[00:00:03] Speaker 02:
Oh.

[00:00:48] Speaker 01:
Okay, our second case this morning is number 17-1946 L.F.

[00:00:52] Speaker 01:
Centennial Limited versus Anshu.

[00:00:56] Speaker 01:
Mr. Holmes.

[00:01:04] Speaker 04:
Good morning, Your Honors.

[00:01:05] Speaker 04:
May it please the Court.

[00:01:07] Speaker 04:
The case we have for you today is an appeal from a final rejection of claims in an inter-parties re-exam.

[00:01:16] Speaker 04:
Claims 1 and 2 were rejected as being obvious over the FAVSO2 instruction sheet.

[00:01:22] Speaker 04:
And as well, dependent claims through to 8 were also rejected as being obvious over the same reference in view of the Braytech catalog.

[00:01:30] Speaker 04:
I'd like to address two issues this morning, one being the status of the FAVSO2 instruction sheet as a printed publication.

[00:01:38] Speaker 04:
And then the second issue is the board's construction of the phrase, secured to said backside of said console.

[00:01:45] Speaker 01:
Could you help me with the claim construction?

[00:01:48] Speaker 01:
I don't understand.

[00:01:50] Speaker 01:
This is an oddly written claim, but these various limitations saying said kit, that sounds as though it's just a requirement that these parts be capable of doing something.

[00:02:06] Speaker 01:
Why is everybody looking to find something in the prior art

[00:02:15] Speaker 01:
where the thing was actually done.

[00:02:17] Speaker 01:
That doesn't seem to be the issue under the claim.

[00:02:20] Speaker 01:
The issue is whether the parts are capable of doing that.

[00:02:24] Speaker 04:
You're correct, Your Honor, and I'm not going to actually focus on the obviousness issue of whether the FAVSO2 instruction shows the three configurations for the kit.

[00:02:36] Speaker 04:
The issue I'd like to focus on is very specifically whether the spine is secured to

[00:02:44] Speaker 04:
the backside of the console.

[00:02:47] Speaker 04:
And what we think is in the FAVSO2 instruction sheet that that device is not capable of doing that.

[00:02:55] Speaker 04:
The FAVSO2 instruction sheet shows a unit that... Okay, so that's in the third limitation here, right?

[00:03:01] Speaker 04:
Yes, Your Honor.

[00:03:02] Speaker 04:
That shows a unit that has glass shelves and the legs and the spine of that unit secure through the shelves with threaded posts.

[00:03:14] Speaker 04:
And the board at the lower finding indicated they actually specifically found that it did that.

[00:03:23] Speaker 04:
It secured through the shelves and was not secured to the backside.

[00:03:29] Speaker 04:
But they nevertheless found that that statement in the claim was broad enough to read to cover that embodiment.

[00:03:39] Speaker 04:
So they're basically saying that a unit that has

[00:03:43] Speaker 04:
A spine that extends through the shelf adjacent to the back is the same as a unit that has a spine that's secured with fasteners through the rear to shelf supports, where it sits on the back side of the unit and is secured with fasteners through that spine into the shelf supports.

[00:04:05] Speaker 04:
And that's where we find we feel that the board's

[00:04:10] Speaker 04:
construction of that was a broadest possible interpretation rather than a broadest reasonable interpretation in light of the claims and in light of the specification.

[00:04:19] Speaker 04:
The drawings clearly show in the patent that the only embodiments that are shown are a single long spine that's secured to the shelf supports with the fasteners at the backside.

[00:04:38] Speaker 04:
And therefore, we think that

[00:04:40] Speaker 04:
the board's construction of adjacent to or secured adjacent through an area near the back was overly broad.

[00:04:51] Speaker 04:
We just think it was a possible broadest construction.

[00:04:54] Speaker 04:
Our primary alliance for that position is really based on the Microsoft case, Microsoft versus Proxycon.

[00:05:03] Speaker 04:
And that was at 781 F third, 1298.

[00:05:09] Speaker 04:
That case indicates that even when giving claims their broadest reasonable interpretation, the board cannot construe claims so broadly that its constructions are unreasonable under general claim construction principles.

[00:05:24] Speaker 04:
And we actually had a prior construction of that specific term in a related court case.

