[00:00:00] Speaker 00:
We originally had five cases on the docket.

[00:00:07] Speaker 00:
One was submitted, and two that were set for argument have been moved based on counsel's request to reschedule the argument.

[00:00:16] Speaker 00:
So that means we have a short morning this morning with only two cases for argument today.

[00:00:20] Speaker 00:
The first case is an appeal from the Patent Trial and Appeal Board.

[00:00:28] Speaker 00:
Council, I have to ask you, how do you pronounce your client's name?

[00:00:33] Speaker 04:
Dirt Environmental Solutions.

[00:00:34] Speaker 00:
OK.

[00:00:35] Speaker 00:
Dirt as opposed to Dirty.

[00:00:37] Speaker 00:
We went back and forth.

[00:00:39] Speaker 00:
Everybody was wondering what it was.

[00:00:41] Speaker 00:
But so now I know.

[00:00:42] Speaker 00:
Thank you.

[00:00:43] Speaker 00:
And you want four minutes for rebuttal?

[00:00:46] Speaker 03:
Yes, Your Honor.

[00:00:47] Speaker 00:
OK.

[00:00:48] Speaker 00:
You may begin.

[00:00:48] Speaker 04:
Thank you.

[00:00:52] Speaker 04:
May it please the court.

[00:00:54] Speaker 04:
In this case, the board committed numerous errors that require its decision to be reversed or, at a minimum, vacated.

[00:01:01] Speaker 04:
This morning, I'd like to focus on the three most egregious errors.

[00:01:04] Speaker 04:
The first is that the only evidence the board relies on to find claim one invalid is obvious, or the obviousness combination set forth in the declaration of their expert witness, Dr. Beaman.

[00:01:14] Speaker 04:
But Dr. Beaman repudiated those very combinations when he was crossed on those combinations during trial.

[00:01:22] Speaker 01:
This alone requires... Council, do you concede that Wraith discloses all of the elements of Claim 1 except for the paralleling of the horizontal stringers?

[00:01:33] Speaker 04:
Yes, we concede that Wraith has all the elements of Claim 1 except for the horizontal stringer limitation in its entirety.

[00:01:40] Speaker 01:
So we're only interested in the horizontal stringers, that limitation?

[00:01:45] Speaker 04:
That's the focus of this appeal, yes, Your Honor.

[00:01:48] Speaker 01:
And it's also, I guess, you're in agreement that claim one determines the entire appeal.

[00:01:55] Speaker 02:
That's correct, Your Honor.

[00:01:59] Speaker 02:
You agreed below that the horizontal stringer is taught by other prior art references.

[00:02:05] Speaker 04:
That's also correct, Your Honor.

[00:02:06] Speaker 02:
So it's a combo case?

[00:02:08] Speaker 04:
Yes, this is a combination case.

[00:02:11] Speaker 04:
It's conceded that all the elements are found in the prior art, but the problem is that there's no

[00:02:18] Speaker 04:
reason to combine those that has been proven before the board.

[00:02:22] Speaker 00:
And the reason that the board... So with respect to Dr. Beeman, I understand that your focus is on his cross-examination, but the board did walk through the cross-examination and conclude that your comments or what you were relying on in the cross-examination were taken out of context or were not persuasive.

[00:02:41] Speaker 00:
So how do we say to the board that they don't have the right to make those credibility determinations?

[00:02:47] Speaker 04:
Well, Your Honor, that's a fair question.

[00:02:50] Speaker 04:
If you go back and you look at the transcript of that cross-examination, the board dismissed that cross-examination.

[00:02:58] Speaker 04:
He said it was taken out of context.

[00:02:59] Speaker 04:
But that's clearly wrong.

[00:03:01] Speaker 04:
Because if you go back and you actually read the transcript, in each of the cases, I specifically take Dr. Beaman to the very paragraph in his declaration where he opines that a person of skill in the art would make these combinations.

[00:03:15] Speaker 04:
And I ask him then,

[00:03:17] Speaker 04:
referring specifically to those paragraphs in his declaration, is that what you opine a person of skill in the art would do?

[00:03:24] Speaker 04:
And then he was almost surprised.

[00:03:26] Speaker 04:
He says, well, I'm not sure that that's what I would do.

[00:03:30] Speaker 04:
And he changes his opinion right there on the spot.

[00:03:32] Speaker 04:
He said, I wouldn't take the horizontal structure from EVH, or you or McGregor, and put that into Wraith.

[00:03:39] Speaker 04:
What I would do, or what a person of skill in the art would do, I would take the strips, connector strips out,

[00:03:45] Speaker 04:
of rate, and I would import those into the other three prior reference.

[00:03:49] Speaker 02:
You were asking him if he would incorporate from one prior reference to combine with another in total.

[00:03:57] Speaker 02:
So would you take this exact structure from here and put it over here?

[00:04:02] Speaker 02:
And he said, no, I wouldn't do that.

[00:04:04] Speaker 02:
But that goes to the question of whether or not in order to show, to make the combination, you have to actually incorporate the entirety of what's found in one prior art reference without any modification.

[00:04:16] Speaker 04:
Well, I respectfully disagree, Your Honor.

[00:04:18] Speaker 02:
Well, you don't disagree with me on the law.

[00:04:20] Speaker 02:
You may disagree with me on what the testimony was about.

[00:04:23] Speaker 04:
Correct.

[00:04:24] Speaker 02:
But the law doesn't require you in a combo case to exactly

[00:04:28] Speaker 02:
combine the specific part you find in A with B, if one of ordinary skill in the art would have been inclined to make a modification.

[00:04:36] Speaker 04:
Well, I agree, but that's where this case got all turned around and backwards.

[00:04:41] Speaker 04:
Because what the appellant argues is that you would not take the entire structure over with all its technicalities and all of its elements.

[00:04:50] Speaker 04:
For example, in EVH, there's the distance channel, which is a metal horizontal structure that has a channel in it that supports and affixes to the glass.

