[00:00:00] Speaker 01:
We start with our cases for today.

[00:00:02] Speaker 01:
I'm going to turn over the role of presiding judge to Judge Reina, because I am going to make a motion myself before the court.

[00:00:11] Speaker 01:
Blaine, would you stand up?

[00:00:14] Speaker 01:
I'm going to move the admission of Blaine Larson, who is a member of the bar and is in good standing with the highest court of Texas.

[00:00:22] Speaker 01:
I have knowledge of his credentials, and I'm satisfied that he possesses the necessary qualifications.

[00:00:29] Speaker 01:
So Blaine has been my law clerk for a very long time.

[00:00:32] Speaker 01:
Just still asked me how many months.

[00:00:33] Speaker 01:
I said, I don't know, a lot.

[00:00:35] Speaker 01:
He probably knows the exact number, I'm sure.

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But it's been such a pleasure to have him.

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He has helped me with some really big and important decisions.

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But the best part is he's the only man in chambers.

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The poor guy works with five women, day in and day out.

[00:00:55] Speaker 01:
And that's his daughter, Henley.

[00:00:58] Speaker 01:
But it's OK, because Blaine has a sister, and his wife has all sisters.

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So he's used to being in an all-female environment, especially with his daughter now, Henley.

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And he is just cool and calm.

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And so when I get worked up, he just stays very even keel.

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It's a nice contribution to the chambers.

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In addition to his excellent work as a lawyer, he's just got such a wonderful personality.

[00:01:24] Speaker 01:
I'm really going to miss him, but it's my great joy to move, if my colleagues will vote, but to move his admission to our bar so that we'll get to see him more often.

[00:01:34] Speaker 01:
He'll come back and argue cases.

[00:01:36] Speaker 04:
So we have a motion.

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How do you vote?

[00:01:39] Speaker 06:
I vote in favor of the motion.

[00:01:40] Speaker 06:
I just want to add that I have seen Blaine serve as an excellent law firm, and I have full faith and confidence that he will be an excellent attorney before this court.

[00:01:49] Speaker 04:
And Blaine, I hope you're not headed to no female law firm.

[00:01:54] Speaker 04:
You need a little bit of diversity in there, buddy.

[00:01:58] Speaker 04:
Well, Judge Morton, I think the motion is passed.

[00:02:00] Speaker 01:
All right, great.

[00:02:01] Speaker 01:
Reggie, would you please swear Blaine in?

[00:02:04] Speaker 05:
Please swear in my name.

[00:02:05] Speaker 05:
Do you solemnly swear or affirm that you will support yourself as an attorney and counsel of this Court of Blaine and the Court of Law, and that you will support the Constitution of the United States of America, and the Constitution of the Bar of the United States Court of Appeals of the Federal Circuit?

[00:02:19] Speaker 05:
I do so.

[00:02:19] Speaker 05:
You're welcome.

[00:02:22] Speaker 01:
Okay, thank you for indulging the court.

[00:02:32] Speaker 01:
Our first case for today is 2016-2152, Smart Door Holdings versus Edmund Industries.

[00:02:43] Speaker 01:
Mr. Foisik, please proceed.

[00:02:53] Speaker 03:
May it please the court, Michael Foysek, attorney for the appellant.

[00:02:59] Speaker 03:
Behind me is Martin Weick, president of Smart Door Holdings and also the inventor of the patented issue.

[00:03:12] Speaker 03:
On appeal, claim 16 is the broadest claim.

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It's about a door, an open position, an opening position, closed position, and a closing position.

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If I walk through a door and it suddenly snaps shut, it wouldn't work well.

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So a door isn't as simple as it sounds.

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There's the four steps.

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It doesn't seem important by itself, but in the bigger picture it may be.

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The prior art relates to the combination

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See, Burke and Shea are much more nervous than I thought I would be.

[00:04:06] Speaker 06:
Burke and Shea, we... One of the arguments that you've made in your brief.

[00:04:24] Speaker 03:
The arguments in the brief were about, well, they're quite a number.

[00:04:32] Speaker 03:
But it helped a lot to look at the prior, just real quick from three different points of view, because I think the board misunderstood the thrust of our reasoning.

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And maybe it wasn't clear enough from the writing.

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So in three stages, I think I can really sharpen that.

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And then it will make sense why I cited the cases that we did.

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From a first point of view, we have Shea with some regenerative breaking, and then Burke, which relates to a generator which does have regenerative breaking.

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There's no dispute as to the facts in the case.

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The facts of the reference are there as described.

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The question is combining the regenerating feature of the Burke reference with the fire door of Shea.

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And it seems straightforward if just looked at in one way.

