[00:00:00] Speaker 00:
The next case is number 181748, Polygroup Limited versus Willis Electric.

[00:00:06] Speaker 00:
Again, Mr. Angle.

[00:00:18] Speaker 01:
It was a court.

[00:00:19] Speaker 01:
Like the prior appeal, the overarching issue in this field is the claim construction of a modular artificial tree.

[00:00:25] Speaker 00:
This case does not involve, if I understand it from both sides' briefs, the issue that we've been discussing about rotatable.

[00:00:34] Speaker 00:
It did not.

[00:00:38] Speaker 01:
But it involved some of the same claim construction issues, because here what the majority did is it construed modular artificial tree.

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First it found that to be limiting of the claims, even though there's no basis for that.

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And then it read in the construction of tree portion from the 186 patent to require non-detachable branches.

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And on that basis, the majority rejected prior art.

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They clearly taught all the claim elements

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based on their improper construction.

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And that error really affected the rest of the court's decision-making, the majority's decision-making.

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And thus, the first one, playing construction, hears the court vacating the rest of the majority's decision.

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In addition, as we pointed out in our report, further, the majority erred in its consideration of the combination that was actually proposed by the polyglot.

[00:01:29] Speaker 02:
Can I, let me just start similarly to where we started last time.

[00:01:33] Speaker 02:
If we agree with you on plank construction and that the board has imported overly narrow limitations that require these branches to be non-attachable, why isn't the board finding that there would be no motivation to combine, that they could rest with corn and gold?

[00:01:51] Speaker 02:
Incorrect.

[00:01:52] Speaker 01:
Because, Your Honor, the board failed to consider the actual combination we proposed.

[00:01:57] Speaker 01:
We proposed

[00:01:59] Speaker 01:
Well, D. vicarison and Korengold both teach connectors held in the trunk section.

[00:02:04] Speaker 01:
D. vicaris doesn't clearly teach how it's held in there, and one of the claim annotations is it needs to be securable at least for rotational alignments.

[00:02:13] Speaker 01:
So we looked at Korengold, which does, we believe, teach that.

[00:02:17] Speaker 01:
But, Your Honor, and so the combination we proposed was

[00:02:22] Speaker 01:
You would combine D. Vicuris with Korngold's snug fit, teaching, not the actual connectors, and just rely on that.

[00:02:32] Speaker 01:
And as Descent pointed out, it's sort of an unremarkable proposition that interference fit was well known for securing connectors, and I think that Descent said that it's not even in dispute.

[00:02:41] Speaker 01:
Instead of considering that combination, however, the majority addressed a combination that was created by Willis.

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Willis argued that our combination was the bodily incorporation of corangold connectors into the vicarious.

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And so the majority never actually even addressed our proposed construction.

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So it's erroneous in the fact that they didn't consider what we proposed.

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So any motivation to combine, Your Honor, going to that issue that you just asked about,

[00:03:09] Speaker 01:
The motivation combined they were considering was whether you would combine DeVicaris with the bodily incorporated connectors report, but that's not what we proposed.

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So they didn't actually consider the motivation combined of the facts that were presented to them through our evidence and arguments.

[00:03:32] Speaker 01:
Go ahead.

[00:03:32] Speaker 01:
Thank you.

[00:03:34] Speaker 01:
Turning to the claim construction issue, this is sort of the overarching issue.

[00:03:37] Speaker 01:
We'll actually move on.

[00:03:43] Speaker 00:
There's no

[00:03:44] Speaker 00:
issue of secondary considerations in this case?

[00:03:47] Speaker 01:
No, Your Honor, and in the prior case, secondary considerations only apply to a few claims.

[00:03:53] Speaker 01:
It's not all the claims.

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But here it's not that it doesn't apply at all.

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In the other case, it applies to independent claims of the 186 and 187 patents.

[00:04:01] Speaker 01:
So only six claims do not apply to anybody else.

[00:04:05] Speaker 01:
But it does not apply here.