[00:04:59] Speaker 04:
We don't say, what actually the petitioner says is that you would take that entire channel over to ray.

[00:05:05] Speaker 04:
And that's how they get the horizontal stringer that they need.

[00:05:08] Speaker 04:
We say just the opposite.

[00:05:10] Speaker 04:
We say a person of skill in the art, and this is what Dr. Dix, our expert testified to, you wouldn't take the entire structure over.

[00:05:16] Speaker 04:
You would take the groove.

[00:05:18] Speaker 04:
A person of skill in the art would look at that horizontal stringer in EVH and see that there's a groove that supports and affixes to the glass.

[00:05:26] Speaker 04:
Well, there's already

[00:05:28] Speaker 04:
a horizontal structure in rate.

[00:05:30] Speaker 04:
They don't need a horizontal structure.

[00:05:32] Speaker 04:
What they would have done would modify the existing horizontal structure in rate to include a groove and a gasket to support and secure the glass.

[00:05:41] Speaker 04:
And so the board got it absolutely backwards.

[00:05:45] Speaker 04:
The patent owner is arguing that a person of skill and the art would not take the entire structure over.

[00:05:50] Speaker 04:
They would take only the groove and they would actually modify, as you said, a person of skill and the art would do, they would actually modify the existing structure in rate.

[00:05:58] Speaker 04:
But the problem is that they disagree with that, because that doesn't get them to the horizontal stringer limitation.

[00:06:06] Speaker 00:
But isn't the point that, and what was gleaned from the cross-examination of Dr. Beeman is that regardless of what counsel argues, that Beeman said one of skill in the art would understand how to put pieces and parts together.

[00:06:23] Speaker 00:
And the law doesn't require full-on physical incorporation.

[00:06:28] Speaker 04:
And that's just it.

[00:06:30] Speaker 04:
The law doesn't require full-on physical incorporation, but that's what the petitioner wants, because they have to bring that whole physical structure over from EVH or you or McGregor in order to meet the limitation.

[00:06:43] Speaker 04:
But that's not what the law requires, and that's not what the motivation that Mr. Beeman espouses requires.

[00:06:50] Speaker 04:
Mr. Beeman, Dr. Beeman, he said that the motivation to combine these references is that

[00:06:58] Speaker 04:
for EVH, you would want to secure the glass.

[00:07:01] Speaker 04:
Well, you don't need to bring over a new metal horizontal member to secure the glass.

[00:07:05] Speaker 04:
We've already gone through that.

[00:07:06] Speaker 04:
All you need is to put a groove in the existing structure to secure the glass.

[00:07:10] Speaker 04:
So that motivation doesn't work.

[00:07:12] Speaker 04:
With you, he says, well, you would want to bring over the metal structure so that you could use clips and attach tiles.

[00:07:19] Speaker 02:
So what you're trying to do is to modify Wraith, right?

[00:07:23] Speaker 04:
That's what the petition argued was a modified way.

[00:07:26] Speaker 02:
And the theory was that if you want to support and completely secure the glass panels in the modular units of Wraith, you would bring over from the prior earth.

[00:07:38] Speaker 04:
And that's just it.

[00:07:40] Speaker 04:
They say that that's what you would do, but they're wrong because you already have a structure in Wraith that can support an affix to the glass.

[00:07:49] Speaker 04:
All it needs is a groove

[00:07:50] Speaker 04:
put in the existing structure.

[00:07:52] Speaker 02:
And Wraith has a horizontal structure, so why isn't Wraith anticipatory?

[00:07:56] Speaker 04:
Because that horizontal structure isn't a horizontal stringer.

[00:08:00] Speaker 04:
It's not affixed at the ends to the vertical end frames like the horizontal stringer has to be.

[00:08:05] Speaker 04:
And Petitioner doesn't even argue that those horizontal structures are sufficient to meet that limitation.

[00:08:12] Speaker 04:
That's why they turn to the other art.

[00:08:14] Speaker 01:
It seems to me that you argue that there's another plausible conclusion

[00:08:18] Speaker 01:
in addition to the conclusions that were drawn by the expert, right?

[00:08:24] Speaker 01:
That's what you're saying.

[00:08:25] Speaker 01:
There's another way of doing this that's plausible.

[00:08:28] Speaker 04:
Not just another way that's plausible, but there's... A different way.

[00:08:33] Speaker 04:
And not just a different way.

[00:08:34] Speaker 04:
And it's important because, remember... What's the difference?

[00:08:37] Speaker 01:
I mean, you're arguing another, an alternative to what the experts argue.

[00:08:43] Speaker 01:
You're arguing it's

[00:08:45] Speaker 01:
You bring over just the groove, not the entire mechanism.

[00:08:49] Speaker 01:
And that's another conclusion.

[00:08:51] Speaker 01:
That's your conclusion.

[00:08:53] Speaker 01:
And let's assume that your conclusion is reasonable.

[00:08:57] Speaker 01:
We have two reasonable, plausible conclusions here.

[00:09:03] Speaker 04:
OK.

[00:09:03] Speaker 01:
How does that square with the standard of review that we have with substantial evidence?

[00:09:09] Speaker 01:
We've got two outcomes.

[00:09:11] Speaker 01:
Both are reasonable.

[00:09:13] Speaker 01:
That's what we're in that situation.

[00:09:15] Speaker 01:
We find substantial evidence.

[00:09:17] Speaker 04:
Okay.

[00:09:18] Speaker 04:
Well, first of all, we disagree that it's reasonable because it's like if you have a claim that requires a car with an automatic sliding door and they look at the prior art and they say, oh, there's prior art over here that has a sliding door with a window in it.

[00:09:33] Speaker 04:
And the door in the claim doesn't have a window in it.

[00:09:36] Speaker 04:
Well, oh, we would bring the automatic sliding door over because now we have a window.

[00:09:40] Speaker 04:
Well, that doesn't make sense.

