[00:00:00] Speaker 00: And we'll take a short recess after the first case to rearrange the panel. [00:00:06] Speaker 00: So the first case is number 171362, PPC Broadband versus Yanku, Mr. Jakes. [00:00:18] Speaker 00: Good afternoon, and may it please the Court. [00:00:20] Speaker 00: The Board made two fundamental errors here on remand. [00:00:24] Speaker 00: The first was not following this Court's claim construction on the maintained continuity limitations. [00:00:30] Speaker 00: There are no findings. [00:00:32] Speaker 00: What's the basis for that? [00:00:34] Speaker 00: I've read the board's decision. [00:00:36] Speaker 00: Yes. [00:00:36] Speaker 00: Where do they do that? [00:00:38] Speaker 00: Where do they fail to follow the claim construction? [00:00:40] Speaker 00: Well, first of all, the claim construction requires consistent or continuous contact. [00:00:45] Speaker 00: The board has to say where that consistent or continuous contact is. [00:00:50] Speaker 00: The only place where the board actually uses those words is in describing the continuity member and saying, that's not required. [00:00:57] Speaker 00: They have to make findings that actually support it and explain it. [00:01:01] Speaker 00: But that's not the question. [00:01:02] Speaker 00: Where do they say they're not following the claim construction? [00:01:05] Speaker 00: They describe both of the claim constructions, the continuity member and the maintaining construction, and they appear to be following the maintaining construction. [00:01:18] Speaker 00: Where do they say they're not? [00:01:20] Speaker 00: Your Honor, I'm not saying they expressly say we're not following it. [00:01:24] Speaker 00: But they didn't. [00:01:25] Speaker 00: You have to look at what they actually did. [00:01:27] Speaker 00: And did they make the findings that there was continuous or consistent contact? [00:01:32] Speaker 00: And they did not make those findings. [00:01:33] Speaker 00: And as I said, the only place they used those words were in describing the continuity member and saying, that's not required. [00:01:41] Speaker 00: Something more is necessary here. [00:01:43] Speaker 00: Even if the board had made those findings, which those findings do not exist, there's not substantial evidence to support it. [00:01:51] Speaker 00: The expert, Corning's expert, [00:01:55] Speaker 00: from his declaration, his six declarations that he submitted, those were all done before this claim construction. [00:02:01] Speaker 00: He doesn't say continuous or consistent contact. [00:02:05] Speaker 00: At his deposition, when expressly asked, how does this Tatsuzuki reference show constant contact, he said, no, it doesn't. [00:02:14] Speaker 00: It shows it being accommodated in the group. [00:02:16] Speaker 00: So there is no evidence to support that. [00:02:20] Speaker 00: The board didn't make those findings because there wasn't anything to support it. [00:02:24] Speaker 00: And when you look at the board, [00:02:25] Speaker 00: the board actually said, the board said this disc-shaped spring would make contact and it would maintain that. [00:02:33] Speaker 00: I mean, they say on page 23, it says, we now make explicit findings as to how the combination of Matthews and Tadzuki teaches to maintain electrical continuity limitation. [00:02:44] Speaker 00: I agree, Your Honor. [00:02:45] Speaker 00: They cite the claim. [00:02:46] Speaker 00: It doesn't look like thumbing the nose at the claim construction. [00:02:49] Speaker 00: They do not cite the words of the claim construction and explain consistent or continuous contact. [00:02:56] Speaker 01: Is it really your debate, not with what they recite in terms of what they say the claim construction is, but with the fact that they didn't or that you think they didn't really apply it properly? [00:03:10] Speaker 00: Well, they didn't apply it properly. [00:03:11] Speaker 00: They didn't make the findings that would be necessary that there is consistent or continuous contact. [00:03:17] Speaker 00: If you look at what the board actually said, it said the spring would make contact. [00:03:22] Speaker 00: That's the same construction of the continuity member. [00:03:24] Speaker 00: And they say it would maintain an electrical connection. [00:03:27] Speaker 00: That's the same construction of the continuity member, which doesn't require consistent or continuous contact. [00:03:33] Speaker 00: Something more is needed here if the board is going to make those findings. [00:03:37] Speaker 00: And even if they had, there is not substantial evidence of this consistent or continuous contact. [00:03:43] Speaker 01: What about the press fit? [00:03:46] Speaker 00: Sure. [00:03:46] Speaker 00: The press fit. [00:03:47] Speaker 00: Well, of course, now the board's opinion says nothing about press fitting. [00:03:51] Speaker 00: It's not in there. [00:03:52] Speaker 00: So there is no finding. [00:03:54] Speaker 00: that the Tatsuziki spring could be somehow press-fit onto the post. [00:03:59] Speaker 00: So the board can't be sustained on a ground that they didn't actually put into their opinion. [00:04:06] Speaker 00: But let's assume that there was a finding on that. [00:04:12] Speaker 00: Again, it's not supported