[00:05:30] Speaker 04:
In that case, the Markhamen construction was

[00:05:38] Speaker 04:
secured to the backside of said console means fastened to a surface on the back.

[00:05:45] Speaker 04:
And therefore, the board argued that they didn't need to adopt that because it's the broadest reasonable interpretation of the claims versus a Markman construction, which could be narrower, but it doesn't necessarily have to be narrower.

[00:06:05] Speaker 04:
In the lower court case, the

[00:06:10] Speaker 04:
the defendants actually asked for a much narrower construction.

[00:06:14] Speaker 04:
They actually asked that the construction be that the unit be secured, that it have upper and lower shelves, and that the spine be secured to those upper and lower shelves.

[00:06:24] Speaker 02:
What's the basis for your objection to the instruction sheet as a prior printed publication?

[00:06:30] Speaker 04:
My objection to that instruction sheet as a prior printed publication is we don't believe that the evidence of record

[00:06:38] Speaker 04:
is sufficient to support the substantial evidence.

[00:06:41] Speaker 02:
In what particular way?

[00:06:43] Speaker 04:
So if we look at what exactly the evidence is in the case, we have the declaration of Steve Sculler, who is the CEO of the requester, the third party requester.

[00:06:55] Speaker 04:
He indicates that he flew to China to Bratech showroom in April of 2006, and he received that instruction sheet

[00:07:07] Speaker 04:
in during an inquiry into the bank.

[00:07:09] Speaker 02:
And he's an interested party?

[00:07:11] Speaker 04:
He is an interested party.

[00:07:12] Speaker 02:
Is it your view that his testimony has to be corroborated?

[00:07:16] Speaker 04:
It actually is my view.

[00:07:18] Speaker 04:
That's what I would like the position of the court to be in this case, is that it needs to be corroborated.

[00:07:23] Speaker 04:
I know this isn't an interference case.

[00:07:25] Speaker 04:
In interference cases at the board, our case law is broader than that.

[00:07:31] Speaker 02:
I'm sorry?

[00:07:31] Speaker 02:
Our case law is broader than in the interference concept.

[00:07:34] Speaker 02:
We've said generally.

[00:07:36] Speaker 02:
Inventor's testimony has to be corroborated.

[00:07:39] Speaker 04:
OK.

[00:07:40] Speaker 04:
Yes, I would agree with that.

[00:07:41] Speaker 04:
The inventor's testimony would need to be corroborated.

[00:07:45] Speaker 04:
Here we have a third party requester who's given a very limited statement as to, I flew to China.

[00:07:52] Speaker 04:
There is no indication of the exact date he flew to China.

[00:07:55] Speaker 04:
There's no indication of actually even where Braytech's showroom is.

[00:07:58] Speaker 04:
There is an address on the Braytech catalog.

[00:08:01] Speaker 00:
Well, let's just assume for the moment that a declarant doesn't have to

[00:08:06] Speaker 00:
give all those blow-by-blow details in a declaration.

[00:08:10] Speaker 00:
But what we have here is something that supports Mr. Sculler's story.

[00:08:18] Speaker 00:
And I don't know if it's enough.

[00:08:20] Speaker 00:
Maybe it is.

[00:08:21] Speaker 00:
But the story is the Braitech catalog that came out in 2006 shows a photograph of this particular TV console.

[00:08:33] Speaker 00:
Then there's the Consumer Electronic Show Daily.

[00:08:36] Speaker 00:
which also Braytech is advertising and promoting a picture of this very particular television console.

[00:08:44] Speaker 00:
And so let's assume for the moment that we accept and defer to the fact finding that those documents show that this product existed and was on sale and commercially available to anybody and it was widely advertised through the

[00:09:04] Speaker 00:
consumer electronics daily as well as through the Braytech catalog that was available at the show.

[00:09:12] Speaker 00:
So then the question is, well, with multi-component products like this that require assembly, is it a reasonable inference for the board to find that multi-component products like this that require assembly would come with some kind of instruction sheet on how to assemble said

[00:09:34] Speaker 00:
multi-component product.

[00:09:37] Speaker 04:
Yes, I would agree 100% that if the unit was for sale at that point, it's likely that it would have had an instruction sheet with it.