[00:04:08] Speaker 01:
Your Honor, on the claim construction issue, like the tree portion in the other case, here the majority made several errors, which we highlighted in our briefing.

[00:04:18] Speaker 01:
I was going to focus on three of them.

[00:04:20] Speaker 01:
One is that they concluded that the modular artificial tree needs to be limiting at the claims.

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But they provided a basis for that, other than to argue that

[00:04:31] Speaker 01:
There must be, it's necessary to provide context for the claims.

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But if you look at the claims themselves, the claims clearly have a structurally complete invention by themselves.

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In fact, Willis, as to claim five, didn't even argue that it was not a structurally complete invention or that it required construction of the preamble.

[00:04:49] Speaker 01:
The majority's construction also results in claim differentiation problems and renders various claim language redundant.

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For example, claim five, they read in this model of artificial tree to read in branches and light strings.

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But claim five already cites branches and light strings.

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And in fact, claim five also already recites tree section, which the majority construed to read in branches and light strings.

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So you have double redundancy in claim five.

[00:05:17] Speaker 01:
In addition, the court's construction reads branches and lights into claim one, which doesn't recite those elements.

[00:05:25] Speaker 01:
379 patents really directed more at the connections between the trunk sections, not the complete tree.

[00:05:31] Speaker 01:
It reads branches, light strings into claim one, even though claims seven and nine

[00:05:35] Speaker 01:
which is dependent on claim one, later add those elements.

[00:05:38] Speaker 01:
Thus it violates claim differentiation principles.

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And both in this case and in the prior case, the majority's ultimate construction of modular artificial tree is indefinite.

[00:05:49] Speaker 01:
Throughout the final decision, the majority gives various different interpretations of what the modular artificial tree is or what the tree portion is.

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And each time, it always includes branches and trunk structure.

[00:06:01] Speaker 01:
Some timelines.

[00:06:03] Speaker 02:
Can I take it back to, I think I want to make sure I understand exactly what we were talking about on the earlier points about what Koran Gold teaches in combination with the Vicarus.

[00:06:16] Speaker 02:
I find this very, very hard to follow, but the board found that Koran Gold didn't teach an interference fit for a rite.

[00:06:27] Speaker 02:
Correct.

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Not all the claims required an interference fit.

[00:06:30] Speaker 00:
Correct.

[00:06:31] Speaker 00:
Correct.

[00:06:31] Speaker 02:
Correct.

[00:06:32] Speaker 02:
Correct.

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Correct.

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Correct.

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Correct.

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Correct.

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Correct.

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Correct.

[00:06:40] Speaker 02:
Correct.

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Correct.

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Correct.

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Correct.

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Correct.

[00:06:45] Speaker 02:
Correct.

[00:06:47] Speaker 02:
Correct.

[00:06:48] Speaker 02:
Correct.

[00:06:50] Speaker 01:
If you find, if you agree with the court's construction interference pit, then that would uphold those claims 12, 15, and 32.

[00:06:58] Speaker 01:
Yes, Your Honor.

[00:06:59] Speaker 02:
But the rest of them, assuming we agree with you on the broader claim construction and that the court has misread your motivation to combine analysis, those would all be reversed or do we need to vacate and remand?

[00:07:13] Speaker 01:
I would say vacate and remand, Your Honor.

[00:07:15] Speaker 01:
And on those, while the

[00:07:20] Speaker 01:
Corngold was described as having an interference-tight fit, but whether it is in fact an interference fit or not doesn't matter at all except with respect to claims 12, 15, and 32.

[00:07:30] Speaker 01:
That's absolutely right.

[00:07:33] Speaker 01:
Okay.

[00:07:33] Speaker 01:
Your Honor, it was in the middle of claims construction, so I'll go back briefly.

[00:07:38] Speaker 01:
both the model artificial tree and tree portion are indefinite, as I'm explaining.

[00:07:42] Speaker 01:
One of the ways they're most indefinite is that in neither decision does the majority address how the branches are attached to the trunk sections.