[00:09:42] Speaker 04:
It's not reasonable.

[00:09:43] Speaker 04:
They wouldn't bring the whole door over.

[00:09:44] Speaker 04:
They would just bring the window over.

[00:09:46] Speaker 04:
And that's what they've done here.

[00:09:47] Speaker 04:
They just need the groove, but they want to bring the whole structure with it, which that's not reasonable.

[00:09:52] Speaker 01:
Second... Well, it is reasonable.

[00:09:54] Speaker 01:
It may not be practical.

[00:09:56] Speaker 04:
Well, but we're looking at what a person of ordinary skill in the art would do, and a person of ordinary skill in the art would be practical.

[00:10:02] Speaker 01:
If it is reasonable, and we're not talking about a whole door, we're talking about a stringer with a groove in it, it seems to me it makes more sense for Proceder to say, I'll just take this strip that's got a groove in it already and move it over, as opposed to saying, I'm just going to move the groove over.

[00:10:19] Speaker 04:
Well, once again, Your Honor, remember, Wraith has the vertical frames.

[00:10:23] Speaker 04:
that already has the exact same groove in the vertical frame in Wraith.

[00:10:29] Speaker 00:
But Wraith itself says that it can be combined with other systems in order to improve upon even what it explains or describes.

[00:10:41] Speaker 04:
I respectfully disagree.

[00:10:43] Speaker 04:
I haven't answered Judge Raina's question.

[00:10:45] Speaker 04:
Can I answer his and then yours?

[00:10:46] Speaker 04:
So Judge Raina, going back to your question, the other reason is that

[00:10:50] Speaker 04:
Wraith says you want to minimize the number of components and so forth.

[00:10:55] Speaker 04:
And to bring over that other structure, you're going to have to bring over additional components, which makes it more complex, more time consuming to manufacture, more difficult to manufacture, more time consuming to assemble and reassemble.

[00:11:05] Speaker 04:
And that's contrary to the express teachings of Wraith.

[00:11:08] Speaker 04:
Judge Amali, turning to your question, which has just slipped my mind, would you mind re-asking it again?

[00:11:13] Speaker 00:
That Wraith itself says, I mean, it explains that its system can be

[00:11:19] Speaker 00:
combined with features of other systems?

[00:11:23] Speaker 04:
Well, Your Honor, I respectfully disagree.

[00:11:25] Speaker 04:
The precise language in Wraith says it is compatible with other existing partition systems.

[00:11:31] Speaker 04:
And so what that means is that if you have an existing partition system, you can take the Wraith system, and you can build off of that, and it's compatible.

[00:11:41] Speaker 04:
It does not say that you can take parts of an existing system

[00:11:48] Speaker 04:
and use it to modify Wraith.

[00:11:50] Speaker 04:
That's not in Wraith anywhere.

[00:11:52] Speaker 04:
It just says it's compatible with, meaning it can be used next to or in conjunction.

[00:11:56] Speaker 00:
But what do we do with the board's factual finding that one of ordinary skill in the art would have recognized that you could import these channels from EBH, for example, in order to improve the structural support in Wraith?

[00:12:18] Speaker 04:
Well, I don't know that the board actually made that factual finding that it would improve the structural support, but... Well, it did.

[00:12:28] Speaker 01:
It did.

[00:12:28] Speaker 01:
Yes.

[00:12:30] Speaker 01:
Yeah.

[00:12:33] Speaker 01:
Okay.

[00:12:34] Speaker 04:
Well, let's assume that it did, but even then, even if you get to, okay, there's a motivation to make the combination, that motivation, that combination is weak at very best because it was repudiated in

[00:12:48] Speaker 04:
in the cross-examination.

[00:12:49] Speaker 04:
The motivations to combine are not directly linked.

[00:12:52] Speaker 04:
There's a logical disconnect.

[00:12:53] Speaker 04:
And then you get to the secondary considerations of non-obviousness, which the board entirely dismissed, making severe errors of law and fact.

[00:13:02] Speaker 04:
For example, on commercial success, they required corroboration.

[00:13:05] Speaker 04:
There's no corroboration requirement for commercial success.

[00:13:08] Speaker 04:
They required market share.

[00:13:09] Speaker 04:
That's also an error of law.

[00:13:11] Speaker 04:
I see that I'm into my rebuttal time, which I would like to reserve.

[00:13:13] Speaker 02:
Can I just ask one question?

[00:13:16] Speaker 02:
Yes.

[00:13:16] Speaker 02:
Go ahead.

[00:13:17] Speaker 02:
There was additional briefing on the SAS remand issue.

[00:13:20] Speaker 02:
Yes, Your Honor.

[00:13:22] Speaker 02:
And my reading of the additional briefing was that the other side really is not eager to have a remand.

[00:13:29] Speaker 02:
You would like a remand.

[00:13:31] Speaker 02:
But my understanding of your brief was that it looked to me like your remand was really conditional.

[00:13:37] Speaker 02:
That is to say,

[00:13:38] Speaker 02:
It looked to me like you were hoping for a victory here.

[00:13:43] Speaker 02:
And if you won here, then that was going to be useful to you on a remand.

[00:13:46] Speaker 02:
Let me ask you this question.

[00:13:48] Speaker 02:
Assume that you lost everything here, a complete loss.

[00:13:52] Speaker 02:
Do you still want to have an SAS remand?

[00:13:55] Speaker 04:
Yes, Your Honor, we do.

[00:13:56] Speaker 02:
And how do you get there?

[00:13:59] Speaker 04:
Well, Your Honor, the non-instituted claims continue to be valid, even if we lost here on claim one.

[00:14:04] Speaker 04:
But they're all on dependent claims.

[00:14:06] Speaker 04:
I'm sorry?

[00:14:07] Speaker 00:
They're dependent claims, correct?

[00:14:09] Speaker 00:
Yes.

[00:14:09] Speaker 00:
So wouldn't they rise and fall with claim one?

