[00:00:00] Speaker 01:
This is completely water.

[00:00:39] Speaker 01:
Okay, our next case this morning is number 18-1745 Poly Group Limited versus Willis Electric.

[00:01:06] Speaker 01:
We'll wait a moment until we get this cleaned up.

[00:01:48] Speaker 01:
Okay, Mr. Engel, is that how you pronounce it?

[00:01:55] Speaker 03:
May it please the Court.

[00:01:56] Speaker 03:
The overarching issue in this appeal is the jury's improper construction of tree portion.

[00:02:01] Speaker 01:
It took a simple two-word phrase... Could you move the microphone over a little bit so that... Towards me?

[00:02:05] Speaker 01:
The other way.

[00:02:07] Speaker 01:
Try that.

[00:02:07] Speaker 01:
Is that better?

[00:02:11] Speaker 01:
I think.

[00:02:11] Speaker 01:
Okay.

[00:02:14] Speaker 03:
Closer.

[00:02:15] Speaker 03:
The majority took a simple two-word phrase, tree portion, and construed to be... Let me ask you a question.

[00:02:21] Speaker 01:
Suppose we agree with you that there's no non-detachability requirement here, and that the board heard in that respect.

[00:02:31] Speaker 01:
Okay, let's just assume that, hypothetically.

[00:02:34] Speaker 01:
As I understand it, there are three patents that are involved in this case, the 056, the 186, and the 187.

[00:02:42] Speaker 01:
And the question then would become whether this rotatability requirement was satisfied, correct?

[00:02:52] Speaker 03:
Your Honor, unfortunately, I couldn't hear the first part of your question.

[00:02:57] Speaker 01:
I say let's assume for the moment that the board was incorrect.

[00:03:02] Speaker 01:
in saying that there was a non-detachability requirement.

[00:03:08] Speaker 03:
Okay?

[00:03:09] Speaker 03:
A non-what?

[00:03:10] Speaker 01:
Detachability.

[00:03:11] Speaker 03:
Thank you.

[00:03:11] Speaker 03:
Thank you.

[00:03:12] Speaker 03:
I'm sorry.

[00:03:13] Speaker 01:
And that leaves the issue of rotatable, right?

[00:03:20] Speaker 03:
I guess, Your Honor.

[00:03:22] Speaker 03:
I'm having a hard time understanding your question.

[00:03:24] Speaker 02:
We agree with you, I would think, but don't you still lose because there's no motivation to combine all these references that gets you to the rotatable.

[00:03:35] Speaker 03:
Thank you, Your Honor.

[00:03:36] Speaker 03:
I understand that question better.

[00:03:37] Speaker 01:
Okay, now, just hold on a second.

[00:03:40] Speaker 01:
My understanding is that with respect to claim 15 of the 186 and claims 10 and 13 of the 187,

[00:03:53] Speaker 01:
that there's a specific requirement for a coaxial connect, right?

[00:03:58] Speaker 01:
I believe that's correct, Your Honor.

[00:04:00] Speaker 01:
So if we were to say that you didn't properly raise Otto and Jumo wasn't relevant prior art, you'd lose on those three claims, correct?

[00:04:13] Speaker 03:
Your Honor, I don't agree with that.

[00:04:16] Speaker 03:
I'm trying to answer both questions.

[00:04:19] Speaker 03:
I'm not sure which one to answer first.

[00:04:21] Speaker 03:
Yes, Your Honor.

[00:04:23] Speaker 03:
I don't believe so, Your Honor, because as the dissent pointed out,

[00:04:27] Speaker 03:
Miller, by itself, or Miller provided with Otto, teaches all of those elements.

[00:04:32] Speaker 01:
Well, no, no, no, wait.

[00:04:34] Speaker 01:
It doesn't teach the coaxial connection, Miller doesn't, unless it's combined with Otto or Jumo, right?

[00:04:42] Speaker 03:
Your Honor, the way Miller works, it's got a loose... No, wait, wait, wait.

[00:04:47] Speaker 01:
That's correct.

[00:04:48] Speaker 01:
You've got three claims here which specifically talk about a coaxial connector, right?

[00:04:54] Speaker 01:
Miller does not show a coaxial connector, correct?

[00:04:57] Speaker 01:
Correct.