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And that's important because the claim language actually used in both patents have used join to, couple to, attach to, all

[00:07:58] Speaker 01:
terms that allow some detachability.

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But the majority's interpretation requires that these be non-detachable branches.

[00:08:05] Speaker 01:
And on that basis, it rejects, in this case, D. Vicaris and Hicks, and in the other case, Miller and Otto, and Miller and not Hicks.

[00:08:13] Speaker 01:
Even though, as the dissent pointed out, each of those teach

[00:08:18] Speaker 01:
Modular will teach artificial trees that have branches that can be affixed to the tree section.

[00:08:25] Speaker 01:
In fact, I think the way the descent points it out is it's undisputed that the branches have at least a snug fit sufficiently to secure the branches onto the trunk sections and thus maybe even the majority's construction of those terms.

[00:08:40] Speaker 01:
If you're on a turning to the interference fit construction that we were just talking about, we believe the majority erred in this construction of that as well.

[00:08:49] Speaker 01:
The majority adopted a construction that includes deforming, and by adopting that construction, it requires some sort of deforming to form the interference fit.

[00:08:59] Speaker 01:
It excludes one of the embodiments set forth in the specification.

[00:09:03] Speaker 01:
That embodiment is the interference dip between tubular sections.

[00:09:07] Speaker 01:
They have one embodiment which clearly, one of the embodiment specific creation clearly discloses some deformations part of the floor in the interference dip, but the other one does not.

[00:09:16] Speaker 02:
Does that embodiment necessarily relate to the dip that they claim to require an interference dip?

[00:09:22] Speaker 02:
Or could it relate to the other claims that just require some other kind of fit that's not an interference fit?

[00:09:28] Speaker 01:
Well, Your Honor, there are only a few examples of how interference fit is used in the specification.

[00:09:36] Speaker 02:
Forgive me, but is there testimony suggesting interference that does mean the deformity?

[00:09:44] Speaker 01:
There's disputed testimony on that, yes, Your Honor.

[00:09:46] Speaker 02:
Is that your problem?

[00:09:47] Speaker 02:
We're on a substantial evidence review.

[00:09:50] Speaker 01:
Your Honor, well, on claim instruction, of course, there's no deference given to the former.

[00:09:55] Speaker 02:
Sure, but there are underlying factual determinations, I know, but...

[00:09:59] Speaker 02:
You know, if we have an expert that says that, I guess we can de novo read on our own whether it interferes.

[00:10:05] Speaker 01:
Right.

[00:10:06] Speaker 01:
I understand your honor.

[00:10:07] Speaker 01:
But here, the intrinsic evidence belies the extrinsic evidence.

[00:10:10] Speaker 01:
And that, under the Phillips analysis, is what this court needs to rely on.

[00:10:13] Speaker 01:
Actually, the majority should rely on, which is the intrinsic evidence of the specification, which shows that a non-deformation is part of the interference of it under the patent.

[00:10:25] Speaker 01:
Your Honor, unless there are any other questions, I'll reserve the remainder of my time for a rebuttal.

[00:10:29] Speaker 01:
Okay.

[00:10:29] Speaker 01:
Thank you.

[00:10:29] Speaker 01:
Thank you.

[00:10:31] Speaker 01:
Ms.

[00:10:31] Speaker 01:
Alton.

[00:10:43] Speaker 03:
So there's no issue of secondary considerations in this case, right?

[00:10:51] Speaker 03:
No secondary considerations were submitted in the 379 path case.

[00:10:55] Speaker 03:
That is correct.

[00:10:56] Speaker 00:
And this case doesn't involve the rotatability issue that we were talking about in the other case?

[00:11:05] Speaker 03:
No.

[00:11:06] Speaker 00:
Yes it doesn't?

[00:11:08] Speaker 03:
Yes it does not.

[00:11:09] Speaker 00:
Okay.

[00:11:10] Speaker 00:
Go ahead.

[00:11:11] Speaker 03:
Your Honor, I did want to address the issue related to motivation to combine and interference fit.