[00:14:12] Speaker 01:
No, Your Honor, because they're dependent.

[00:14:14] Speaker 01:
Well, why not?

[00:14:15] Speaker 01:
At the beginning of your argument, I asked you whether claim one determines the interrogation.

[00:14:20] Speaker 01:
You said it does.

[00:14:21] Speaker 04:
Well, it determines this case that's on appeal to this court.

[00:14:24] Speaker 01:
Well, if we rule against you on claim one and find it to be obvious, then- You have dependent claims on appeal here.

[00:14:32] Speaker 04:
Yes, the independent claims on appeal here today, they rise or fall with claim one.

[00:14:36] Speaker 04:
the independent claims that were not instituted are not in this case and do not rise or fall with claim one.

[00:14:42] Speaker 04:
They have additional limitations that aren't addressed in this case that render those claims valid, which is why they were not instituted.

[00:14:49] Speaker 00:
And so we would ask... Well, my problem is that both SAS and we have said that the problem with the partial institution is a violation of the Administrative Procedures Act, and the portion of the Administrative Procedures Act which says

[00:15:05] Speaker 00:
that the PTAP acted beyond its statutory authority.

[00:15:09] Speaker 00:
The only remedy for that in the APA is to set aside the determination.

[00:15:15] Speaker 00:
So we can't choose to decide some of it and not decide others unless we find that there's no prejudicial error in doing that.

[00:15:25] Speaker 00:
And so that's my problem with your saying you want us to go ahead and do these, but then go back and do the others.

[00:15:30] Speaker 00:
I mean, it seems to me it's an all or nothing unless you

[00:15:34] Speaker 00:
concede that there would be no prejudicial error to you if we invalidated the patent on these grounds?

[00:15:42] Speaker 04:
Well, I don't think there would be a prejudicial error to us.

[00:15:44] Speaker 04:
If claim one was invalidated on these grounds and the dependent claims that are currently on appeal were invalidated, that would not be prejudicial to the validity of the non-instituted claims.

[00:15:56] Speaker 04:
And this court, in two cases, in the Medtronic case at 2018 WL,

[00:16:03] Speaker 04:
276-9092, decided last month, and also in the Bordeauxian text case at 2018 WL 297-9928, also decided last month.

[00:16:17] Speaker 04:
In both of those cases, this Court ruled on the appeal before it, and then, after ruling on the appeal before it, remanded.

[00:16:24] Speaker 01:
Kennedy Well, let's go back to Judge Clever's question, because I kind of share his view that you seem to want to condition

[00:16:31] Speaker 01:
any remand that we have on any type of victory you have here.

[00:16:35] Speaker 01:
And when I'm reading your arguments in your supplemental briefing, it seems like you're doing that.

[00:16:39] Speaker 01:
You're assuming, or at least your arguments are based on an assumption that you're going to win at different points.

[00:16:47] Speaker 01:
And if you win there, that means that you have a chance on the uninstituted grounds.

[00:16:53] Speaker 04:
No, Your Honor.

[00:16:54] Speaker 04:
If you look closely in the brief, it says, regardless of what happens in this appeal, we would like a remand.

[00:17:00] Speaker 04:
Now, we believe that the boards should be overturned, and we should win on appeal.

[00:17:06] Speaker 04:
Where do you say that?

[00:17:08] Speaker 04:
In the very beginning, I do believe.

[00:17:10] Speaker 00:
Right.

[00:17:10] Speaker 00:
And part of my problem with what you said there is you said because whatever we say here would sort of give them guidance with respect to the other claims.

[00:17:20] Speaker 00:
And that, to me, sounds like you were asking us for an advisory opinion when, under SAS,

[00:17:29] Speaker 00:
we would have to conclude that what they did by issuing a final decision in the absence of addressing all claims is an ultra-various act outside the scope of their statutory authority.

[00:17:45] Speaker 04:
I believe it's a little bit different than that, Your Honor, because it's not that we're asking for an advisory opinion on the claims that were non-instituted, but it's a natural consequence that this Court's ruling on claim one that's in the current appeal

[00:17:59] Speaker 04:
will obviously inform the analysis of the other claims.

[00:18:02] Speaker 00:
Let me ask you this.

[00:18:04] Speaker 00:
And I can't speak for the other judges, and I'm not even sure what my view of it is.

[00:18:09] Speaker 00:
But assuming that we thought that it was an all or nothing proposition.

[00:18:13] Speaker 00:
You either get a remand right now, and the current decision is vacated, and you get a remand, and they go back and address all the claims.

[00:18:24] Speaker 00:
Or we go forward.

[00:18:26] Speaker 00:
and decide this and only this, and there's no remand.

[00:18:30] Speaker 00:
If you had to choose between the two, what would your choice be?

[00:18:34] Speaker 04:
I believe we would choose a remand, Your Honor, so that we could get finality and estoppel provisions.

[00:18:40] Speaker 01:
You mean remand on all the issues?

[00:18:42] Speaker 04:
Yes, so that we could get finality and the estoppel provisions with the non-instituted claims would then come into play with regard to the non-instituted claims when a new final written decision was issued on all challenged claims.

[00:18:56] Speaker 00:
Thank you.

[00:18:56] Speaker 00:
We'll give you three minutes back for rebuttal.

[00:18:59] Speaker 04:
Thank you, Your Honor.

[00:18:59] Speaker 00:
You're welcome.

[00:19:05] Speaker 00:
Can we start with that last point, the SAS point?

[00:19:08] Speaker 00:
Yes.

[00:19:09] Speaker 00:
So what is your view?

[00:19:11] Speaker 00:
Can the court sort of partially decide whether or not a final written decision that was outside the statutory authority of the PTAB was right or wrong?

[00:19:25] Speaker 00:
Can we do that kind of partial decision making?

[00:19:29] Speaker 03:
I haven't looked at that particular question.