[00:09:49] Speaker 00:
And so therefore, we're not living in a world where we have nothing more than Mr. Sculler's declaration that he flew to China, went to a showroom, picked up the instruction sheet, where

[00:10:03] Speaker 00:
We're looking at that declaration in the context of these other pieces of evidence, which are probative and tend to show and confirm his story that there were instruction sheets that existed in 2006.

[00:10:18] Speaker 04:
OK, what I would argue, Your Honor, is that the evidence in the Brita catalog is evidence that the unit existed.

[00:10:27] Speaker 04:
Somebody obviously took a photograph of it.

[00:10:29] Speaker 04:
So there must have been a prototype available, so I would agree there But the declarants did not provide any evidence that the unit was actually for sale It was advertised that it might be available But that doesn't meant there was the brain tech catalog didn't have any prices in it which means it was probably a distributor's catalog and To indicate that this item might be available But it's often in the furniture industry that the CES show and these other shows are

[00:10:59] Speaker 04:
kind of testing grounds for products where they will bring them to the show, show them, but they may not have any inventory in stock as of then.

[00:11:08] Speaker 00:
And I know that nobody testified to that.

[00:11:10] Speaker 00:
Is that your pivot point in this case, that maybe we don't know if the catalog and the CES daily advertisement are actually evidence that the product was on sale at that moment?

[00:11:24] Speaker 04:
That's exactly my point, Your Honor.

[00:11:25] Speaker 00:
But what if we

[00:11:28] Speaker 00:
disagree with that in the sense that we defer to the board who concluded otherwise that these things were on sale and therefore it's a natural inference to believe that when it comes in the box you're going to find an instruction sheet in there.

[00:11:43] Speaker 04:
Right.

[00:11:44] Speaker 04:
That is a natural inference.

[00:11:46] Speaker 04:
But I would argue that the evidence isn't enough to find that it's on sale.

[00:11:51] Speaker 04:
It's actually been on sale.

[00:11:52] Speaker 04:
Actually Judge McCarthy at the board agreed with that position.

[00:11:56] Speaker 04:
The only reason that Judge McCarthy eventually found that it was a printed publication was that he accepted the testimony of Steve Sculler that the instruction sheet was available when he went to go get it in China, and that the Braintech catalog did not indicate that it was physical.

[00:12:13] Speaker 04:
He didn't find, he didn't agree with the majority that they found that it was a commercial product, that it was for sale.

[00:12:20] Speaker 01:
What is the instruction sheet used for to show here?

[00:12:24] Speaker 04:
The instruction sheet is used to show by the requester that it's the primary reference.

[00:12:32] Speaker 04:
So it's used to show that the parts are there and that they're assembled in the way that the claim instructs.

[00:12:37] Speaker 02:
It shows you how to put it together?

[00:12:39] Speaker 04:
It shows you how to put it together.

[00:12:40] Speaker 01:
Where does the claim require that the

[00:12:46] Speaker 01:
put it together in a particular way.

[00:12:48] Speaker 01:
I thought you agreed earlier that these last three limitations, the said limitations, are just limitations about what it's capable of doing.

[00:12:59] Speaker 04:
You're absolutely right, Your Honor.

[00:13:00] Speaker 04:
The claim does require those, and the assembly instruction does not show those other two.

[00:13:06] Speaker 04:
We did argue that in the brief, but that wasn't my primary argument that I was going to focus on here this morning.

[00:13:14] Speaker 01:
and then save the rest of your time for rebuttal?

[00:13:17] Speaker 04:
Actually, yes, Your Honor.

[00:13:18] Speaker 04:
That would be great.

[00:13:18] Speaker 04:
Thank you.

[00:13:26] Speaker 01:
Mr. Foreman.

[00:13:35] Speaker 03:
Thank you, and may it please the Court.

[00:13:37] Speaker 03:
I'll start with the printing publication issue.

[00:13:40] Speaker 03:
There was substantial evidence

[00:13:43] Speaker 03:
that the board relied on to find that the instruction sheet and the Braytech catalog were both printed publications before the August 2007 filing date of the patent.

[00:13:54] Speaker 02:
Actual evidence or inferences drawn from the evidence?

