] Speaker 01:
Mr. Richmond cites, in the context of this argument, that would say that somehow acquiescing to a generic notice of allowance somehow affects claim construction, as Your Honor noted.

[00:22:25] Speaker 01:
The argument is factually flawed, and it's legally flawed, and it's wrong.

[00:22:31] Speaker 01:
So turning to a couple of the other arguments, really the extrinsic evidence arguments.

[00:22:37] Speaker 02:
Can you address the waiver arguments that you make?

[00:22:41] Speaker 01:
Yes, I can, Your Honor.

[00:22:43] Speaker 01:
So as we pointed out, the original construction here, the first construction was, I don't remember how many words, but that was sort of in the preliminary response.

[00:22:56] Speaker 01:
Then in the actual response, Mr. Richmond set forth a 92-word construction that had a bunch of limitations in it.

[00:23:04] Speaker 01:
relating to what the surround frame is and negative limitations as to what it isn't.

[00:23:11] Speaker 01:
It must surround in at least 270 degrees.

[00:23:14] Speaker 01:
It must not substantially conceal or cover the lens, things like that.

[00:23:20] Speaker 01:
That is the argument that was made, the construction that was presented to the board.

[00:23:25] Speaker 01:
That is the construction we argued through the entire case.

[00:23:30] Speaker 01:
As counsel stated, that construction is narrower than the construction that he is proposing now.

[00:23:37] Speaker 01:
And so my understanding on the law of this issue is you can't change the scope of the claim on appeal.

[00:23:47] Speaker 01:
Here the scope of the claim has changed.

[00:23:50] Speaker 01:
We go from limitations in there that the degree of completeness of the surrounding must be at least 270 degrees, like a door frame.

[00:24:01] Speaker 01:
All that stuff is gone.

[00:24:04] Speaker 01:
And so here, I think this argument has been waived.

[00:24:06] Speaker 01:
If he wanted to present this construction before the board, he should have done so.

[00:24:11] Speaker 01:
And now on appeal, the board didn't pass on this construction at all.

[00:24:17] Speaker 01:
The board passed on the 92-word construction below.

[00:24:20] Speaker 01:
The scope of the claim has changed.

[00:24:23] Speaker 01:
And I think this argument has been waived.

[00:24:26] Speaker 01:
With that, I'll turn maybe briefly to the wind chimes for a minute.

[00:24:31] Speaker 01:
Mr. Richmond makes two arguments with respect to the Windchime claims, both of which were before the board and both of which were passed on by the board.

[00:24:47] Speaker 01:
The main argument here is that there was no motivation to combine this Kubei and the Uyang references.

[00:24:54] Speaker 01:
Not that the references together don't teach the claimed invention, but there was no motivation to combine.

[00:25:00] Speaker 01:
That's an issue of fact.

[00:25:02] Speaker 01:
And here, substantial evidence supports that there was a motivation.

[00:25:07] Speaker 01:
And the arguments that Mr. Richmond make, and we touched on the glare argument just a little while ago.

[00:25:12] Speaker 01:
So that argument kind of comes in two flavors.

[00:25:17] Speaker 01:
Mr. Richmond relies on some statements made by petitioners expert Dr. Shackle, who did say that designers are poor glare and that glare is a big time consideration.

[00:25:28] Speaker 01:
But those statements are made in the abstract, talking about glare in the abstract.

[00:25:34] Speaker 01:
And petitioners thought those statements were prejudicial and actually moved to exclude them at the board level because of that, because they were made in the abstract and they were now trying to be used to argue you shouldn't combine these references.

[00:25:50] Speaker 01:
And the board considered that.

[00:25:52] Speaker 01:
And the board rejected our argument and said, no, we do find these statements relevant.

[00:25:55] Speaker 01:
And the board looked at not only these statements, but the entirety of Mr. Shackle's deposition testimony, which is all in the record.

[00:26:04] Speaker 01:
And the board concluded, no, there is motivation to combine here.

[00:26:09] Speaker 01:
And we think this court should do the same.

[00:26:12] Speaker 01:
There's nothing in the Shackle deposition testimony, in our view, that would

[00:26:20] Speaker 01:
that these references teach away.

[00:26:21] Speaker 01:
And the board noted, maybe one of the big complaints here is that the board didn't write enough about glare.

[00:26:28] Speaker 01:
I mean, I think there's no doubt the board considered it.

[00:26:31] Speaker 01:
It said it did.

[00:26:32] Speaker 01:
It just didn't find it relevant in the scheme of the entirety of the evidence.

[00:26:39] Speaker 01:
Turning to the substantial evidence, well, let me back up for a second here.

[00:26:43] Speaker 01:
So the other flavor of this argument is the illumination effect versus display effect argument.

[00:26:49] Speaker 01:
But as the board found, the Richmond patent itself doesn't use the word glare.

[00:26:54] Speaker 01:
The claims don't use the word glare.

[00:26:56] Speaker 01:
The Kubei reference doesn't use the word glare, to my knowledge, nor does the Uyang reference.

[00:27:01] Speaker 01:
Neither of the references nor the patent uses the terms display effect, illumination effect, or any of this stuff.

[00:27:08] Speaker 01:
The board considered all of that, looked at what the references themselves taught, looked at

[00:27:15] Speaker 01:
10 or 15 pages worth of testimony from Dr. Shackle on motivation to combine that's at A2691 through A2708, and concluded that there is motivation to combine here.

[00:27:28] Speaker 01:
And legally speaking, for references to teach away from one another, like the argument they're making, there actually needs to be more than simply

[00:27:44] Speaker 01:
The quote from one of the cases, a reference must actually discourage a person of ordinary skill in the art, not simply express a general preference for something.