[00:19:32] Speaker 03:
But I think that in this case, I think that in the supplemental briefing, both sides were consistent that we have gone a long way in looking at the validity of claim one.

[00:19:43] Speaker 03:
And as we've seen in this case, we had a lot of cases like that before us.

[00:19:47] Speaker 00:
And the two cases that your friend on the other side cites, both of those cases were situations in which

[00:19:54] Speaker 00:
the decision had already been rendered before SAS ever issued.

[00:19:59] Speaker 00:
So find those to be different.

[00:20:02] Speaker 00:
But in all the other cases that we've had, we've been either remanding or not remanding.

[00:20:07] Speaker 00:
We either go forward or we don't go forward.

[00:20:10] Speaker 00:
And as petitioner, I assume that you would still want to attack the other claims on which there was no institution, right?

[00:20:18] Speaker 03:
That is correct.

[00:20:19] Speaker 00:
So what you're saying is you want the best of both worlds.

[00:20:24] Speaker 00:
affirm this decision and then you wouldn't be stopped as to all those other claims.

[00:20:30] Speaker 03:
This case has a unique procedural component where the patented issue is also in a reissue at the moment where independent claim one and all of the non instituted claims stand rejected not only based on the grounds in the IPR but for independent reasons.

[00:20:50] Speaker 00:
So we have this parallel proceeding that has been... Well, that's all the more reason we shouldn't be issuing something if it turns out that it's really just an advisory opinion.

[00:21:01] Speaker 03:
So, but I think... Well, a little bit on different ground issues.

[00:21:04] Speaker 03:
Yes.

[00:21:05] Speaker 03:
So the reissue before the Patent Office is currently looking at the IPR grounds and has those as grounds of rejection, as well as additional separate grounds.

[00:21:16] Speaker 03:
And those claims are also

[00:21:18] Speaker 03:
also currently amended.

[00:21:20] Speaker 02:
Let me just get clear in my mind what your position is on essayists, because your original position was that they waived any claim to raise it.

[00:21:27] Speaker 02:
Correct.

[00:21:28] Speaker 02:
Which would have suggested to me that you were against a remand.

[00:21:32] Speaker 02:
Yes.

[00:21:33] Speaker 02:
And in your response to the additional briefing, you said you want us to decide what's in front of us now.

[00:21:40] Speaker 03:
Correct.

[00:21:40] Speaker 02:
But you didn't actually say whether you actually wanted a remand or not.

[00:21:44] Speaker 03:
We think that the best course of action would be- What's your position?

[00:21:48] Speaker 02:
Are you asking for a remand?

[00:21:51] Speaker 02:
Yes or no?

[00:21:51] Speaker 03:
We are not asking for a remand.

[00:21:53] Speaker 03:
We're asking for a decision.

[00:21:54] Speaker 02:
So are you opposing a remand?

[00:21:56] Speaker 03:
Yes.

[00:21:57] Speaker 03:
And we are asking then for a decision on claim one.

[00:22:00] Speaker 00:
And then at the district court, we believe that- So you're taking the position that you want to win here but not be stopped with respect to all the other claims in the petition.

[00:22:09] Speaker 00:
That's exactly what the problem is.

[00:22:11] Speaker 00:
And that was identified in SAS, right?

[00:22:14] Speaker 03:
And because we have this unique procedural history of the reissue, we would then let that reissue finish.

[00:22:22] Speaker 03:
We would ask the district court to let the reissue finish to see what happens with those claims.

[00:22:27] Speaker 02:
The fact that you may oppose a remand doesn't mean you're not going to get one, because in the cases that have come down thus far, if either party asks for the remand, they're getting it.

[00:22:40] Speaker 02:
So I just wanted to clarify my own mind where you were, because your briefing, all you started off saying, they waved it, but suggest you didn't want a remand.

[00:22:50] Speaker 02:
We asked you for briefing, you came back and said, argue the case here, but you didn't tell us what you wanted on it, what you were on a remand.

[00:22:57] Speaker 02:
You're now telling us that you oppose a remand.

[00:23:00] Speaker 01:
Correct?

[00:23:00] Speaker 01:
Correct.

[00:23:01] Speaker 01:
Because we think that- What's the basis of opposing a remand for the uninstituted claims?

[00:23:06] Speaker 01:
I mean, SAS is pretty clear on that.

[00:23:09] Speaker 03:
Yes, I understand.

[00:23:10] Speaker 03:
I think that we have a unique procedural posture in this case.

[00:23:14] Speaker 01:
Aside from that posture?

[00:23:16] Speaker 03:
Aside from that posture, I agree, looking at the cases that this court has issued, that this court, when there are uninstituted claims or grounds, those cases are being remanded.

[00:23:27] Speaker 00:
You're hoping that will influence the re-exam or the re-issue.

[00:23:29] Speaker 03:
I'm sorry?

[00:23:30] Speaker 00:
You're hoping that we can influence the re-issue by endorsing the PTAP's decision.

[00:23:37] Speaker 03:
Yes.

[00:23:38] Speaker 03:
This case is fully briefed.

[00:23:39] Speaker 02:
It would be like if you had a case pending in a district court someplace, you'd like the same thing, right?

[00:23:46] Speaker 02:
Correct.

[00:23:46] Speaker 02:
It's not unusual that you have cases where one is related to another, and you want an adjudication.

[00:23:52] Speaker 02:
And if you win, you're going to use it.

[00:23:54] Speaker 02:
And if you don't, you won't.

[00:23:55] Speaker 03:
Correct.

[00:23:55] Speaker 03:
I mean, for the efficiency of all of the matters, we have a district court case in the northern district of Illinois that has stayed.

[00:24:02] Speaker 03:
We have the reissued proceeding.

[00:24:04] Speaker 03:
And we have this proceeding.

[00:24:05] Speaker 03:
And the parties have come a long way.

[00:24:07] Speaker 03:
And I understand, Judge O'Malley, that that is the situation in all cases.