by substantial evidence. [00:04:15] Speaker 00: There's nothing in the references that talks about press-fitting. [00:04:19] Speaker 00: The only discussion of press-fitting is in the patentee's specification. [00:04:24] Speaker 00: And that can't be used as the roadmap. [00:04:26] Speaker 00: So there is no press fitting. [00:04:28] Speaker 00: Then you look at what Corning's experts said. [00:04:31] Speaker 00: He said it doesn't teach how tightly the spring fits around the post. [00:04:36] Speaker 00: Patent Office agrees with that in their brief. [00:04:37] Speaker 00: It says the reference doesn't show how snugly it is around the post. [00:04:41] Speaker 00: It doesn't show that it's tight, loose. [00:04:44] Speaker 00: Then the expert says he doesn't know how thin a fin spring is. [00:04:48] Speaker 00: Well, he says that someone skilled in the art would know how to get a tight connection, right? [00:04:54] Speaker 00: to make a connection. [00:04:55] Speaker 00: That's still not saying press fitting to make consistent or continuous contact. [00:05:00] Speaker 00: That's reading a lot into it. [00:05:01] Speaker 00: And if you look at what he actually said, he said he doesn't know how thin it is. [00:05:08] Speaker 00: And without knowing the thickness, he wouldn't know whether anybody could make a press fit. [00:05:13] Speaker 00: So when you look at the total of his testimony, simply repeating the claim limitation and saying it's in there, that's not enough. [00:05:23] Speaker 01: So are you saying that the board had to use the words presbit in their opinion? [00:05:30] Speaker 01: Because they do just credit his testimony, and his testimony included the presbit theory. [00:05:34] Speaker 00: Oh, I would think they would have to, Your Honor. [00:05:37] Speaker 00: The board has to articulate its reasons. [00:05:39] Speaker 00: It can't just say the limitation is met. [00:05:41] Speaker 00: It has to explain why, and especially where we have an actual construction of what that limitation means. [00:05:47] Speaker 00: Why would it be consistent or continuous? [00:05:50] Speaker 00: Why would this press fitting actually do that? [00:05:53] Speaker 00: It's not taught in the references. [00:05:55] Speaker 00: It's just some technique that everyone would know. [00:05:58] Speaker 00: And then the only place it's taught is in the patent owner's specification. [00:06:02] Speaker 00: And then you look at what he actually said. [00:06:05] Speaker 00: And he said, well, it depends on how thick it is. [00:06:07] Speaker 00: It says thin. [00:06:07] Speaker 00: I don't know how thick it is, how thin it is. [00:06:10] Speaker 00: I don't know whether anyone would be actually able to do it. [00:06:13] Speaker 00: So there really isn't substantial evidence to support the press fitting. [00:06:17] Speaker 00: whether the board said it or not. [00:06:18] Speaker 00: I don't think he said, I don't know whether anybody would be able to do it. [00:06:22] Speaker 00: He said that somebody could do it. [00:06:26] Speaker 00: And he says you might have to adjust the thickness to do it. [00:06:31] Speaker 00: He did say, it's not defined what thin is in the reference. [00:06:36] Speaker 00: He did say, I don't know what thin is. [00:06:38] Speaker 00: And then he said, in the absence of knowing anything about the thickness of the ring, I don't think anyone would know the answer [00:06:46] Speaker 00: For an expert, that's a pretty big admission. [00:06:49] Speaker 00: That's not equivocal. [00:06:50] Speaker 00: That's saying without knowing those details that are not in the references that someone wouldn't know how to do it. [00:06:58] Speaker 00: If I could also address the objective evidence, which we think the board failed here as well, both on the commercial success and Corning's failed attempts. [00:07:09] Speaker 00: This is a strong commercial success case. [00:07:12] Speaker 00: We have sales that went from nothing [00:07:14] Speaker 00: to a dominant share in the market while charging a premium price. [00:07:19] Speaker 00: And the board did everything possible to try to say, well, you didn't explain this. [00:07:23] Speaker 00: You didn't explain this. [00:07:25] Speaker 00: First of all, it wasn't PPC's burden. [00:07:27] Speaker 00: We submitted the evidence. [00:07:29] Speaker 00: There was nothing that required PPC to discount every other possibility that the board could come up with. [00:07:36] Speaker 00: This court in the first decision did instruct the board that the evidence of commercial success couldn't be ignored. [00:07:44] Speaker 00: simply solely because there was another product PPC had sold. [00:07:50] Speaker 00: And if you really look what the board did here, they effectively rely on that earlier product for all the reasons to discount commercial success. [00:07:59] Speaker 00: One, they say the sales didn't reach quite as high. [00:08:02] Speaker 00: Well, that's not actually factually true. [00:08:03] Speaker 00: That's just how far the data went. [00:08:05] Speaker 00: We don't know beyond 2013. [00:08:08] Speaker 00: So saying that's a peak is really not accurate. [00:08:11] Speaker 01: I mean, is that the board pointed out a weakness in that your declarant didn't describe the