[00:04:58] Speaker 01:
And so in order to show obviousness of those three claims, you have to bring in Otto or Jumo, correct?

[00:05:06] Speaker 01:
Correct.

[00:05:07] Speaker ?:
Okay.

[00:05:07] Speaker 01:
And if we were to hold that you didn't specifically raise Otto sufficiently to make it relevant and that Jumo was not relevant prior art, then you'd lose as to those three claims, right?

[00:05:24] Speaker 01:
As to the hypothetical, yes, Your Honor.

[00:05:26] Speaker 01:
Okay.

[00:05:27] Speaker 01:
So you have remaining claims which have the rotatability requirement but not a specific reference to coaxial, right?

[00:05:34] Speaker 01:
Correct.

[00:05:35] Speaker 01:
Okay.

[00:05:36] Speaker 01:
So the question is,

[00:05:37] Speaker 01:
as to those three claims, does Miller, as to those other claims, other than the three claims, does Miller satisfy the rotatable requirement?

[00:05:47] Speaker 03:
Your Honor, we believe it does.

[00:05:48] Speaker 03:
That's what we argued in our petition, that Miller teaches all the elements of most of the challenge claims, with the exception of the three that you mentioned.

[00:05:55] Speaker 03:
And we only rely on Otto and Le Jumeau to the limited extent that Willis was challenging whether Miller actually taught those.

[00:06:03] Speaker 03:
And Willis didn't dispute that Miller actually taught those other elements.

[00:06:07] Speaker 03:
Instead, Willis predicated its defense on the tree portion construction that the majority ultimately adopted, and it was found to be, or we contend, is improper and needs to be reversed.

[00:06:18] Speaker 02:
So you're suggesting that in your petitions you have an argument for a single reference obviousness case based upon Miller.

[00:06:30] Speaker 03:
Your honor, the arguments set forth in our petition lay out that we are relying on Miller with respect to each of the claims.

[00:06:36] Speaker 02:
Can you tell me where that is in your petition?

[00:06:39] Speaker 03:
Your honor, of course.

[00:06:47] Speaker 03:
If you look

[00:06:49] Speaker 03:
at appendix pages.

[00:06:57] Speaker 03:
So where we do the element by element analysis, Your Honor, starts at appendix 360.

[00:07:03] Speaker 03:
This is just an example, of course.

[00:07:07] Speaker 03:
This is from the petition.

[00:07:09] Speaker 03:
And this is volume one.

[00:07:14] Speaker 03:
Page 360, Your Honor.

[00:07:18] Speaker 01:
350, 60, and 360.

[00:07:22] Speaker 02:
So this is under the paragraph two that says, each element of claim 10 is found in Miller and you have found in Jumeau?

[00:07:30] Speaker 03:
Right, Your Honor.

[00:07:30] Speaker 03:
That's just the heading.

[00:07:31] Speaker 03:
But if you look at it, Your Honor, if you look at the detailed element by element, which follow some of the pages.

[00:07:37] Speaker 02:
You're suggesting that you don't have to lay out specifically for the board, that they have to read the full text of it to determine exactly what your arguments are.

[00:07:46] Speaker 03:
Well, Your Honor, it says element by element that we're relying on Miller specifically, and then says to the extent that Willis disputes it, we would turn to Otto or Jumo.

[00:07:56] Speaker 03:
At the time we filed the petition, of course, we didn't know what arguments that Willis was going to make, but we thought that Miller taught all the elements of most of those claims.

[00:08:04] Speaker 03:
And as this court held in here a new basis, the 841F2 966, Your Honor, that case you may recall, there the petitioner filed a 103 reference before the board that included a specific one of the references in the 103 combination, a specific figure, figure 18, that taught all the elements of the claims.

[00:08:24] Speaker 03:
The petition didn't specifically cite to or rely on Figure 18 as teaching all those elements, but the petition's reply did.

[00:08:31] Speaker 03:
The board ultimately found all the claims to be unpatentable based on Figure 18.

[00:08:36] Speaker 03:
On appeal, this court affirmed, finding that because the petition included an argument pointing to the specification that included the discussion of Figure 18, the patenter was on notice of the need to respond and failed to do so in the patenter's response.

[00:08:52] Speaker 03:
And so it upheld.

[00:08:53] Speaker 03:
In fact, this court went on to find that the board did not err by not considering issues of motivation to combine and not considering issues relating to the combined ability with the other references.