[00:11:17] Speaker 03:
If you look at the appendix at 36, the motivation that was articulated to combine foreign gold with divicaris was the interference fit.

[00:11:31] Speaker 03:
So there's a paragraph of the petition at 19 to 20 that's quoted by the board in their final decision on this proceeding.

[00:11:39] Speaker 03:
And they discuss the fact that the interference bit of corn gold is given us the reason to combine with D.B.

[00:11:48] Speaker 03:
Harris.

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If there's no, obviously, interference bit disclosed by corn-gold, that would mean that the motivation to combine fails.

[00:12:00] Speaker 03:
So, with respect to any diva-cures in corn-gold combination, as well as those disclosures that require us to find interference bit, the panel concluded, based on substantial evidence, I would posit that corn-gold doesn't allow that combination.

[00:12:19] Speaker 03:
With respect to tree section and modular lighted, modular artificial tree or modular lighted artificial tree, the panel exhaustively examined the party's contentions regarding whether or not the preamble were limiting and also what it means to be a modular artificial tree.

[00:12:37] Speaker 03:
Modular is a word that can modify more than one noun, obviously, but in the case of modular artificial trees, the panel concluded based upon the intrinsic and extrinsic evidence that that has to mean that they're separable tree sections that a user can assemble and manipulate in order to put together the tree that's at issue in the 379 patterns.

[00:13:00] Speaker 03:
that's supported by specification, which expressly talks about users' manipulation of those sections as unitary sections.

[00:13:09] Speaker 03:
Despite the argument of my friend here at council table, we dispute whether the asserted references could be handled or manipulated in that way because the modular

[00:13:20] Speaker 03:
aspect of the claim language denotes some sort of unitary functioning of those objects.

[00:13:26] Speaker 03:
The branches and the other components of the tree section or the other aspects of the tree that the user manipulates aren't designed to be removed or readily removable.

[00:13:36] Speaker 03:
And I don't believe that there is any dispute that whatever they say about the attachment or ability to attach the branches, that they're not in fact readily removable.

[00:13:46] Speaker 03:
They are readily removable.

[00:13:48] Speaker 03:
And there's nothing on the face of the patent that discusses any embodiment that has these sort of separable aspects so that the item can't be manipulated as tree fashions.

[00:14:01] Speaker 03:
And I think as the panel correctly noted, most of the claims here at issue just relate to or expressly claim via the trunk with the connector housing inside of the trunk body rather than what anybody would call a tree.

[00:14:15] Speaker 03:
So if the remainder of the claim elements don't disclose the tree, I think that the preamble has been found to be limiting under a number of federal circuit cases.

[00:14:31] Speaker 03:
I do just want to mention that I was correct in my

[00:14:43] Speaker 03:
Review of the rotatability components of the 379.

[00:15:29] Speaker 03:
The appellant has raised this issue with regard to whether or not claims are rendered indefinite or whether or not unclaimed subject matter has been inferred to the claims by the claim construction.

[00:15:44] Speaker 03:
In fact, the claim construction simply relates to whether the preamble is limiting or not.

[00:15:48] Speaker 03:
The differentiated claiming in each of the remainder of the elements, I think, doesn't distinguish whether or not there's either a problem with not being able to understand the claims or whether or not the claims are rendered indefinite in some way.

[00:16:02] Speaker 03:
Because the claims themselves sometimes don't have branches and sometimes do.

[00:16:07] Speaker 03:
But what does not change is whether or not what's being claimed is an artificial tree.

[00:16:15] Speaker 03:
They've also raised an argument that the panel was incorrect to raise and construe the modular lighted artificial tree or tree section language of Plan 5.

[00:16:30] Speaker 03:
There is no error here in consideration of the panel by Plan 5's preamble.

[00:16:35] Speaker 03:
This is not a case like Bath where there was some indication given in the institution decision that was then changed to mainstream.

[00:16:43] Speaker 03:
It's also not like evasive, because in this case, the appellant had actual notice and an opportunity to provide evidence and testimony on the meaning of what a tree section is and to participate in a discussion of the meaning of the claim term for modular tree portion.