relative market size between 2010 and 2013. [00:08:20] Speaker 01: And you're saying nobody knows what the relative market size is between those two time frames? [00:08:26] Speaker 00: The overall sales are there. [00:08:29] Speaker 00: It's in the 180 to 200 million. [00:08:32] Speaker 00: The overall market share is there. [00:08:33] Speaker 00: It achieved 85% when you combine both PPC sales and Corning sales, which were found to be a copy. [00:08:42] Speaker 00: I'm not sure what else we were required to do. [00:08:46] Speaker 00: They say, PBC transitioned to sales. [00:08:50] Speaker 00: Well, that's true. [00:08:52] Speaker 00: Salespeople sell. [00:08:53] Speaker 00: They sell based on the advantages. [00:08:55] Speaker 00: The advantages were the advantages of the patented invention. [00:08:58] Speaker 00: It works better. [00:08:59] Speaker 00: They charge 16% more. [00:09:01] Speaker 03: This is a fact finding, and the government seems like it properly considered the fact finding. [00:09:11] Speaker 03: I mean, you just don't agree with their conclusion that PPC's sales and the reason it looks successful is because it took all the sales away from its own other alternative unclaimed connector. [00:09:26] Speaker 03: It's a fact-finding. [00:09:27] Speaker 03: What am I going to do with that on appeal? [00:09:29] Speaker 00: Well, that is a fact as to what happened. [00:09:31] Speaker 00: The effect of that on obviousness ultimately can be weighed as part of a legal conclusion. [00:09:36] Speaker 03: Wait, are you suggesting that you want me to adopt a rule of law? [00:09:40] Speaker 03: that says if you have an unpatented component that you're selling and you come out with a new patented component and you just take the sales from your unpatented component that you therefore have commercial success for the patented components? [00:09:52] Speaker 00: No, Your Honor. [00:09:53] Speaker 00: I think you'd have to always look at the entire factual situation. [00:09:56] Speaker 00: But we have more here. [00:09:57] Speaker 00: We have a 16% price premium for one thing. [00:10:01] Speaker 00: It wasn't like the prices were dropped. [00:10:04] Speaker 03: And you think that 16% price premium is sufficient for me to find there's no substantial evidence for the PTO's finding that there isn't commercial success? [00:10:13] Speaker 03: Well, I think all the evidence points... Or that the commercial success isn't attributed to the claimed components. [00:10:17] Speaker 00: Right. [00:10:18] Speaker 00: I think all the evidence points to commercial success due to the invention. [00:10:21] Speaker 00: It was the way it was sold. [00:10:23] Speaker 00: Take a look at PPC's brochures. [00:10:25] Speaker 00: This feature is touted in there. [00:10:27] Speaker 00: There really isn't any evidence on the other side. [00:10:30] Speaker 00: It's only speculation as to what might have caused it. [00:10:34] Speaker 00: Now, Corning didn't submit that evidence. [00:10:36] Speaker 00: And given on this record, I don't see how there could be a finding that there wasn't commercial success. [00:10:42] Speaker 00: And similarly, for the Corning's failed attempts, this court said there was substantial evidence supporting the board's finding. [00:10:50] Speaker 00: It also said that this weighs in favor of non-obviousness. [00:10:55] Speaker 00: The board didn't say that on remand. [00:10:57] Speaker 00: It just said it took note of its earlier findings [00:10:59] Speaker 00: where it said, this didn't establish anything. [00:11:02] Speaker 00: And so we think the board erred in that as well. [00:11:05] Speaker 00: When you look at all this evidence, there is strong evidence of this objective evidence of non-obviousness. [00:11:11] Speaker 00: You look at the fact that this limitation is still missing. [00:11:14] Speaker 00: There is no finding of continuous or consistent contact. [00:11:18] Speaker 00: This board should, the board's decision really isn't supported. [00:11:23] Speaker 00: And so we asked the court to reverse. [00:11:28] Speaker 00: Okay, thank you. [00:11:29] Speaker 00: You'll save the rest of your time for a bottle. [00:11:37] Speaker 03: Before you get into the parents of this case, this appears to be another partial institution post-SAS case. [00:11:44] Speaker 03: Has any party, to your knowledge, asked for any post-SAS remand for a full institution by the agency? [00:11:54] Speaker 03: In this case or in any other case? [00:11:56] Speaker 03: In this case. [00:11:57] Speaker 03: Sorry, Your Honor. [00:11:58] Speaker 04: I just wanted to make sure I didn't understand. [00:12:00] Speaker 04: Not to my knowledge. [00:12:01] Speaker 04: Because this is another personal institution case we went back and took a look. [00:12:04] Speaker 04: Yes, Your Honor. [00:12:06] Speaker 04: They have not, PPC has not asked, Corning has not asked. [00:12:09] Speaker 03: I wouldn't think they'd want it necessarily. [00:12:11] Speaker 03: Corning settled out, right? [00:12:13] Speaker 04: Corning settled out. [00:12:13] Speaker 03: And the PTO doesn't want this back, I assume. [00:12:16] Speaker 04: I think the PTO would be very happy if the court affirmed this case. [00:12:20] Speaker 03: Well, just out of curiosity, if