[00:09:03] Speaker 02:
But we don't have that situation here where the board understood your argument to be Miller alone, the board expressly

[00:09:10] Speaker 02:
saw this section as requiring the combination of Miller in light of Otto and Buhmann.

[00:09:17] Speaker 03:
Your Honor, one of the judges clearly did see it.

[00:09:19] Speaker 02:
But, you know, that's the dissent.

[00:09:21] Speaker 03:
I understand, Your Honor.

[00:09:22] Speaker 03:
But point being, at least one of the judges understood the argument.

[00:09:27] Speaker 03:
Willis was on notice that we were expressly reliant on Miller or Miller combined with Otto.

[00:09:32] Speaker 02:
I mean, are you suggesting the other judges didn't understand it?

[00:09:34] Speaker 02:
Because what you really meant was just Miller alone, even though you said Miller in line with Otto on GMO.

[00:09:40] Speaker 02:
Your Honor.

[00:09:41] Speaker 02:
I mean, clearly you could have written this better, this petition better.

[00:09:44] Speaker 02:
You could have said Miller discloses all of these in one round and then said, but if Miller's not enough, you can also do a three-rep topic.

[00:09:52] Speaker 02:
combination.

[00:09:53] Speaker 02:
You didn't do that.

[00:09:54] Speaker 02:
You jammed it all together into one section under a three reference heading.

[00:09:58] Speaker 03:
Your Honor, of course, in retrospect, it could have been done that way.

[00:10:02] Speaker 03:
I acknowledge that.

[00:10:03] Speaker 03:
Here, though, we explicitly rely on Miller and effectively challenge Willis to dispute us.

[00:10:08] Speaker 03:
We said, we rely on Miller, except to the extent you dispute it.

[00:10:12] Speaker 03:
And if you do, we rely on Otto and Jumo.

[00:10:15] Speaker 03:
And Willis didn't dispute it.

[00:10:17] Speaker 02:
Which claims, if we

[00:10:19] Speaker 02:
agree that you sufficiently raised Miller alone, which claims and which patent would you then have us reverse?

[00:10:27] Speaker 03:
Your Honor, I believe all of the grounds need to be reversed.

[00:10:31] Speaker 02:
No, no, no.

[00:10:33] Speaker 02:
We've already patented through the hypothetical.

[00:10:35] Speaker 02:
Let me say, I'm starting with the hypothetical about all the coaxial and stuff like that.

[00:10:39] Speaker 03:
Your Honor, I believe it's the claim, all the claims except for the ones mentioned by Your Honor moments ago.

[00:10:44] Speaker 03:
I don't recall them all exactly, but with respect to

[00:10:48] Speaker 03:
The majority of the claims here, almost all of them, in this case, we were asserting Miller as the primary reference against almost all of them.

[00:10:55] Speaker 03:
And then there were a few claims in the 056 patent where we relied on Hicks.

[00:11:00] Speaker 03:
And again, we made very clear we were relying on Hicks as teaching all the elements of the assertive claims under the challenge claims.

[00:11:08] Speaker 03:
And only we're looking to Otto or Jumo to the extent that it was a dispute as to whether Hicks actually taught those elements.

[00:11:16] Speaker 03:
And again, in that case, Willis did not dispute that Hicks actually taught those elements.

[00:11:23] Speaker 01:
Okay.

[00:11:23] Speaker 01:
Unless there are further questions about that.

[00:11:25] Speaker 01:
What question turned to the three claims that the question of Otto and Jumo, which are by your own admission necessary

[00:11:33] Speaker 01:
to find obvious the three claims that specifically refer to a coaxial connection, right?

[00:11:41] Speaker 01:
Okay, so with respect to auto, it would appear that you didn't really directly rely on the auto for the coaxial connector.

[00:11:50] Speaker 01:
Is that correct?

[00:11:51] Speaker 03:
Your Honor, we did specifically rely on Otto for the coaxial connector, and I can point you to the record for that.

[00:11:58] Speaker 03:
You'll find discussion of that at pages 347 through 350 of the appendix.

[00:12:04] Speaker 01:
Okay, well just show me a sentence where you rely on Otto for that.

[00:12:11] Speaker 01:
Do you look at...

[00:12:21] Speaker 01:
I guess it was 348, 349.