[00:13:58] Speaker 03:
Well, first we have the Scholar Declaration, which I acknowledge that Mr. Scholar is an interested witness.

[00:14:05] Speaker 03:
But there have been prior cases from this court, specifically the enhanced security research case, which was another

[00:14:13] Speaker 03:
case from the office where there was a declaration from an interested witness that the border lied on and this court confirmed.

[00:14:23] Speaker 00:
So I don't think just the fact that Mr. Scholar... But would you agree that if the record had nothing more than Mr. Scholar's declaration, then that wouldn't be enough?

[00:14:33] Speaker 00:
Or do you think that would be enough?

[00:14:35] Speaker 03:
I think that would be enough.

[00:14:36] Speaker 03:
I don't see any requirement to corroborate his testimony.

[00:14:41] Speaker 02:
The enhanced security research.

[00:14:43] Speaker 02:
What do you do with the Lazar Kaplan case?

[00:14:46] Speaker 02:
Excuse me?

[00:14:46] Speaker 02:
It says, generally, corroboration is required of any witness whose testimony alone is asserted to invalidate a patent.

[00:14:55] Speaker 03:
I'm not sure, Your Honor.

[00:14:57] Speaker 03:
I just know the enhanced.

[00:14:58] Speaker 02:
That's not an interference case.

[00:14:59] Speaker 02:
That's a general real sight in cases.

[00:15:01] Speaker 02:
And we basically don't rely on uncorroborated.

[00:15:06] Speaker 02:
It goes back to Woodland Trust.

[00:15:09] Speaker 03:
I understand, Your Honor.

[00:15:10] Speaker 03:
In the enhanced security research case, which was another case about whether a document was a printed publication, this court relied on a declaration from an interested witness.

[00:15:19] Speaker 00:
But that wasn't the only piece of evidence in the record, right?

[00:15:24] Speaker 00:
There were other things that were taken into account in combination with the interested witness's declaration that ultimately led to an affirmance that it was a printed publication.

[00:15:34] Speaker 03:
In that case, Your Honor, the document had a date on it.

[00:15:38] Speaker 03:
I believe it was a month and a year.

[00:15:40] Speaker 03:
But there was a question of whether that document was, in fact, a draft or a document that was actually published.

[00:15:47] Speaker 03:
And then the declaration came in saying that that document was actually published and not a draft.

[00:15:55] Speaker 03:
But there was nothing corroborating that fact from the declaration.

[00:16:02] Speaker 03:
But regardless, we have corroborating evidence in this case.

[00:16:07] Speaker 03:
Britech 2006 catalog, which clearly shows the product.

[00:16:12] Speaker 02:
Just focus on the notion that I realize that your adversary said that he believes that there's an inference that can be drawn if a particle is for sale, the instructions will be in the box.

[00:16:26] Speaker 02:
Correct.

[00:16:26] Speaker 02:
And that's what the board is relying on.

[00:16:29] Speaker 02:
They make that inference, right?

[00:16:31] Speaker 02:
Correct.

[00:16:32] Speaker 02:
But there is no factual.

[00:16:33] Speaker 02:
So the only factual support would be Mark Spiller's testimony, right?

[00:16:40] Speaker 02:
Mark said, when I bought the product in 2012, there was an instruction sheet in it.

[00:16:44] Speaker 03:
Correct.

[00:16:45] Speaker 02:
But I didn't see any other evidence in the record supporting the notion factually as opposed to inferentially that an instruction sheet would be in the box.

[00:16:54] Speaker 03:
Correct.

[00:16:56] Speaker 03:
There's no direct evidence that this product was for sale

[00:17:01] Speaker 03:
in 2006.

[00:17:01] Speaker 02:
No, no, I'm just talking about with the instruction in the box.

[00:17:05] Speaker 02:
Correct.

[00:17:06] Speaker 02:
And that's Mark, right?

[00:17:07] Speaker 03:
Mark said in 2012 he bought the product with the instruction.

[00:17:10] Speaker 02:
And in footnote 10, you walk away from Mark.

[00:17:14] Speaker 02:
Well, yeah, I mean that... Because he's interested.

[00:17:17] Speaker 03:
No, because I don't think that buying in 2012 necessarily shows that it was available in 2006.