we don't affirm and vacate and remand, it's still the same IPR. [00:12:25] Speaker 03: Would the agency's position then be that since it's the same IPR and there are, in fact, other grounds and other claims that weren't addressed, that it now needs to go back and do it properly according to the current guidelines? [00:12:41] Speaker 04: You know, Your Honor, I'd have to get back to you on that one. [00:12:43] Speaker 04: I'm not sure what the agency's position is on that. [00:12:45] Speaker 04: I'd be happy to, if you'd like. [00:12:48] Speaker 04: But I, this is an issue. [00:12:50] Speaker 03: You'll cross the bridge when you come to it, if you come to it. [00:12:54] Speaker 04: Okay. [00:12:55] Speaker 04: Should I move on to merits now? [00:12:57] Speaker 04: I would say here this case presents very strong evidence of obviousness. [00:13:02] Speaker 04: Matthews already almost anticipates. [00:13:04] Speaker 04: If the O-ring continuity member in Matthews were just a little bit smaller so that it touched the post instead of the body, we would have an anticipation here. [00:13:14] Speaker 04: Tatsuzuki builds that gap. [00:13:17] Speaker 04: It teaches and suggests to one of ordinary skill in the art to have the continuity member ring touch the post. [00:13:24] Speaker 01: Dr. Murakowski, Corning's expert, explicitly testified that one would want to do that in order to... But all he said was that you could press fit, and I didn't really understand completely what he was talking about, but to press fit, and you could create this electrical connection. [00:13:44] Speaker 01: But there's nothing in his testimony that talks about any kind of continuity to that electrical connection. [00:13:50] Speaker 01: I mean, it does seem like the board [00:13:52] Speaker 01: wanted to go back to its original claim construction that we found to be not reasonable. [00:13:59] Speaker 04: Your Honor, I guess to unpack that question, there's a lot of focus by PPC on the words continuity in the original claim construction by this Court. [00:14:09] Speaker 04: If you look at the claim construction, the words that are most often repeated are maintain electrical continuity during certain specified periods of operation. [00:14:17] Speaker 04: That's in there five or six times, and the continuity is only in there once. [00:14:21] Speaker 04: For example, [00:14:22] Speaker 04: The key paragraph starting at the construction is these limitations require the continuity member maintain electrical continuity during certain specified periods of operation of the connector, and it's over and over again in the opinion. [00:14:34] Speaker 01: Meaning one moment connection is not enough. [00:14:40] Speaker 04: Well, during the specified period, so the whole point of this is when the nut isn't tight on the post, [00:14:46] Speaker 04: that the connection is still maintained. [00:14:48] Speaker 01: But the board originally said it could just be intermittent. [00:14:50] Speaker 01: Just come back and touch the post whenever. [00:14:53] Speaker 01: And we said no. [00:14:55] Speaker 01: In fact, we said under Phillips, it should be completely continuous throughout. [00:15:00] Speaker 01: But even giving you the benefit of the broadest reasonable construction, which we had to do, we said there still has to be some form of continuity. [00:15:09] Speaker 01: And what I'm trying to understand is where [00:15:11] Speaker 01: the board actually, where the evidence is that this, that it was more than just a moment of connection versus continuity throughout? [00:15:21] Speaker 04: Well, the during specified periods of operation is a temporal continuous limitation, right? [00:15:27] Speaker 04: So it's not just a moment. [00:15:28] Speaker 04: If it's during the times when the post isn't, when the nut is loose or when it isn't tight, that's the continuity during those times, a continuous amount of continuity. [00:15:38] Speaker 04: So where the board found that, I mean, I'm not sure if [00:15:41] Speaker 04: Your Honor, it agrees that the board believed that that was the claim construction. [00:15:45] Speaker 04: But it did state it was, and stated several times in the construction. [00:15:49] Speaker 04: For example, earlier on in the opinion, on page 12, it states, the Federal Circuit explained that several claims do require such temporal continuity. [00:15:58] Speaker 04: So we're talking about over time. [00:16:00] Speaker 04: It understood that. [00:16:01] Speaker 01: But it doesn't really define what temporal period it was finding continuity through this precipice theory that it never mentioned. [00:16:10] Speaker 04: Well, if you look at, for example, on page 825, it states the time period. [00:16:16] Speaker 04: It states that in the middle of the paragraph, when it's making the findings here, that we are satisfied that it establishes a continuity member poised to make contact that would maintain electrical connection between the post and the nut during specified periods of operation of the cable connectors, such as when it's tightened partially or fully. [00:16:36] Speaker 04: So it explicitly says that. [00:16:38] Speaker 04: in its opinion, that it's during those times, which is really the language that the court used most