[00:12:25] Speaker 03:
Yeah, it's that whole two or three paragraphs we're discussing that very concept here on.

[00:12:30] Speaker 03:
That's what it's addressing.

[00:12:31] Speaker 01:
I thought there was someplace else in here where you said that you only relied on Otto to support the motivation or something like that.

[00:12:43] Speaker 03:
Your Honor, we also did make allegations that Otto provided inspiration and pointed to Jumo, because while Otto has a coaxial connector, the disclosure in Otto is not very detailed.

[00:12:53] Speaker 03:
Jumo provides additional detail, and I was explaining before, additional detail about the structure.

[00:13:04] Speaker 01:
And the board rejected the reliance on Jumo.

[00:13:09] Speaker 01:
because it was not relevant prior art, right?

[00:13:14] Speaker 03:
That's what it concluded, Your Honor, but in doing so, it erred in its consideration of the legal test that this Court has set up in determining analogous art.

[00:13:23] Speaker 03:
It failed to consider the reasonable pertinence or the field of endeavor as this Court has articulated.

[00:13:28] Speaker 03:
For the field of endeavor, for example, this court said an unwired planet is not limited to the narrowest possible conception of a field or the specific point of novelty.

[00:13:36] Speaker 03:
And yet the board here relied only on this narrowest conception of the field, saying it was just artificial trees with decorative lighting.

[00:13:43] Speaker 03:
And their only support for that were they pointed to where the pet in itself defined the field of invention.

[00:13:49] Speaker 03:
Likewise, with respect to the issue of reasonable pertinence,

[00:13:53] Speaker 03:
This court's decisions in ICON Health and Fitness and Ray Paulson show that's a very broad-based inquiry, such that a Murphy bed is reasonably pertinent to a folding treadmill mechanism, and a piano lid, and a kitchen cabinet are reasonably pertinent to the engine latch facility.

[00:14:07] Speaker 02:
What standard of review do we apply to the board's determination that something's not an alligator's heart?

[00:14:13] Speaker 03:
Your Honor, it's a question of fact.

[00:14:15] Speaker 03:
It's a factual question.

[00:14:16] Speaker 03:
It's a substantial evidence standard.

[00:14:18] Speaker 03:
But as this court pointed out in the Allergan versus Apotex case,

[00:14:22] Speaker 03:
when the board or in that case district court is misapplying the legal analysis that this court has set up and they must apply in determining those factual issues that underlie a question of obviousness, this court does not need to provide deference to that decision.

[00:14:39] Speaker 03:
And with the reasonable pertinence test, the majority are limited to consideration of

[00:14:47] Speaker 03:
assembly and disassembly relates to artificial treats.

[00:14:50] Speaker 03:
That's how to find them.

[00:14:51] Speaker 03:
But if you look at the pads and the disclosures in there, it actually addresses a number of problems much broader than that, including the electrical and mechanical connections between tubular parts and how you secure connectors in those parts, how you enable an electrical connection between components that is independent of the mechanical connection.

[00:15:09] Speaker 02:
In the cut files,

[00:15:11] Speaker 02:
artificial lighting in Christmas trees.

[00:15:14] Speaker 02:
I mean, what's an erroneous thought towards the determination that this path is directed at that world of endeavor?

[00:15:21] Speaker 02:
Your Honor,

[00:15:23] Speaker 02:
I mean, you want to say, well, all kinds of lighting outside of this are relevant, but isn't that a factual question for the board?

[00:15:30] Speaker 03:
Well, Your Honor, it is, but in determining the reasonable pertinence inquiries, this court is particular, we need to look at it broadly.

[00:15:36] Speaker 03:
They looked at the narrowest possible view of what the pen is addressed.

[00:15:40] Speaker 03:
I mean, an artificial Christmas tree is just a type of lighting instrument.

[00:15:47] Speaker 03:
Your Honor, I apologize for going through most of my rebuttal time.

[00:15:50] Speaker 03:
I'd like to reserve for a little bit.

[00:15:51] Speaker 01:
Okay, we'll give you two minutes for rebuttal.

[00:15:53] Speaker 01:
Thank you, Your Honor.

[00:15:54] Speaker 01:
Ms.

[00:15:55] Speaker 01:
Alton.

[00:16:15] Speaker 00:
Your Honor.