[00:17:25] Speaker 03:
I mean, I just think that the other evidence that we have in this case is stronger than that.

[00:17:29] Speaker 03:
We didn't really need to rely on that.

[00:17:31] Speaker 00:
But I guess maybe Mark Scholar's declaration just confirms the inference that multi-component products are sold with instruction assembly sheets.

[00:17:44] Speaker 03:
Correct.

[00:17:44] Speaker 03:
And I heard today that the opposing console doesn't seem to question that, that when you buy something like this television console in general, it comes with an instruction sheet.

[00:17:56] Speaker 01:
I don't understand what the instruction sheet is used for here.

[00:17:59] Speaker 01:
The catalog shows the parts, right?

[00:18:03] Speaker 01:
But this isn't a claim to a particular product that's in a particular configuration.

[00:18:09] Speaker 01:
It's just the last three limitations here talk about it's being capable of doing these things.

[00:18:16] Speaker 01:
So why is everybody concerned about whether the instruction sheet showed the thing being constructed in a particular configuration when the claim doesn't address itself to that?

[00:18:28] Speaker 02:
For whatever reason, the re-examiner hung himself with the instruction sheet, right?

[00:18:30] Speaker 02:
For whatever reason, the re-examiner hung himself with the instruction sheet, right?

[00:18:33] Speaker 02:
For whatever reason, the re-examiner hung himself with the instruction sheet, right?

[00:18:36] Speaker 02:
For whatever reason, the re-examiner hung himself with the instruction sheet, right?

[00:18:38] Speaker 03:
For whatever reason, the re-examiner hung himself with the instruction sheet, right?

[00:18:40] Speaker 03:
For whatever reason, the re-examiner hung himself with the instruction sheet, right?

[00:18:43] Speaker 03:
For whatever reason, the re-examiner hung himself with the instruction sheet, right?

[00:18:45] Speaker 03:
For whatever reason, the re-examiner hung himself with the instruction sheet, right?

[00:18:48] Speaker 03:
For whatever reason, the re-examiner hung himself with the instruction sheet, right?

[00:18:51] Speaker 03:
For whatever reason, the re-examiner hung himself with the instruction sheet, right?

[00:18:54] Speaker 01:
For whatever reason, the re-examiner hung himself with the instruction sheet, right?

[00:18:56] Speaker 01:
For whatever reason, the re-examiner hung himself with the instruction

[00:18:58] Speaker 01:
the construction of the claim, that it have these parts which are capable of doing being attached together in a particular construction.

[00:19:08] Speaker 01:
It's not a claim to a particular configuration, right?

[00:19:13] Speaker 03:
Correct.

[00:19:13] Speaker 03:
And I think that the CES Daily document could have served as the prior reference here.

[00:19:19] Speaker 03:
And I think the board even noted that, but it wasn't.

[00:19:22] Speaker 03:
So we have to go with that.

[00:19:24] Speaker 02:
It's a process case.

[00:19:26] Speaker 02:
Excuse me?

[00:19:26] Speaker 02:
It's a process case.

[00:19:28] Speaker 02:
It's a question of was the examiner right on the grounds that the examiner expressed.

[00:19:33] Speaker 03:
Yes, correct.

[00:19:34] Speaker 02:
And now the question of whether or not the examiner could have been right if he hadn't used the instruction sheet.

[00:19:40] Speaker 03:
Correct.

[00:19:40] Speaker 03:
And I think that even though the instruction sheet may make it a little more of a difficult case as compared to the CES daily document, there's still sufficient evidence here.

[00:19:51] Speaker 03:
We have the Braytech catalog.

[00:19:52] Speaker 03:
We have the CES daily.

[00:19:54] Speaker 03:
the declarations, I think all of those put together are enough to get the broad substantial evidence of print publication.

[00:20:02] Speaker 01:
Any other questions?

[00:20:04] Speaker 01:
No.

[00:20:05] Speaker 01:
OK.

[00:20:05] Speaker 01:
Thank you, Mr. Holmes.

[00:20:08] Speaker 01:
Mr. Holmes?

[00:20:12] Speaker 04:
Yes, thank you, Your Honor.

[00:20:14] Speaker 04:
I'd just like to clarify a couple of issues.