frequently in its own claim of obstruction. [00:16:45] Speaker 01: I guess I'm going back to what evidence supports that conclusion. [00:16:50] Speaker 01: Try as I might, I can't find it. [00:16:53] Speaker 04: So I'd say three items of evidence. [00:16:56] Speaker 04: First, the board points to the sketch that Dr. Murakowski made during his depositions and states were relying on the sketch [00:17:07] Speaker 04: that depicts his opinion. [00:17:09] Speaker 04: So the sketch is depicting all the things he's saying. [00:17:12] Speaker 04: And they say we also credit Dr. Murakowski's testimony on this issue. [00:17:17] Speaker 04: So what's the testimony? [00:17:19] Speaker 04: First of all, looking at figure three of Tatsuzuki, the ring is touching the post. [00:17:24] Speaker 04: There's nothing to suggest it's not continuous. [00:17:26] Speaker 04: But going specifically to the issue it is, Dr. Murakowski over and over said, you would want to do that [00:17:32] Speaker 04: You would want it to touch the post continuously. [00:17:35] Speaker 04: You would want it to do that, among other things. [00:17:38] Speaker 04: So when you're assembling it, it doesn't fall off. [00:17:41] Speaker 04: For example, on page, this sketch that the board has in its opinion is exhibit 2007. [00:17:47] Speaker 04: So if you look at, for example, appendix 2267 to 2268, [00:17:53] Speaker 04: the expert was asked, in the connector that you use, as shown in exhibit 2007, how would the Tatsuzuki continuity member be assembled onto the post? [00:18:04] Speaker 04: He says, in the embodiment that was shown here, the continuity member would be press fit onto the post. [00:18:10] Speaker 04: And that's one of the times he says it, but he says it over and over again, and this time he specifically says it based on this same sketch that this exhibit 2007 [00:18:21] Speaker 04: the continuity member would be press fit on the post. [00:18:24] Speaker 01: But the board never says that it's relying on his press fit theory. [00:18:29] Speaker 04: Well, it says we credit Dr. Murkowski's testimony on this issue. [00:18:32] Speaker 04: It reprints the picture. [00:18:34] Speaker 01: Well, doesn't that create an invasive problem for you? [00:18:37] Speaker 01: I mean, they need to explain what they're doing. [00:18:40] Speaker 01: And that's a basic APA principle. [00:18:42] Speaker 04: I would say the board's path here is reasonably discernible because it says, here's the sketch. [00:18:47] Speaker 04: This was the sketch he made in his deposition. [00:18:49] Speaker 04: It depicts his opinion, and we rely on his testimony. [00:18:53] Speaker 04: They didn't cite every line where he said this. [00:18:55] Speaker 04: He did say this in numerous places. [00:18:57] Speaker 03: Here's part of your problem, from a technical standpoint, it seems to me, with this argument. [00:19:01] Speaker 03: I mean, not only did the board never mention press fit, it did say we also credit Dr. Murkowski's testimony on this issue, particularly his statement that Corning's proposed combination would maintain electrical continuity. [00:19:12] Speaker 03: I'm not sure that paragraph 93, which they cite, even lines up with the press fit argument exactly. [00:19:18] Speaker 03: But even if it did, the board never mentioned press fit, and PPC put evidence in the record that there would be a problem press fitting Tatsuki because of the thinness of the continuity member, that it would be inoperable. [00:19:32] Speaker 03: It would break. [00:19:33] Speaker 03: They had their own expert testimony. [00:19:35] Speaker 03: So the board never mentions press fit, and it never responds to, and Dr. Murkowski never responded to that PPC evidence. [00:19:44] Speaker 03: that the press fit with the Tatsuzuki continuity member wouldn't work. [00:19:50] Speaker 03: It seems to be too thin. [00:19:51] Speaker 03: We're not sure it would work at all. [00:19:54] Speaker 03: It seems like it wouldn't. [00:19:55] Speaker 03: That's what their experts said. [00:19:56] Speaker 03: And Murkowski didn't respond to that. [00:19:58] Speaker 03: And the board just never mentions any of this. [00:20:01] Speaker 03: It never addresses any of these arguments. [00:20:03] Speaker 03: Isn't that an APA problem? [00:20:05] Speaker 03: I mean, Esther Jomali said, the board, maybe I could forgive you for not mentioning the words press fit if you actually cited then the right part of his testimony, which you don't. [00:20:14] Speaker 03: But then when the other side has all these arguments about why press fit is wrong and the board doesn't address those either, isn't that a problem? [00:20:21] Speaker 03: I mean, at some point, isn't there an APA obligation to address the arguments made? [00:20:27] Speaker 04: I think the opinion would have been stronger if they had addressed press fit expressly. [00:20:31] Speaker 04: No, isn't there an APA obligation to address the arguments they made? [00:20:35] Speaker 04: There absolutely is. [00:20:36] Speaker 03: And by putting the sketch in that they say it depicts the opinion, that's their shorthand for saying... But Murkowski didn't address in his testimony anywhere the problems they identified with press fitting the Tatsuzuki continuity number. [00:20:51] Speaker 