[00:16:59] Speaker 03:
They were heard.

[00:17:01] Speaker 03:
The evidence that was submitted by them was considered by the panel.

[00:17:05] Speaker 03:
The panel adopted the construction that had been proposed by the patent owner in this case, and they don't contend that they would have offered something different or that there's been prejudice as a result of this particular distinction made by the panel in accordance with Western Graco.

[00:17:23] Speaker 03:
The question under the APA is the receipt of notice and the ability to participate in the proceedings, and I don't think they dispute the head either of those things.

[00:17:33] Speaker 03:
Because there were a number of different proceedings that were before the panel, and argument in all of the proceedings related to these claim terms, they were provided as an opportunity to respond and provide argument.

[00:17:45] Speaker 03:
I'll note that the party that brought the word modular to claim truth forward was actually the parliament.

[00:18:08] Speaker 03:
Unless there are any questions by the panel, I can submit on the briefs.

[00:18:20] Speaker ?:
OK.

[00:18:20] Speaker ?:
Thank you.

[00:18:25] Speaker 01:
Mr. Angle.

[00:18:26] Speaker 01:
Two very brief points, Your Honor.

[00:18:30] Speaker 01:
A friend argued about a reason to combine issue, and again, argued that because the board majority concluded that Corringold didn't teach an interference fifth, that there was no reason to combine.

[00:18:41] Speaker 01:
As we were just discussing a moment ago, that only relates to claims 12, 15, and 32.

[00:18:47] Speaker 01:
The majority, actually the entire board and its institution decision acknowledge that Corringold does teach a snug fifth, which is sufficient for purposes of the teaching that we're trying to combine.

[00:19:00] Speaker 02:
Well, I just find this very confusing.

[00:19:04] Speaker 02:
I just want to clarify and make sure what I think about your argument is what you are actually arguing.

[00:19:10] Speaker 02:
Your problem with the board's conclusion

[00:19:13] Speaker 02:
One, this motivation to combine is they misunderstood your argument about the core angle and focused on core angle's actual electric connectors and saying you would have subbed them in when that's not your argument.

[00:19:25] Speaker 02:
Your argument is that core angle shows the connection between the fitting and the electrical in the pipe.

[00:19:32] Speaker 02:
And therefore, that's where they mistakenly find that corn gold doesn't disclose that when corn gold clearly has a circular pipe and a circular thing, which, I mean, has to show that.

[00:19:45] Speaker 01:
Absolutely correct.

[00:19:45] Speaker 02:
That's why they lack substantial evidence on that point.

[00:19:48] Speaker 02:
That still doesn't get to the interference issue.

[00:19:51] Speaker 01:
Correct.

[00:19:52] Speaker 01:
Which is a separate inquiry after those three claims.

[00:19:54] Speaker 01:
Absolutely right.

[00:19:55] Speaker 01:
And the only other point I was going to make, unless there are any other questions,

[00:19:58] Speaker 01:
is that both in this case and in the other case, there were a number of places where the majority adopted arguments on behalf of Willis that Willis didn't make.

[00:20:06] Speaker 01:
And here, with respect to Hicks, Willis below did not dispute that Hicks teaches a modded artificial tree as Plane 5.

[00:20:17] Speaker 01:
Nevertheless, the majority adopted arguments on behalf of Willis that Willis didn't even make and the polygroup had no opportunity to respond to, and thus violated this court's decision and made him loyal.

[00:20:27] Speaker 00:
Okay.

[00:20:28] Speaker 00:
Thank you.

[00:20:29] Speaker 00:
Thank you.

[00:20:29] Speaker 00:
Thank you very much.

[00:20:30] Speaker 00:
Thank both council cases submitted.

[00:20:31] Speaker 00:
That concludes our session for this morning.

[00:20:34] Speaker 00:
All rise.

[00:20:50] Speaker 00:
The honorable court is adjourned until tomorrow morning at 10 a.m.

[00:20:57] Speaker ?:
Okay.