[00:16:15] Speaker 00:
May I please record?

[00:16:17] Speaker 01:
So put aside the three claims that specifically require a coaxial connector and look to Miller as to whether it satisfies this rotatable requirement which appears in the other claims.

[00:16:35] Speaker 01:
Did you ever argue that Miller doesn't satisfy the rotatable requirement?

[00:16:41] Speaker 00:
Yeah, and I argued that at least as clearly as they argued that there was a ground based on Miller.

[00:16:47] Speaker 01:
Well, I think pretty clearly they argued that Miller discloses the rotatable requirement.

[00:16:55] Speaker 01:
348, for example, there are three or four pages where they do that.

[00:16:59] Speaker 01:
Where did you respond to that argument and say that that's wrong, that Miller doesn't disclose the rotatable requirement?

[00:17:08] Speaker 01:
With regards to Miller, we said throughout our pleadings and proceedings, we submitted declarations to the effects that our... No, no, I want you to show me where in the record you responded to that argument, because the dissent before the board says that you never disputed it.

[00:17:27] Speaker 00:
The claim terms that would have been an issue had Miller been asserted as an independent ground are different claim terms than the ones that were construed in some respects.

[00:17:36] Speaker 01:
Please try to answer my question.

[00:17:38] Speaker 01:
Did you respond

[00:17:40] Speaker 01:
to the argument that Miller disclosed the rotatable requirement.

[00:17:44] Speaker 00:
The way in which we responded was that in our preliminary response, or in our response, not our preliminary response to the petition, in the fact sections of the argument we said that the invention related to a connector that was fixedly housed within the trunk portion.

[00:18:00] Speaker 00:
And there's various different claim terms that relate to that fixed house.

[00:18:05] Speaker 01:
So you argued for a construction that said not only does it have to be rotatable, but it has to be fixedly attached.

[00:18:12] Speaker 01:
Is that what it is?

[00:18:13] Speaker 00:
There are different claim terms in each of the independent claims that relates to the relationship between the connector and the trunk housing.

[00:18:20] Speaker 01:
So it's not, you didn't argue against the claim that Miller disclosed the rotatable requirement.

[00:18:28] Speaker 01:
You said there was another requirement in this connection about fixedly attached.

[00:18:33] Speaker 01:
Am I understanding that correctly?

[00:18:36] Speaker 01:
Is that correct, yes or no?

[00:18:39] Speaker 00:
Yes.

[00:18:40] Speaker 01:
Okay.

[00:18:41] Speaker 01:
So where do we find in the claims this fixedly requirement?

[00:18:51] Speaker 00:
Your Honor, had my client been on constitutionally appropriate notice that these grounds were being levied against us, we would have proffered terms for construction.

[00:19:01] Speaker 01:
Well, how can you argue that they didn't put you on notice?

[00:19:03] Speaker 01:
I mean, look at

[00:19:05] Speaker 01:
page 348, for example, as illustrated, Miller's strong and socket connectors are unconstrained within the hollow trunk and are therefore free to rotate within the trunk, enabling an actual electrical connection independent of rotational orientation.

[00:19:19] Speaker 01:
Why isn't that sufficient to raise the issue?

[00:19:22] Speaker 00:
Because, Your Honor, there is a statute that requires them to lay out the grounds with particularity, and there's also a statutory requirement that they lay out the identification of the grounds.

[00:19:33] Speaker 01:
No, you're not answering my question.

[00:19:34] Speaker 01:
Why does that not raise the issue?

[00:19:36] Speaker 00:
Because in the identification of the grounds section, and as instituted by the panel, they identified JUMMA.

[00:19:43] Speaker 00:
And if you're not saying that you're going to rely on JUMO as part of the ground, the only part of the ground that JUMO relied on was for the house.

[00:19:51] Speaker 01:
So it wasn't probably raised because they mentioned JUMO as well as Miller?

[00:19:56] Speaker 00:
The identification of the grounds said JUMO.

[00:19:58] Speaker 00:
No, wait, you're not answering my question.

[00:20:00] Speaker 01:
You're not answering my question.

[00:20:02] Speaker 01:
Is the argument that because they cited JUMO, they couldn't rely on Miller alone?

[00:20:08] Speaker 00:
I think that they could not rely on Miller alone unless they identified a ground based on Miller alone.