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But if the references are considered,

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Counsel, there was expert testimony in this case, Mr. Haas, correct?

[00:05:56] Speaker 04:
Yes.

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Do you disagree with, first of all, did you offer any expert testimony?

[00:06:04] Speaker 03:
No.

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No, it was handled by a different attorney before the board.

[00:06:09] Speaker 04:
The board did rely on that expert testimony.

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They did.

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To find the motivation to combine and predictable results and other things of that nature.

[00:06:19] Speaker 03:
As far as it went, we don't disagree with as far as it went.

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But as you can see from what will come, there's a little more at work.

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And if it was just as simple as that, I wouldn't be here and my client wouldn't be here.

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We'd have accepted the decision.

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There's just a little more to it.

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We have a governor, a motoring governor in Shea for raising and lowering a door.

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There's an energy recovery device.

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And if you just take those features out of context by themselves and just state them, it seems to make a lot of sense.

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And I'm not saying it doesn't make sense in the abstract.

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But when we look at the references, the Burke reference is talking about an AC motor on a big device.

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It's a train, an elevator.

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It's going one way.

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And the thing that their uses have in common is what it's operating in is going to keep going in that direction, whether it's using power or not, whether it's regenerating or not.

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That's kind of a one-way trip.

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The Shea reference has a governor, but it doesn't have a need.

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It doesn't express a need for any additional current.

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It doesn't want extra power.

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If you combine the references, you get something novel.

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So that's one way of looking at that.

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But let's say you do combine them.

[00:07:53] Speaker 06:
But if the combination isn't a combination, it's a replacement.

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So it's the idea of using regenerative breaking in place of the breaking that's in the main reference.

[00:08:06] Speaker 03:
Well, in the abstract, yes.

[00:08:09] Speaker 03:
That's exactly what it would sound like until you look a little more closely.

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What is it that you are replacing?

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Because the motor of Shea operates the door up and down, and it has a governor already.

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It doesn't really need anything else.

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If you just put the references side by side, someone with ordinary skill not would say, well, I could do a lot of things, but why?

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What's my motive?

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I get power, but this guy doesn't seem to need it.

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This motor's just going one way.

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Putting it on a door and replacing a governor, it sounds simple.

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It would be a big deal.

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I don't know how much of Shea would get destroyed, but you could literally replace the whole thing with Berks.

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But if you did, it would be a one-way operation.

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We won't arrive at the appellant's invention, which is a door that operates through the fourth stage

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The motor will power the door open and regenerate when it's closed.

[00:09:17] Speaker 03:
So it doesn't seem like a big deal.

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It doesn't seem like a major change in use.

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But here we have a new product.

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We have a new effect.

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It's a new result.

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Yes, we've combined them.

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And we do get a new result.

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And it's put into a real invention.

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The claim doesn't just recite a way of recovering energy.

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It relates to an entire operation of a door.

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through all of its cycle.

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So again, by itself, it means nothing.

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But let me take a second approach and just disagree with myself entirely and say, yes, let's just go ahead and put that in.

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What would the artisan do with it?

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Does he vaporize Shea and just put his own whole Burke motor in it?

[00:10:02] Speaker 03:
Well, that might not make sense.

[00:10:05] Speaker 03:
Shea's already got a motor.

[00:10:07] Speaker 03:
to regenerate, now you've got a second motor just for regeneration.

[00:10:11] Speaker 03:
The motivation is a little less.

[00:10:14] Speaker 03:
It's hard to understand exactly why we want to do those things.

[00:10:19] Speaker 03:
Again, this is not dispositive, but it's starting to shape things a certain way.

[00:10:24] Speaker 03:
Now let me just disagree with myself a third time and the last time.

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Let's just do it.

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Forget any other consideration.

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We're just going to combine them in the best way we know how.

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going to slap that second motor on Shea.

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We're going to do whatever it takes to get rid of that governor, no matter what it does to it.

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It's going to be a real effort.

[00:10:46] Speaker 03:
There will be some inventive steps to a skilled artisan, somebody of ordinary skill, not inventing.

[00:10:54] Speaker 03:
But if he just follows the references, he's going to have a little bit of a hard time.

[00:11:02] Speaker 01:
The problem is how difficult it would be to make those substitutions or changes is a question of fact.

[00:11:09] Speaker 01:
And you didn't introduce any evidence in the form of expert testimony that would have caused the board to believe that these combinations that changing Shea and Burke to be the claimed invention would have been difficult for a skilled artisan.

[00:11:28] Speaker 01:
And they had an expert on the other side.

[00:11:32] Speaker 01:
The difficulty you have now is we're not a court of first impression.

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We don't get to re-decide facts.