03: His testimony never addresses it. [00:20:52] Speaker 03: So adopting his testimony is not responding to their argument. [00:20:56] Speaker 04: Well, I mean, there were a couple points that you made in there. [00:20:58] Speaker 04: He does address, for example, the thinness question. [00:21:01] Speaker 04: They were questioning him on, can you do this? [00:21:03] Speaker 04: If it's thin, how thin can it be? [00:21:05] Speaker 04: What are the lower limits of how thin it can be? [00:21:08] Speaker 04: What are the exact dimensions that it has to be? [00:21:10] Speaker 03: And didn't he say something like, I can't, I wouldn't know how to answer the questions unless I knew the exact dimensions or something? [00:21:16] Speaker 04: He did say that, but he also said, and I'm going to quote here, I'm sure that there are dimensions of the tatsuzuki continuity member that could be press fit onto the post. [00:21:24] Speaker 04: She says, I'm sure there are dimensions that you could do it. [00:21:26] Speaker 04: He said, I have no idea what the lower limit of those dimensions would be. [00:21:34] Speaker 04: It's sort of like saying, I know that you could use a screw to connect the table leg to the table top. [00:21:39] Speaker 04: I don't know sitting here what's the thinnest screw that you could use or exactly. [00:21:42] Speaker 04: what the dimensions of the pilot hole are. [00:21:44] Speaker 04: I can't tell you that. [00:21:45] Speaker 04: But I know you can do it, which is what basically he said. [00:21:48] Speaker 01: But he didn't provide any testimony with respect to time frames and over particular time frames. [00:21:54] Speaker 01: And the board never cited in its opinion the time frames over which it believed that there was continuous connection. [00:22:03] Speaker 04: He did in his declaration state the time frames because he went through each limit. [00:22:07] Speaker 04: And the limits, some of the dependent claims and actually some of the independent claims, [00:22:12] Speaker 04: those limits, that it has to be including while the nut is loose, where it's not fully tightened onto the post. [00:22:18] Speaker 04: So he does that there. [00:22:19] Speaker 04: He says during those times you would still maintain the electrical connection. [00:22:24] Speaker 01: But this is the exact same testimony that the board relied on when the board said all you need is intermittent connection, and then they said his testimony shows intermittent connection. [00:22:35] Speaker 01: And then we go back, and we've got a new claim construction. [00:22:38] Speaker 01: And they said, oh, voila, now his testimony shows something else. [00:22:41] Speaker 04: Well, if it meets Moore, so the last claim construction was it didn't have to. [00:22:47] Speaker 04: The same evidence can show, OK, it doesn't have to, but it does. [00:22:50] Speaker 04: And it has to, and it does. [00:22:51] Speaker 04: And that's what it does here. [00:22:53] Speaker 04: OK, maybe it didn't have to, but it still showed it. [00:22:57] Speaker 04: Here on the inoperability, going back to Judge Moore's point, too, first of all, that is something that's waived here. [00:23:03] Speaker 04: This was in a footnote. [00:23:04] Speaker 04: in PPC is brief, and that is not preserved. [00:23:07] Speaker 04: Arguments that are incorporated by reference in a footnote are not preserved for appeal. [00:23:11] Speaker 04: But even if the court reaches it, this, looking at the reference on its own and looking at Dr. Elders... Is there precedent that you're aware of that says if an argument is made in a footnote, it's not made? [00:23:22] Speaker 03: Well, they incorporated... [00:23:24] Speaker 04: I think there actually is a case on that point, but this is a different issue. [00:23:27] Speaker 04: They incorporated by reference seven pages of their brief in the footnote to make that argument. [00:23:34] Speaker 04: And there is precedent that we cited saying that that's not permissible. [00:23:37] Speaker 04: I can pull the exact case name, but it's cited in our brief that you cannot incorporate pages from the appendix, which is what they did, in your brief and make your argument in that way. [00:23:49] Speaker 03: Well, to do so would allow you to override the word count for briefs. [00:23:53] Speaker 04: I think that's part of the reason. [00:23:55] Speaker 04: I certainly think that's part of the reason that you can't do it. [00:23:58] Speaker 04: But even if you get to the argument, looking at Dr. Eldren's opinion in itself, he just says, first of all, they say that they're no longer arguing teaching away. [00:24:07] Speaker 04: They're no longer arguing it's inconsistent with the basic purpose of the reference. [00:24:11] Speaker 04: Now they're just saying, OK, fundamentally change and make it inoperable. [00:24:15] Speaker 04: So they're saying, forget about the other two. [00:24:16] Speaker 04: We argued below. [00:24:17] Speaker 04: We're not arguing those. [00:24:18] Speaker 04: If you look at Dr. Eldren's opinion, he's just saying, [00:24:21] Speaker 04: He says that the function of the Tatsuzuki continuity member is to be biased between the nut and the body this way. [00:24:30] Speaker 04: And this is where the springiness