[00:20:14] Speaker 01:
So the contention is that while they raised the point, they weren't entitled to raise it because they had listed Jumo along with Miller.

[00:20:23] Speaker 01:
Is that the point?

[00:20:24] Speaker 00:
Perhaps they could have raised it.

[00:20:25] Speaker 01:
No, no.

[00:20:27] Speaker 01:
Answer.

[00:20:27] Speaker 01:
You have to answer my questions.

[00:20:29] Speaker 01:
You're here to answer questions.

[00:20:31] Speaker 00:
Yes.

[00:20:32] Speaker 00:
Your Honor, yes, I think that is the point.

[00:20:35] Speaker 02:
So your point is they're bound by the arguments they raised in the headings, even if the text of their document clearly argue Miller alone.

[00:20:45] Speaker 00:
Not just in the headings, but in the identification of the challenge that is statutorily mandated.

[00:20:51] Speaker 02:
What do you mean by identification?

[00:20:52] Speaker 00:
There is a separate section that's required in the CFR that says identification of the challenge.

[00:20:59] Speaker 00:
That's not the element by element argument.

[00:21:01] Speaker 02:
Okay, so throw that into the headings in section two.

[00:21:04] Speaker 02:
If despite that, in the text of their petition, they specifically said Miller alone discloses all of these arguments, why isn't that sufficient to put you and the board on notice that it's raising that argument?

[00:21:19] Speaker 00:
Whether we're on notice, I think, is a different question than whether it's an abuse of discretion to decline to consider an argument that was not clearly raised.

[00:21:28] Speaker 01:
Well, where did they say we're not going to consider the argument because it wasn't properly raised?

[00:21:33] Speaker 01:
Where does the majority of the board say that?

[00:21:35] Speaker 00:
In their final written decision.

[00:21:37] Speaker 01:
Show me where they said it.

[00:22:11] Speaker 00:
They identify the Appendix at 6.

[00:22:20] Speaker 00:
It's the identification of the grounds, the prior and asserted grounds.

[00:22:25] Speaker 00:
The same table that was provided by petitioner in their petitions.

[00:22:39] Speaker 01:
What am I looking at?

[00:22:40] Speaker 01:
Is this the institution decision?

[00:22:43] Speaker 00:
No, this is the final decision.

[00:22:44] Speaker 00:
This is the final decision?

[00:22:45] Speaker 00:
It's the same table as any institution decision.

[00:22:48] Speaker 01:
Okay, but where do they say that this argument about Miller wasn't properly written?

[00:22:52] Speaker 00:
There is also a footnote.

[00:23:08] Speaker 00:
31.

[00:23:09] Speaker 01:
On page 31.

[00:23:10] Speaker 00:
No, I'm sorry.

[00:23:12] Speaker 00:
It's footnote 31 on appendix 41.

[00:23:15] Speaker 00:
41.

[00:23:28] Speaker 01:
And we're in that footnote.

[00:23:30] Speaker 01:
Do they say this?

[00:23:32] Speaker 00:
In the middle of the footnote, petitioner provides no explanation of what structures would be obvious in view of Otto to satisfy the claim limitations.

[00:23:39] Speaker 00:
Thus, Zsumow is necessary to issue a statement.

[00:23:42] Speaker 01:
That's in view of Otto.

[00:23:44] Speaker 01:
Where does it say that they didn't rely on Miller alone, so they couldn't rely on Miller alone for this?

[00:23:51] Speaker 00:
They say that, they refer to the language that is, we may rely on Miller, and then say that what the patent owner may allege does not change the fact that petitioners set forth an obvious law containing and requiring the three references.

[00:24:06] Speaker 00:
It's in the middle of that long footnote.

[00:24:09] Speaker 00:
The three references, not the two.

[00:24:20] Speaker 01:
I'm not following where they say that Miller alone can't be relied on.

[00:24:28] Speaker 00:
We disagree with the dissent that Microsoft Corp would require us to consider a Miller alone obviousness ground.

[00:24:34] Speaker 00:
Microsoft stands for the premise that the board must consider all factual positions explicitly advanced within a given explicitly stated ground.

[00:24:41] Speaker 00:
It does not require or suggest, in our view, that we must consider grounds not explicitly stated.

[00:24:47] Speaker 00:
They explicitly stated their grounds in the identification of the grounds.