[00:11:38] Speaker 01:
We have to look at the record, and we can't disturb an opinion on a fact-finding below unless it wasn't supported by substantial evidence.

[00:11:47] Speaker 01:
Here you have the Haas Declaration, and we don't have any evidence to the contrary in the form of any declarations to the contrary.

[00:11:55] Speaker 01:
So I don't know how I could conclude

[00:11:58] Speaker 01:
that there wasn't substantial evidence for what the board found in deciding to make this combination.

[00:12:02] Speaker 01:
And you have to tell me what evidence there is that makes it clear that the board's decision wasn't supported, not just try to convince me anew, like this is a do-over.

[00:12:14] Speaker 01:
It's not a do-over.

[00:12:18] Speaker 03:
Well, on its face, and just accept the result, as you stated, on its face, we have that result.

[00:12:28] Speaker 03:
But if we look at the case law and look at the prior art being considered in its entirety, regardless of any findings of fact, really, would the prior art in this case lead someone to it?

[00:12:45] Speaker 03:
It's not a question of seeing our invention, could they make it?

[00:12:50] Speaker 06:
Do you agree that the standard of review that we are to apply

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is substantial evidence of the fact findings of the PTAP?

[00:12:59] Speaker 06:
Yes.

[00:13:00] Speaker 06:
And what do we do with the fact that they credited Petitioner's Declarant about the motivation to combine?

[00:13:08] Speaker 03:
Well, that is a motivation to combine, but it doesn't look at the prior case law, which gives a little further insight into what you can and should and shouldn't be doing in considering something unobvious.

[00:13:24] Speaker 06:
Do you have a particular case in mind?

[00:13:26] Speaker 03:
Well, the proposed combination creates an inoperable device where it teaches a way.

[00:13:36] Speaker 03:
We're getting two AC motors.

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They're going to work in the same.

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They run in one direction.

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A door reverses.

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And the concept would be,

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A literal interpretation of the references would literally arrive at something that, in the claimed invention, wouldn't work.

[00:14:04] Speaker 03:
But there is another case we would rely on.

[00:14:13] Speaker 03:
A combination of two old elements does not negate patentability.

[00:14:18] Speaker 03:
These are two old elements.

[00:14:22] Speaker 03:
We do arrive at a different result.

[00:14:25] Speaker 03:
The references are not from very similar fields.

[00:14:31] Speaker 03:
It's really a point of law, not fact, not law.

[00:14:33] Speaker 06:
So one of the things the PTAB said is they said, even if they're not from the same fields, they're solving the same problem, which is the problem of breaking.

[00:14:44] Speaker 06:
And so how do you respond to that?

[00:14:46] Speaker 06:
It's a factual finding.

[00:14:47] Speaker 06:
The question of whether something is analogous or not, it's a two-part test.

[00:14:51] Speaker 06:
And it's a factual determination.

[00:14:53] Speaker 06:
And the PTab said that under the second part of the test, which is directed to the two references directed to the same problem, that they are, in fact, analogous references.

[00:15:05] Speaker 03:
Our problem is a door that operates through all four stages, not regenerative breaking.

[00:15:12] Speaker 03:
If you just take one element and say, yes, here's that element, it isn't really what we're doing.

[00:15:20] Speaker 06:
What is the evidence in the record to support that position?

[00:15:23] Speaker 06:
Because again, we're looking to see whether the factual findings of the PTAB are supported by substantial evidence.

[00:15:31] Speaker 03:
Right.

[00:15:36] Speaker 03:
Well, there's nothing I can point to with regard to that.

[00:15:41] Speaker 03:
Another case, suggestion to combine cannot require a substantial reconstruction or redesign.

[00:15:49] Speaker 03:
of prior art.

[00:15:52] Speaker 03:
And here, you end up with two AC motors, and they're not going to be that compatible.

[00:16:01] Speaker 03:
You're removing a governor.

[00:16:03] Speaker 03:
It's a lot of things happening.

[00:16:05] Speaker 03:
There would have to be substantial redesign or reconstruction.

[00:16:12] Speaker 01:
You're into your rebuttal time.

[00:16:13] Speaker 01:
Would you like to save the remainder?

[00:16:15] Speaker 03:
Just for one second.

[00:16:16] Speaker 03:
The new claim's 40.

[00:16:18] Speaker 03:
A proposed replacement claim I'll just mention quickly.

[00:16:22] Speaker 03:
We recite instead of being disparate elements, the motor and regenerative feature are one and the same, a motor slash generator.

[00:16:31] Speaker 03:
That is an economy.

[00:16:33] Speaker 03:
We've simplified the prior art.

[00:16:35] Speaker 03:
And so again, that's a legal argument rather than factual.