[00:20:16] Speaker 04:
On the corroboration for the print publication, I believe opposing counsel indicated that the

[00:20:24] Speaker 04:
The declaration that was in that case was by an interested witness, but I'm not sure that I read the case that way.

[00:20:31] Speaker 04:
That was an ex parte re-examination.

[00:20:35] Speaker 00:
Is this enhanced security research you're talking about?

[00:20:37] Speaker 00:
Yes, your honor.

[00:20:38] Speaker 00:
I'm guessing he was referring to the dissent there, which describes the declaration as coming from an interested witness.

[00:20:46] Speaker 04:
OK.

[00:20:47] Speaker 04:
I mean, the way that I read the main opinion was that it came from a third party and that it didn't indicate that.

[00:20:55] Speaker 04:
The gentleman that gave the CEO of the company that gave the declaration was actually an interesting party.

[00:21:05] Speaker 04:
But in any event, the other cases that are relied upon for the corroboration or the type of declaration, the Henry Natures Remedies case, which was cited, was a third party that testified as to a public record.

[00:21:20] Speaker 04:
That was the Danish Open Files Act.

[00:21:24] Speaker 04:
And there was a government official that was giving that declaration, so they were not an interested party.

[00:21:30] Speaker 04:
The other cases that are kind of critical in this area is Inray Hall was a third-party librarian testifying about a document in a library.

[00:21:39] Speaker 04:
And then the Inray Wire, Inray Lister, and the Brucklemar cases are all documents that relate to public records, which are held by either the Australian Patent Office, the Copyright Office, or in the Brucklemar case, the Canadian Patent Office.

[00:21:54] Speaker 01:
corroboration for the testimony.

[00:21:56] Speaker 04:
So why is it the catalog corroboration for the testimony?

[00:22:01] Speaker 04:
Well, the testimony itself indicates that the assembly instruction is what was used for the rejection.

[00:22:11] Speaker 04:
So the assembly instruction is the primary reference.

[00:22:14] Speaker 04:
So it's not the catalog, and it's not the picture.

[00:22:16] Speaker 01:
No, but I'm asking it's not the catalog that's the prior reference.

[00:22:19] Speaker 01:
But why isn't it corroboration for the instruction?

[00:22:23] Speaker 04:
The catalog reference indicates that it was a product, but it didn't have any sales information.

[00:22:28] Speaker 04:
It didn't have a price index.

[00:22:31] Speaker 04:
It didn't actually indicate that it was for sale.

[00:22:35] Speaker 04:
There's no direct evidence from the catalog.

[00:22:37] Speaker 04:
The direct evidence you can infer from the catalog is that there was a unit, that somebody took a picture of it, and that they may have been ready to build it.

[00:22:46] Speaker 01:
It had these parts, right?

[00:22:48] Speaker 04:
And it had the parts.

[00:22:49] Speaker 04:
Now, that's my next point that I was going to key into.

[00:22:56] Speaker 04:
Your indication that the catalog by itself showed all parts.

[00:23:02] Speaker 04:
But if you look specifically at the CES Daily and that picture, it doesn't really show all the parts to go together.

[00:23:10] Speaker 04:
I believe that the requester didn't use the catalog itself as their primary reference.

[00:23:16] Speaker 04:
And the rejection was that because

[00:23:17] Speaker 04:
They didn't feel it showed enough of the parts and how they were assembled in order to read upon the claim.

[00:23:22] Speaker 01:
But the claim doesn't cover how it's put together.

[00:23:25] Speaker 01:
I'm sorry?

[00:23:26] Speaker 01:
The claim doesn't cover how it's put together.

[00:23:29] Speaker 04:
The claim covers in parts of the other functional language at the moment how it's assembled in different configurations.

[00:23:36] Speaker 01:
How it's capable of being assembled.

[00:23:38] Speaker 04:
Correct.

[00:23:40] Speaker 04:
Correct.

[00:23:43] Speaker 01:
OK.

[00:23:44] Speaker 01:
Anything else?

[00:23:45] Speaker 01:
All right.

[00:23:45] Speaker 01:
Thank you.

[00:23:46] Speaker 01:
Thank both counsels.

[00:23:47] Speaker 01:
Thank you, Your Honor.