[00:24:52] Speaker 00:
They explicitly stated in multiple positions of their appendix or in the record that they weren't relying on auto.

[00:25:02] Speaker 01:
Well, they say there's nothing in the petition explicitly identifying this alternative ground.

[00:25:09] Speaker 01:
It's a question that they have to do it in the heading or what, because they certainly did it in the body of what they argued to the board.

[00:25:17] Speaker 00:
In a few of the elements, they said we may allege that there's not rotational freedom, but that doesn't require me to guess at which portions of the element by element analysis they intend to use to try and invalidate my client's patent, especially in light of the fact that they did identify the grounds and they expressly explained any reliance on auto.

[00:25:40] Speaker 01:
Okay, I understand what you're saying.

[00:25:41] Speaker 01:
Go ahead.

[00:25:43] Speaker 00:
Okay.

[00:25:44] Speaker 00:
In addition to the fact that

[00:25:48] Speaker 00:
the new grounds were not, in my view, expressly stated.

[00:25:53] Speaker 00:
I think that it has to be mentioned that there are additional bases for validity of all the claims.

[00:25:59] Speaker 00:
I mean, secondary considerations was an analysis that was performed by the board, and the board found that every single claim was supported by secondary considerations.

[00:26:09] Speaker 00:
In order to reverse on any one of the claims, those secondary considerations would need to be reversed.

[00:26:15] Speaker 00:
The appendix at 125 expressly held that Secretaries of Consideration supported all of the claims, so even if there was a claim construction or an argument about which grounds should or should not have been considered by the ward, I don't think reversal is allowed.

[00:26:34] Speaker 00:
I also wanted to point you with respect to the grounds that were asserted.

[00:26:37] Speaker 00:
There are a couple of references in the appendix I'd like to draw your attention to.

[00:26:43] Speaker 00:
The first is on appendix 332, where I'm reading from this.

[00:26:56] Speaker 00:
The only reference in this petition that has any overlap with the earlier IPR that was filed was used minimally herein in its auto.

[00:27:04] Speaker 00:
While auto was used extensively in the 2014 petition for its teaching of generic artificial tree components such as trunks, branches, wiring, et cetera, it is used here only to show the availability of trunk connectors that provide simultaneous electrical and mechanical connections in a multitude of rotational positions in the trunks.

[00:27:27] Speaker 00:
Also in the appendix 350, Polygroup's proposed grounds rely on Jumo's expressed teachings of the claimed elements.

[00:27:39] Speaker 00:
Also on 357, they would have readily understood how to modify Miller's trunk sections as suggested by providing a mechanical and electrical connector as taught by Jumo within each trunk section.

[00:27:57] Speaker 00:
In light of the fact that it is the petitioner's burden to outline their grounds for invalidity of my client's patent, my client, of course, being the one that has a constitutionally protectable property interest in what's being claimed, any ambiguity in the petition with regard to which references are being asserted and how should be construed against the petitioner because it is the petitioner's burden and statutory obligation to be cleared in what allegations that they're making.

[00:28:23] Speaker 00:
I would like to, unless you have any questions about that, briefly address analogous nature of the art.

[00:28:30] Speaker 00:
As the analogous nature of the art, I appreciate your question on the burden, it is a question of facts.

[00:28:40] Speaker 00:
I would also like to reiterate that the field before the PTAB was asserted by the appellant was decorative lighting.

[00:28:50] Speaker 00:
And then they argued under Enri Biggio, similar as they have before this court, that anything with a similar structure to any sub-component of the invention is also within the field.

[00:29:04] Speaker 00:
That's a misapplication of in-ray visio.

[00:29:06] Speaker 00:
It isn't the case that even if it were a decorative lighting, any electrical connector would be within that field.

[00:29:12] Speaker 00:
And as we know, the panel expressly rejected any conclusion that decorative lighting is an appropriate field.

[00:29:19] Speaker 00:
They have, I think, repeatedly misconstrued what the question is between decorative or the field and what is considered to be the pertinent question or problem the inventors face with.

[00:29:32] Speaker 00:
They suggest it's a very broad problem, and I don't think that as a factual finding there's anything less than substantial evidence for the

[00:29:41] Speaker 00:
the panel's decision to reject their argument that assembly, disassembly, and electrically connected sections of an artificially lit object is an appropriate statement for the problem being faced by the inventor.