[00:16:39] Speaker 03:
But we have one DC motor operating

[00:16:42] Speaker 03:
doing all the work instead of requiring a plurality.

[00:16:55] Speaker 01:
Mr. Gunning-Smith.

[00:16:55] Speaker 00:
Good morning, Your Honors.

[00:17:00] Speaker 00:
My name is Damien Gunning-Smith, and I represent the Appellee Industries, Inc.

[00:17:05] Speaker 00:
As the Court's aware, there's two issues in the case, the obviousness of claims 16 through 18 in 27, and the Board's decision denying the motion to amend

[00:17:12] Speaker 00:
With respect to the first issue, the court should affirm the board's decision, because the board dutifully applied the law of obviousness, and all of its subsidiary factual findings were supported by substantial evidence.

[00:17:24] Speaker 00:
The board did find all the limitations of the claims met by the prior art.

[00:17:28] Speaker 00:
The board did find a motivation to combine, and it therefore concluded the claims were obvious.

[00:17:34] Speaker 00:
This conclusion was not surprising, given that Smartdoor, as you just heard, has conceded that they did not put forth any

[00:17:42] Speaker 00:
They did not dispute that the limitations of the claims were not met by the prior art.

[00:17:47] Speaker 00:
They did not put forth any evidence of the level of ordinary skill.

[00:17:50] Speaker 00:
They did not put forth any expert evidence at all.

[00:17:53] Speaker 00:
They put forth no evidence of secondary considerations.

[00:17:56] Speaker 00:
In this context, the board's decision is virtually unassailable.

[00:18:00] Speaker 00:
All the evidence is on one side.

[00:18:02] Speaker 00:
And given the deferential standard of view, those findings should be affirmed.

[00:18:07] Speaker 00:
I'll address just a few of the points that

[00:18:10] Speaker 00:
Mr. Feussig made one in discussing the combination.

[00:18:17] Speaker 00:
He talks about as best I can follow, there's going to be two motors, and you'd have to do a substantial redesign.

[00:18:24] Speaker 00:
As the court's already noted, there's no evidence related to that in the record.

[00:18:28] Speaker 00:
But this is a straightforward combination substitution case.

[00:18:31] Speaker 00:
Randall manufacturing is cited in the brief, cited by the board.

[00:18:35] Speaker 00:
It's a combination of familiar elements according to known methods, yielding predictable results.

[00:18:39] Speaker 00:
All the evidence points to that conclusion, supports that finding.

[00:18:43] Speaker 00:
And there's nothing that can possibly dispute it on this record.

[00:18:48] Speaker 00:
They also point out that they also argue that Burke is not analogous, as the court noted.

[00:18:53] Speaker 00:
The board's finding was based on the second prong of the Bigelio test.

[00:19:00] Speaker 00:
It wasn't based on whether the art was from the same field of endeavor, but it was whether they concluded that the art was reasonably pertinent to a problem solved by the 784 patent.

[00:19:10] Speaker 00:
They didn't argue the relevant finding in their briefing, and therefore they haven't even presented a valid challenge to the board's finding about Burke.

[00:19:23] Speaker 00:
He argues briefly about the inoperability of the combo.

[00:19:27] Speaker 00:
They expressly conceded numerous times before the board at oral argument about, as well as here, that you could combine the references

[00:19:36] Speaker 00:
than it's possible to, and it wouldn't destroy the teachings.

[00:19:39] Speaker 00:
They have some question about how difficult it might be, but again, no evidence.

[00:19:45] Speaker 00:
And there's some suggestion in the briefing about secondary factors that are pure attorney argument, completely unsupported by evidence.

[00:19:54] Speaker 00:
With respect to the motion to amend, the only argument that you've heard him make is that they simplified the priority with a motor generator

[00:20:02] Speaker 00:
It completely ignored in the briefing that the board expressly found that the prior art in this record establishes that there is a DC motor generator, specifically the O'Brien reference.

[00:20:13] Speaker 00:
There's an additional reference in the record of the Johansson patent that also discloses a DC motor generator.

[00:20:18] Speaker 00:
Each of those limitations was found by the board.

[00:20:22] Speaker 00:
So for those reasons, I would ask the court to affirm.

[00:20:24] Speaker 00:
If there's no questions, I would cede the remainder of my time.

[00:20:27] Speaker 01:
Thank you, Mr. Gunning-Smith.

[00:20:29] Speaker 01:
Mr. Feusik.

[00:20:37] Speaker 03:
Nothing further.

[00:20:39] Speaker 01:
Okay, we thank both counsel.

[00:20:41] Speaker 01:
The case is taken under submission.