[00:24:12] Speaker 03:
But here, there's only one independent claim.

[00:24:15] Speaker 03:
If we can receive a ruling from the Federal Circuit on where we stand with claim one, I think that would go a long way to resolving potentially all of these matters.

[00:24:26] Speaker 00:
How do you deal with the 706 of the Administrative Procedures Act, which is what the Supreme Court and our court have said it was the basis for the holding?

[00:24:35] Speaker 00:
that 706 says that our remedy, where a court has acted in excess of its statutory jurisdiction, authority, or limitations, is to hold unlawful and set aside the agency action, findings, and conclusions, unless we can conclude that there was no prejudicial error in their acting outside their statutory authority.

[00:25:04] Speaker 00:
And how can we reach that conclusion?

[00:25:08] Speaker 03:
It would just be on the basis of efficiency and looking at this case.

[00:25:13] Speaker 02:
The other side says it's not prejudiced.

[00:25:17] Speaker 03:
I'm sorry?

[00:25:17] Speaker 02:
The other side says it's not prejudiced.

[00:25:20] Speaker 03:
And you claim they are not prejudiced.

[00:25:22] Speaker 03:
If they are not prejudiced.

[00:25:25] Speaker 03:
Well, you're not claiming prejudice.

[00:25:27] Speaker 03:
That is correct.

[00:25:27] Speaker 01:
Assume that we remain.

[00:25:29] Speaker 01:
Neither side's claiming prejudice.

[00:25:31] Speaker 01:
Assume that we remand.

[00:25:32] Speaker 01:
What's your position?

[00:25:33] Speaker 01:
That we should remand the entire case, or just decide the merits on the instituted claims, on the claims that are before us, or the arguments that are before us, and then remand on the uninstituted claims?

[00:25:47] Speaker 03:
That's correct.

[00:25:47] Speaker 03:
A narrow remand.

[00:25:50] Speaker 01:
We'd make a merits decision now.

[00:25:52] Speaker 01:
Yes.

[00:25:53] Speaker 03:
Yes, and I think that would be helpful.

[00:25:54] Speaker 03:
So for example, have another case at the P tab where shortly before they were going to issue the final written decision, SAS.

[00:26:01] Speaker 01:
But you're asserting, though, that for the basis of your argument, that the reason we should take that approach is to render some form of advice to all these other proceedings.

[00:26:15] Speaker 01:
I mean, we're not in the business of giving advisory opinions, and that's what you want.

[00:26:19] Speaker 03:
I don't know that I would see it as an advisory opinion.

[00:26:22] Speaker 03:
You can have a final decision for what is framed before the court now for the independent claim and then the dependent claims here that Dirk agrees rise and fall with that independent claim.

[00:26:37] Speaker 03:
And then when you go back to the P tab, they are going to be able to have a much more efficient proceeding knowing the decision from this court on claim one

[00:26:47] Speaker 03:
and only then focusing on the narrow issues that would remain on the dependent claims.

[00:26:55] Speaker 00:
OK, let's get to the merits.

[00:26:58] Speaker 00:
What is your response to your friend's argument on the other side, that you only proposed this bodily incorporation of EBH or the other references into rape, and that that's not workable?

[00:27:16] Speaker 03:
We did not propose a bodily incorporation.

[00:27:20] Speaker 03:
We applied the law of obviousness, Supreme Court's KSR opinion.

[00:27:25] Speaker 03:
We provided substantial evidence, including expert testimony on why a person of ordinary skill in the art would have combined.

[00:27:35] Speaker 03:
We have three different grounds here.

[00:27:36] Speaker 03:
You have Wraith plus EVH, where you are creating an improved way of supporting glass.

[00:27:42] Speaker 03:
These are modules that you move in and out to different positions.

[00:27:46] Speaker 03:
And so having an improved way to support the glass is the evidence.

[00:27:49] Speaker 03:
And that was the PTABS ruling on that.

[00:27:53] Speaker 03:
With you, you have a system of holding tiles in a snap-in arrangement and for supporting furniture where you can have a sliding mounting bracket.

[00:28:04] Speaker 03:
And that is something that a person of ordinary skill in the art would want in one of these movable systems.

[00:28:09] Speaker 03:
And then you have in the McGregor system holding televisions and other high-tech components.

[00:28:16] Speaker 03:
And they have specially designed horizontal supports.

[00:28:21] Speaker 03:
So this is a case where it's easy to visualize how you could take those particular components and incorporate them in RAFE.

[00:28:29] Speaker 03:
But it isn't a requirement.

[00:28:31] Speaker 03:
We never said it's a requirement.

[00:28:32] Speaker 00:
But Dr. Beeman's declaration does seem pretty broad in terms of

[00:28:37] Speaker 00:
saying I'm putting this piece into this piece, as opposed to saying you would do that through modification.

[00:28:43] Speaker 00:
I guess that's where he tried to go on his cross-examination.

[00:28:46] Speaker 00:
But why isn't his declaration inadequate because he didn't actually address the fact that there would have to be modifications?

[00:28:57] Speaker 03:
Well, I don't think there's a requirement that you need to have a blueprint of how you would take a piece from one reference and put it into the other and what the modifications

[00:29:08] Speaker 03:
would be he was looking at the teaching of the references as a whole and that a person of ordinary skill in the arts would want to have that additional functionality in the Wraith modular system and would be able to to incorporate it.

[00:29:23] Speaker 03:
These are very simple technology of taking a horizontal structural component that is going to hold various kinds of components whether you're talking about you or EVH or McGregor and

[00:29:37] Speaker 03:
Those references also teach how to use a nut and bolt type of connection between the horizontal and the vertical.

[00:29:46] Speaker 03:
So I don't think there's a requirement that in an expert declaration, you need to get to, here are the exact modifications that would need to be made.

[00:29:57] Speaker 03:
He was looking at the teaching of the reference as a whole, and a person of ordinary skill in the art would readily be able to make that combination.