[00:30:00] Speaker 00:
Are there any further questions?

[00:30:04] Speaker 01:
All right.

[00:30:05] Speaker 01:
Thank you, Ms.

[00:30:07] Speaker 01:
Alton.

[00:30:15] Speaker 03:
Thank you.

[00:30:16] Speaker 03:
I just have a few brief points.

[00:30:18] Speaker 03:
First, Willis was on notice, clearly, that Miller has repatable connectors and that Otto has coaxial connectors.

[00:30:27] Speaker 03:
That's absolutely clear.

[00:30:27] Speaker 03:
In fact, one of the pages she just cited to, Appendix 332, talks about those otter connectors and says, she even quoted it, it's only use here to show the availability of trunk connectors that provide simultaneous electrical and mechanical connections at a multitude of rotations of the trunks.

[00:30:43] Speaker 03:
That's precisely what we argued.

[00:30:45] Speaker 01:
I think that she's not disputing that you argued that Miller disclosed the rotatable requirement.

[00:30:56] Speaker 01:
The argument, as I understand it,

[00:30:58] Speaker 01:
is that because you didn't ask for a ground based on Miller alone, that somehow that argument is precluded.

[00:31:06] Speaker 01:
Could you address that?

[00:31:08] Speaker 03:
Your Honor, I don't believe the case law supports that it is precluded if you don't list it in the heading exactly the right way.

[00:31:14] Speaker 03:
In fact, the inmate invasive case I was talking about earlier, and there are two sides for each, so I'll be clear.

[00:31:20] Speaker 03:
The 841F3R966 decision.

[00:31:23] Speaker 03:
That's where we were discussing that there was a 103 combination, and this court upheld the board relying on just one part of the reference, and that's perfectly probable.

[00:31:31] Speaker 02:
Well, sure, that's the case where the board did it.

[00:31:33] Speaker 02:
I'm just concerned here that this case has three different patterns.

[00:31:38] Speaker 02:
There are multiple claims at issue and multiple grounds of possible rejection for all of them.

[00:31:45] Speaker 02:
We're now going to impose a burden on the board to sort through and dig through the text of these to determine if there are any additional grounds you're raising even though you didn't specifically call them out.

[00:31:57] Speaker 02:
It may be within the board's discretion to rely on those grounds because your friends on the other side has noticed, but it is their obligation to search through the petition when you haven't specifically anywhere stated a Miller-only ground of rejection.

[00:32:14] Speaker 02:
Your Honor, I would try to make it as clear as we can.

[00:32:17] Speaker 02:
You obviously have not made it as clear as you can, because you did not set forth a Miller-only ground of rejection.

[00:32:24] Speaker 02:
Your Honor, we argued.

[00:32:26] Speaker 02:
It's not in the table.

[00:32:27] Speaker 02:
It's not in the headings.

[00:32:28] Speaker 02:
I understand, Your Honor, but we argued in detail.

[00:32:31] Speaker 02:
That's what I'm asking you, though.

[00:32:33] Speaker 02:
Is it now the obligation of the board, even though you have a specific table of here to patent claim that issue,

[00:32:39] Speaker 02:
Here are the grounds of rejection we propose that the board is obligated to undertake a search of the actual text to consider if there are additional grounds.

[00:32:50] Speaker 03:
I would agree that they don't need to look for hidden grounds.

[00:32:54] Speaker 03:
very clearly stated that they're relying on Miller for each element of the claims.

[00:32:59] Speaker 03:
So it wasn't like it was hidden here.

[00:33:01] Speaker 03:
And if the result was the opposite, we'd end up in a situation of the anomaly where a combination put before a patent examiner would clearly result in the patentability, but a combination put in front of the board doesn't because the board has to mechanically

[00:33:19] Speaker 03:
apply all the possible elements of the combination, which this is according in in radiobases helmet is not required.

[00:33:26] Speaker 03:
I apologize.

[00:33:28] Speaker 03:
I believe that it's actually exceeded the time.

[00:33:31] Speaker 01:
I'm not answering the question.

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

[00:33:34] Speaker 01:
Thank you.

[00:33:34] Speaker 01:
Thank both counsel.

[00:33:35] Speaker 01:
The case is submitted and you can keep your seats because