is. [00:24:32] Speaker 04: It's a flat ring that's up here with the springs facing the nut. [00:24:37] Speaker 04: He says that's what the function is. [00:24:38] Speaker 04: You can still do that whether or not the ring is around the post tightly or loosely. [00:24:43] Speaker 04: He's making up that he says that he needs to float. [00:24:46] Speaker 04: He said it needs to be loose on the post. [00:24:49] Speaker 04: He doesn't ever say why. [00:24:50] Speaker 04: And they don't point in their brief to why that is. [00:24:54] Speaker 04: Why does it need to? [00:24:54] Speaker 04: It shouldn't need to. [00:24:56] Speaker 04: It's still biased. [00:24:57] Speaker 04: It's still biased between it's sitting there and pushing against the post and the body. [00:25:01] Speaker 04: Excuse me, not the post and the body, the nut and the body, whether or not it's loose on the post. [00:25:07] Speaker 04: He never explains that. [00:25:08] Speaker 04: That opinion is conclusory, at least I would argue, because it doesn't say anything about why it wouldn't work. [00:25:16] Speaker 04: It would still work just fine to be pressed between the body [00:25:18] Speaker 04: and then not if it's tight around the post. [00:25:21] Speaker 03: It's like, you know, my it's really not also just pulling back the question of whether the fact that you don't know why it wouldn't work is really all well and good. [00:25:31] Speaker 03: But that's not the board's fact finding because the board didn't make any fact findings about how it would work. [00:25:36] Speaker 03: That's the problem. [00:25:37] Speaker 03: They made arguments. [00:25:38] Speaker 03: It wouldn't you telling me you personally believe it would. [00:25:41] Speaker 03: It doesn't help the board. [00:25:44] Speaker 01: Right, and the Board did not even discuss any of this testimony. [00:25:48] Speaker 01: So, I mean, you can tell us what you think this testimony showed, but the Board never even mentioned it. [00:25:53] Speaker 01: And we've said repeatedly that you have to consider all evidence of record, including that that cuts against the Board's ultimate conclusion. [00:26:03] Speaker 04: They relied on Dr. Murkowski's testimony. [00:26:05] Speaker 04: I understand Dr. Ernst's point that he didn't specifically address this Dr. Eldering point. [00:26:10] Speaker 04: But that's sort of the rebuttal point, really. [00:26:13] Speaker 04: That's the inoperability point, not the initial prima facie case of obviousness point. [00:26:19] Speaker 04: And he does give very strong evidence about that. [00:26:21] Speaker 04: And they do incorporate his testimony on that point. [00:26:26] Speaker 04: Over and over again in his deposition, he says, it can be done, it can be done, it can be done. [00:26:30] Speaker 04: You would want it to be done, not just that it could be done. [00:26:33] Speaker 04: You would want it to be done. [00:26:34] Speaker 04: And just stepping back, even if you didn't have Dr. Murakowski's testimony at all, [00:26:38] Speaker 04: This really boils down to a question of, would one of skill in the art understand that when you have contact points, you would want a ring to be on the post pretty snugly? [00:26:50] Speaker 04: It's not hard. [00:26:52] Speaker 04: The child's stacking ring toy, those are press fit onto the post. [00:26:55] Speaker 04: My ring is, I'll tell you, it's press fit onto my finger. [00:26:58] Speaker 04: It's not something that is hard for one of ordinary skill in the art to undertake. [00:27:02] Speaker 04: And that is what Dr. Murakowski testified. [00:27:09] Speaker 04: Should I move to commercial success, or is this the point we have? [00:27:12] Speaker 00: Well, unless there's some questions, we're out of time. [00:27:14] Speaker 00: Do we have any questions? [00:27:17] Speaker 00: No? [00:27:17] Speaker 00: Thank you. [00:27:33] Speaker 00: I'd like to address a point. [00:27:34] Speaker 00: If this case does get remanded and the rules have changed, we would be seeking to [00:27:40] Speaker 00: re-examine those claims that have already been disallowed. [00:27:44] Speaker 00: Changing the rules while the proceeding is going on is something that we are interested in. [00:27:48] Speaker 00: I think it's one thing that counsel... You haven't raised before this question of a remand on the additional wraps, right? [00:27:58] Speaker 00: No, Your Honor, I have not. [00:27:59] Speaker 00: I'm just saying that if this case continues back in the patent office, as Judge Moore was asking, we're not interested in the partial institution question. [00:28:07] Speaker 00: But if there are changes and the IPR is still pending, then if the patent office has changed its rules, we would seek to... What's the likelihood that there would even be any further proceedings if Corning is out? [00:28:23] Speaker 00: Well, that may be. [00:28:24] Speaker 00: That may be, Your Honor. [00:28:27] Speaker 00: One thing counsel said is that the ring touches the post. [00:28:31] Speaker 00: That's really the problem here. [00:28:32] Speaker 00: Touches the post is the old construction. [00:28:35] Speaker 00: This court said, [00:28:37] Speaker 00: Maintaining electrical continuity requires consistent or continuous contact, period. [00:28:46] Speaker 00: That's the claim construction and the part that we're focusing on. [00:28:51] Speaker 00: During specified time periods, the temporal part of it. [00:28:54] Speaker 00: Temporal doesn't mean temporary, because if you look at the claim, say, claim one of the 06-0 patent, it requires to maintain continuity when the nut is tightened and when it's partially tightened. [00:29:06] Speaker 00: There's not really anything else. [00:29:08] Speaker 00: It has to work when it's in use. [00:29:10] Speaker 00: So that doesn't mean temporary. [00:29:12] Speaker 00: It means maintained throughout those periods. [00:29:15] Speaker 00: So we get to the sketch. [00:29:20] Speaker 00: Corning's expert said it corresponded to his declarations. [00:29:24] Speaker 00: He doesn't mention press fit in his declarations. [00:29:29] Speaker 00: He did discuss it at his deposition. [00:29:32] Speaker 00: That drawing, which he said corresponds to his declarations, is not necessarily press fit. [00:29:38] Speaker 00: And to try and then to say the board found something about press fit, that's a pretty big stretch. [00:29:44] Speaker 00: The Tatsuzuki spring, it has to spring. [00:29:46] Speaker 00: It wouldn't be press fit onto the post. [00:29:48] Speaker 00: That was our argument. [00:29:49] Speaker 03: What did he say about press fit, though, in his deposition testimony as opposed to his declaration? [00:29:54] Speaker 00: He said a lot of things. [00:29:55] Speaker 00: He said that it was a known technique, that you could use it, but then when asked [00:30:01] Speaker 00: Does Tatsuzuki show press fitting? [00:30:02] Speaker 00: He said, no, it doesn't. [00:30:05] Speaker 00: He said... Well, it doesn't have to show it, right? [00:30:09] Speaker 00: As long as someone skilled in the art would know how to do it. [00:30:12] Speaker 00: Your Honor, then we're getting beyond the teachings of the prior art. [00:30:15] Speaker 00: We're just getting to what this expert said. [00:30:18] Speaker 00: And usually you need some teaching. [00:30:21] Speaker 00: And the only teaching here is in the patent owner's specification about press fitting. [00:30:26] Speaker 00: And I'll concede that press fitting is a technique that is known [00:30:31] Speaker 00: Why you would use it in this situation without something in the prior art to suggest it is where the real problem is. [00:30:37] Speaker 03: What's more, Mr. Jakes, I mean, isn't it the case that the Patent Office, when they address this issue on Appendix Page 25, wholly cited to his declaration, which doesn't disclose press fitting, and they never cited to his deposition testimony claiming to be relying on that testimony? [00:30:51] Speaker 03: You're exactly right, Your Honor. [00:30:52] Speaker 03: So to the extent that the Board articulated a basis for its conclusion, that basis was found only in his declaration, so that's the only evidence [00:30:59] Speaker 03: from Murkowski, they cited. [00:31:01] Speaker 00: That's right. [00:31:01] Speaker 00: And we did not address press fitting head on in our opening brief. [00:31:05] Speaker 00: But when the Patent Office responded and said, oh, press fitting is the substantial evidence, we addressed it in our review. [00:31:13] Speaker 00: Thank you. [00:31:15] Speaker 00: OK. [00:31:15] Speaker 00: Do you think both counsel the cases submitted? [00:31:17] Speaker 00: And we'll take a short recess. [00:31:21] Speaker ?: All rise. [00:31:29] Speaker 02: The honor will call for the short recess. [00:31:52] Speaker ?: Thank you. [00:32:26] Speaker ?: Thank you. [00:32:39] Speaker 02: Thank you. [00:32:53] Speaker 02: You got my email? [00:32:57] Speaker 02: Yeah, thank you. [00:33:01] Speaker ?: I now was watching it too. [00:33:11] Speaker ?: Oh, you were? [00:33:17] Speaker ?: Yeah. [00:33:20] Speaker ?: Oh my gosh. [00:33:26] Speaker 02: The one that's getting ready. [00:33:56] Speaker 02: Excuse me everybody, someone needs to be turned off, number one off, number one silent, turn it on. [00:34:21] Speaker ?: Can you turn it off now? [00:34:27] Speaker ?: Okay. [00:34:48] Speaker ?: Thank you. [00:35:15] Speaker ?: Okay. [00:35:53] Speaker ?: th th th [00:36:29] Speaker ?: I'm sorry. [00:36:58] Speaker ?: th th th [00:37:27] Speaker 02: th th [00:37:49] Speaker ?: th th [00:38:11] Speaker ?: th th th [00:38:42] Speaker ?: Thank you. [00:38:58] Speaker 02: There we go. [00:39:25] Speaker ?: th th [00:39:50] Speaker ?: Oh, you see. [00:40:13] Speaker 02: th th th th [00:40:43] Speaker ?: You're out of work, you can handle it. [00:40:45] Speaker 02: Is that out of here? [00:40:50] Speaker ?: No. [00:40:51] Speaker ?: No, she's my office. [00:40:54] Speaker ?: Okay, well, some of it. [00:40:58] Speaker ?: But if I have to, it's pretty good. [00:41:01] Speaker ?: Remind me. [00:41:02] Speaker ?: That was pretty good. [00:41:05] Speaker ?: I think it's fine. [00:41:07] Speaker ?: I think it's fine. [00:41:09] Speaker ?: I think it's fine. [00:41:13] Speaker ?: Thank you. [00:41:25] Speaker ?: I don't just say student, it's just obviously. [00:41:42] Speaker ?: I don't just say student, it's just obviously. [00:41:51] Speaker 02: Thank you. [00:41:56] Speaker ?: . [00:41:57] Speaker ?: . [00:41:57] Speaker ?: . [00:42:26] Speaker 02: All rise.