[00:30:04] Speaker 00:
And what did he say would be the motivation to do that?

[00:30:07] Speaker 00:
Yes, you can envision putting one thing into another, but why would you bother if you've already got a self-contained system that works?

[00:30:15] Speaker 03:
Well, so for example, so Wraith has a solid panel and it has a glass panel.

[00:30:23] Speaker 03:
McGregor, for example, has a horizontal support that is holding televisions, audio, visual components, different items that will be, you know, that you can put at different locations on the wall.

[00:30:37] Speaker 03:
saying a person of ordinary skill in the art, looking at the language in Wraith of wanting to have various types of partition systems.

[00:30:45] Speaker 03:
For example, when you look at figure 13 of Wraith, you can see how they have set up the room.

[00:30:51] Speaker 03:
In this teaching, you can set up the room differently.

[00:30:52] Speaker 03:
You can move the door.

[00:30:53] Speaker 03:
You can move the glass.

[00:30:55] Speaker 03:
Looking at McGregor, you would say, I want to have a television already of audio visual.

[00:30:59] Speaker 03:
And it shows how somebody would do that in a modular system.

[00:31:03] Speaker 03:
And so that is what he has as his motivation to combine

[00:31:07] Speaker 03:
of a person of ordinary skill in the art, looking at one of these rooms, would want to have that audio-visual component.

[00:31:13] Speaker 03:
When you're making the combination, you aren't limited to a cut and paste world or a blueprint world.

[00:31:20] Speaker 03:
You're looking at the teaching as a whole.

[00:31:22] Speaker 03:
But it is easy to visualize that you would take, at a minimum, one of the options.

[00:31:28] Speaker 03:
You would take what it is in

[00:31:30] Speaker 03:
McGregor that already has those custom holes for holding those components.

[00:31:34] Speaker 00:
Right.

[00:31:34] Speaker 00:
That's assuming that you find something inadequate in Wraith.

[00:31:37] Speaker 00:
I mean, we have plenty of case law that says where you have a prior art reference that on its own serves all the purposes and functions and does so appropriately, you wouldn't look outside to look for something else just because it happens to exist.

[00:31:52] Speaker 03:
But Wraith doesn't have a teaching of how you would snap in tiles as you have in you, or how you would have a sliding furniture mount as you have in you, or how you would mount the audio, visual, and other high-tech components as you have in McGregor.

[00:32:07] Speaker 03:
Or in EVH, when you have these walls that you're moving in and out, Wraith does have the channels on the verticals.

[00:32:15] Speaker 03:
But that's it and the evidence that was provided and what the PTAB found is that EVH provided an improved way of holding that glass so you had channels all the way around and as as my friend representing dirt said in in in The Wraith reference it it has an inner fitting Connection that they say is not a fixing so you would want an EVH to have that nut and bolt connection so that when you are

[00:32:44] Speaker 03:
you know, taking these walls and moving them from point to point, it's a more secure system.

[00:32:49] Speaker 03:
So there is clear motivation to combine substantial evidence to support the combinations in the case.

[00:32:59] Speaker 03:
And I think that a question, Judge Raina, that you ask of if what DIRT has is a plausible way of making the combination, and we don't disagree that that would

[00:33:11] Speaker 03:
be one plausible way.

[00:33:12] Speaker 03:
What they say could be a plausible way.

[00:33:14] Speaker 03:
There are a lot of ways that a person of ordinary skill and the art could make the combination.

[00:33:19] Speaker 03:
The point is that it isn't just limited to what they have.

[00:33:22] Speaker 03:
At a minimum, somebody is going to take the way McGregor and Hugh and E.B.H.

[00:33:28] Speaker 03:
teach holding those components in place.

[00:33:31] Speaker 03:
At a minimum, they would do that.

[00:33:33] Speaker 03:
They would look at a lot of other using their skill and creativity to do that.

[00:33:38] Speaker 03:
So this is the epitome to, at least to us, the epitome of a case where under substantial evidence standard and you have various reasonable alternatives, what the board came up with for the three combinations is definitely a reasonable alternative supported by substantial evidence in this case.

[00:33:59] Speaker 00:
What's your response to your friend's argument that we're not under a substantial evidence review, we're under abusive discretion because

[00:34:07] Speaker 00:
What we're looking at is the board's credibility determinations as it relates to Dr. Beeman.

[00:34:22] Speaker 03:
I believe we cited a case on that point.

[00:34:41] Speaker 03:
Yeah, so we cited on page 24 of the red brief, the Warsaw or the PDIC case, noting that it rejected arguments that contest the weight the PTAB afforded to the record evidence and confirming that this court may not reweigh facts already considered by the PTAB.

[00:35:01] Speaker 02:
Well, a credibility determination has factual components, doesn't it?

[00:35:05] Speaker 02:
When you're trying to decide whether a witness is credible or not, you have to say why.

[00:35:10] Speaker 02:
Yes.

[00:35:10] Speaker 02:
You think they were hands shook, they were shaky, they were inconsistent.

[00:35:14] Speaker 02:
So there have to be some factual components underlying a conclusion, right?

[00:35:19] Speaker 02:
Yes, which is... It's clear that facts are measured for substantial evidence.

[00:35:22] Speaker 03:
Correct.

[00:35:23] Speaker 02:
Perhaps the conclusion

[00:35:25] Speaker 02:
If you say, if we were to decide, for example, that the factual underpinning of a credibility decision were incorrect, that there was not substantial evidence to support that credibility decision, we would probably say the decision was arbitrary, or precious, or not, and otherwise in accordance with law, because there was no factual underpinning.

[00:35:48] Speaker 02:
But the facts themselves would be measured by substantial evidence.

[00:35:51] Speaker 03:
Yes, correct.

[00:35:52] Speaker 02:
And I would also note on the issue of- I mean, it's probably the most interesting issue in the case is the standard of review, because it's always confusing.