[00:27:55] Speaker 01:
Here, the references don't even do that.

[00:27:57] Speaker 01:
They're totally silent on this glare display effect, illumination effect argument.

[00:28:03] Speaker 01:
And bottom line on this argument, the board considered it.

[00:28:07] Speaker 01:
Substantial evidence supports it.

[00:28:09] Speaker 01:
There's no reason for this court to alter that decision.

[00:28:14] Speaker 01:
The second flavor of the arguments with respect to motivation to combine that's made is that the references wouldn't operate for their intended purposes if you combine them.

[00:28:27] Speaker 01:
And that's relying on a piece of the kube reference that he's reading doesn't teach detachable

[00:28:42] Speaker 01:
doesn't teach detachable chimes, but the Kube reference is very broad in its teaching.

[00:28:50] Speaker 01:
It talks about a wide variety of fixtures.

[00:28:54] Speaker 01:
It talks about that the fixtures can even add circuitry to further indicate a wide variety of effects.

[00:29:01] Speaker 01:
And again, there's no evidence in the record that we can see that talks about the bore that would indicate that these references

[00:29:12] Speaker 01:
wouldn't be combinable.

[00:29:13] Speaker 01:
And again, there's six or seven paragraphs, I believe, of Dr. Shackel's declaration that support that argument.

[00:29:22] Speaker 01:
The last thing that I'll touch on briefly here is counsel mentioned claim four briefly.

[00:29:32] Speaker 01:
So the surround frame issue, if the court affirms that ends the issue with respect to claims one through three and 48 through 50.

[00:29:41] Speaker 01:
There's an additional argument with respect to claim four, and that is that the combination of the Norton and Chen references, even under the board's construction, don't teach claim four.

[00:29:55] Speaker 01:
And that argument is based on claim four is the language where the surround frame must partially encircle the lens.

[00:30:02] Speaker 01:
So this also would be a question of fact as to what the references did or did not teach.

[00:30:07] Speaker 01:
and substantial evidence supports that the references do teach claim for.

[00:30:11] Speaker 01:
Norton, the Norton reference, the figure that's relied on, one of the figures that's relied on is a rose that's a decorative element that then has a lens on the top and the rose at the top circles the lens and then comes down in sort of a tulip-y shape to the bottom.

[00:30:32] Speaker 01:
But the Norton reference discloses a lot more than simply the picture of a rose.

[00:30:37] Speaker 01:
It talks about that this decorative element, which is the surround frame, has broad applicability.

[00:30:45] Speaker 01:
It comprises any shape or configuration, maybe holiday themed, et cetera.

[00:30:50] Speaker 01:
But the internal protective element that this decorative element connects to is universally compatible with it.

[00:30:58] Speaker 01:
Again, indicating that this decorative surround frame can have a variety of shapes.

[00:31:04] Speaker 01:
And the board asked some questions, and it looked at it.

[00:31:09] Speaker 01:
And if you look at the Norton reference, even the rose one, if you look at it from the top, it is partially, well, it's actually fully encircling the lens in cross-section from the top.

[00:31:21] Speaker 01:
And the board also, I think, indicated a statement from counsel in connection with this

[00:31:33] Speaker 01:
with the meaning of surround frame and the construction of it, counsel made a statement, or Judge Grossman made a statement, that how would something that's surrounded in three dimensions not also fully encircle, meaning the surround frame?

[00:31:47] Speaker 01:
And counsel said, well yes, it does fully encircle it.

[00:31:50] Speaker 01:
And granted, that statement was made in the context of Figure 11, but the question that Judge Grossman asked was broader.

[00:31:57] Speaker 01:
And counsel's original answer was broader, and then we got back into Figure 11.

[00:32:02] Speaker 01:
And I think the board also picked up on that.

[00:32:05] Speaker 01:
But bottom line, there was certainly substantial evidence in the record to support the finding of Claim 4.

[00:32:13] Speaker 01:
I think we'll stand on the papers with respect to the rest of the arguments.

[00:32:18] Speaker 01:
We thank the court very much and respectfully ask that the court affirm the board's findings in all regards.

[00:32:23] Speaker 01:
Thank you.

[00:32:24] Speaker 03:
Thank you, Mr. Nelson.

[00:32:26] Speaker 03:
Mr. Shields, I think he has less than two minutes.

[00:32:34] Speaker 05:
Yes, I'll address on the claim four.

[00:32:37] Speaker 05:
The colloquy to council was from the board.

[00:32:42] Speaker 05:
Council, if you surround in two or three dimensions, it seems like you can only encircle in two dimensions then, right?

[00:32:48] Speaker 05:
So encircle would be planer.

[00:32:50] Speaker 05:
In fact, the board and council, or that is Coleman,

[00:32:55] Speaker 05:
agreed that the board had found that encircle implies circular, which is a planar structure by definition.

[00:33:05] Speaker 05:
So as far as claim four goes, the encircling limitation is not met by Norton unless you magically draw a arbitrary plane, cut it through the middle of it somewhere.

[00:33:19] Speaker 05:
But somewhere is from infinite somewheres.

[00:33:23] Speaker 05:
You cannot just decide

[00:33:24] Speaker 05:
I'm going to, I want a circle, so I'll find a circular cross-section.

[00:33:29] Speaker 05:
And in fact, the only circular part of Norton's shell is actually the bottom at the base where it connects to the, where it connects to the post.

[00:33:41] Speaker 05:
And that violates the front illumination from below, Your Honor.