[00:36:00] Speaker 02:
But it's clear in our case law, when in bank to do it, to say facts coming out of the patent officer measure for substantial evidence.

[00:36:11] Speaker 02:
If the facts don't add up to a conclusion, the conclusion has to be incorrect, right?

[00:36:17] Speaker 02:
if the facts won't add up to it.

[00:36:19] Speaker 02:
And then you have to decide what label you want to put on it, arbitrary, capricious, or not otherwise in accordance with law.

[00:36:28] Speaker 02:
So typically, all courts tend not to use the word capricious, because we don't like to treat the patent offices being capricious, or even arbitrary.

[00:36:40] Speaker 02:
So we say not in accordance with law.

[00:36:41] Speaker 02:
It's a polite way of saying it.

[00:36:44] Speaker 03:
And I would note on Dr. Beeman's testimony when we had the hearing.

[00:36:48] Speaker 03:
It was a lengthy hearing.

[00:36:49] Speaker 03:
We had on PowerPoint slides presented by DIRT, the testimony they were talking about.

[00:36:55] Speaker 03:
And on my rebuttal, I walked through the Q&A.

[00:36:58] Speaker 03:
and showed why it is that, based on the narrow questions that they were asking, which was talking about a particular way of bodily incorporating, where you change nothing in Wraith and you added something from EVH, or you added something from you, or you added something from McGregor.

[00:37:16] Speaker 03:
That was the framing of the question, is you aren't changing something in Wraith and you're just adding.

[00:37:22] Speaker 03:
His answers make complete sense.

[00:37:26] Speaker 03:
You wouldn't in the combination take what is in McGregor and put it in the glass panel.

[00:37:31] Speaker 03:
He was looking at additional functionality that you would have in that system.

[00:37:35] Speaker 03:
I'm not going to have the glass.

[00:37:37] Speaker 03:
I'm hanging a television there instead.

[00:37:39] Speaker 03:
So I'm using the support or how a person of ordinary skill in the art would modify it to have that horizontal support or stringer between the verticals and wraith to support the television.

[00:37:54] Speaker 00:
You know, the answer... Okay, we understand your point.

[00:37:56] Speaker 03:
So I'm just going back.

[00:37:57] Speaker 00:
You're way out of time.

[00:38:01] Speaker 00:
As I said, I'll give you the three minutes back, even though you weren't away all the time, too.

[00:38:05] Speaker 00:
So I'm trying to keep it even.

[00:38:06] Speaker 03:
Yes, thank you, Your Honor.

[00:38:11] Speaker 04:
Thank you, Your Honor.

[00:38:12] Speaker 04:
A few very quick points.

[00:38:15] Speaker 04:
First, on the SAS Institute issue, this Court's PGES case gives this Court authority

[00:38:21] Speaker 04:
to found that this court has jurisdiction to render a decision on an appeal, even when there were non-instituted claims.

[00:38:29] Speaker 04:
So we believe that the court has jurisdiction to do that.

[00:38:31] Speaker 04:
And under Section 706, this court would be only vacating the portion of the PTAP's finding of non-institution.

[00:38:41] Speaker 04:
So that's how you can deal with the Section 706.

[00:38:44] Speaker 04:
Turning to the merits, Your Honor noted that Dr. Beeman's declaration

[00:38:51] Speaker 04:
Why is it not deficient?

[00:38:53] Speaker 04:
Because it doesn't say how you would incorporate it.

[00:38:55] Speaker 04:
Well, that's particularly a good point in this case because the claims require it to be incorporated and to be affixed.

[00:39:03] Speaker 04:
And on the one hand, the Petitioner says, well, it wouldn't require any new parts.

[00:39:08] Speaker 04:
But then on the other hand, you have to incorporate new parts.

[00:39:11] Speaker 04:
As counsel just said, you need nuts and bolts and brackets and so forth to do the affixing required to meet the claims.

[00:39:17] Speaker 04:
And so they're trying to have it both ways.

[00:39:19] Speaker 04:
saying, well, you wouldn't need new parts, but then we have to have new parts to get the benefits.

[00:39:24] Speaker 04:
And so they're completely inconsistent.

[00:39:27] Speaker 04:
Council also talked about McGregor and how you would import the horizontal structure from McGregor to hang accessories and components.

[00:39:35] Speaker 04:
But when asked once again on cross-examination, Dr. Beeman said, actually, I didn't focus on that particular part of the Wraith patent, but it looks like you can handle accessories with hook 77 and support bracket 77.

[00:39:47] Speaker 04:
And he also said, I'd have to go back and look at Wraith more carefully about the accessory part, which I overlooked.

[00:39:53] Speaker 04:
When he rendered his opinion, he didn't even know or understand that Wraith already allows you to support the accessories and things that they say is a motivation to combine McGregor.

[00:40:03] Speaker 04:
I mean, the declaration is just completely deficient, and that was exposed in the cross-examination.

[00:40:08] Speaker 04:
And about whether to believe the declaration or the cross-examination, the court of claims held in the Colwell case

[00:40:17] Speaker 04:
quote, we have emphasized the inherent superiority of testimony subject to cross-examination to that given in an ex parte situation.

[00:40:26] Speaker 04:
And in that court, in that case, the court did exactly what we're asking here, to find that the Board erred in believing the declaration which was written in the office of the attorney with review and revise and no cross-examination over live testimony where he gave it in his own words

[00:40:47] Speaker 04:
where he was subject to the crucible of cross-examination, where we could really test the veracity of what he said.

[00:40:53] Speaker 04:
And because the board didn't have the opportunity to observe his demeanor and so forth during testimony, they were both submitted on paper, it's absolute error for them to credit the declaration over the cross-examination testimony.

[00:41:09] Speaker 04:
I see that I am out of time.

[00:41:10] Speaker 04:
If the court has questions, I'd be happy to respond.

[00:41:12] Speaker 00:
No, thank you.

[00:41:13] Speaker 04:
Thank you.