[00:00:00] Speaker 02:
All the specification of the challenge patent says, and this is at JA902, which is the 290 patent specification, at column 10, lines 10 to 25, it states that the battery pack can power various power tools and supply an average discharge current of 20 amps.

[00:00:21] Speaker 02:
But there's no explanation in the patent anywhere of what or that average discharge current being over the entire rated capacity of the battery.

[00:00:29] Speaker 04:
Over the entire rated capacity, that came from a dictionary definition somewhere, right?

[00:00:38] Speaker 02:
It came from Dr. Assani.

[00:00:41] Speaker 02:
That's the only evidence that's cited to by Milwaukee in their brief.

[00:00:45] Speaker 02:
They cite to Dr. Assani, who's one of their experts, at JA-12-336-337.

[00:00:56] Speaker 02:
But Dr. Assani, when you look at

[00:00:58] Speaker 04:
Wasn't there a district court construction?

[00:01:01] Speaker 02:
There was a district court construction.

[00:01:02] Speaker 04:
And the district court construction relied on the dictionary definition?

[00:01:05] Speaker 02:
It cited to a dictionary definition, but I don't think the dictionary definition says that it's over the entire rated capacity.

[00:01:24] Speaker 02:
So what

[00:01:26] Speaker 02:
the district court stated, and this is a J.A.

[00:01:29] Speaker 02:
4976, and this is part of the decision on claim construction from the district court, is that the capacity of a battery is normally measured by discharging at a constant current until the battery has reached its terminal voltage consistent with Metco's construction.

[00:01:45] Speaker 02:
And that's from, from the district court, but the district court.

[00:01:50] Speaker 01:
Did that definition include or did it involve the measurement from the IEEE?

[00:01:57] Speaker 02:
it cites to the IEEE.

[00:02:01] Speaker 01:
And who took the measurement for the IEEE?

[00:02:04] Speaker 02:
It's not clear who took the measurement.

[00:02:06] Speaker 02:
This is from a dictionary definition, not an actual test that's run by the IEEE.

[00:02:12] Speaker 02:
And nowhere does the IEEE talk about an average discharge current.

[00:02:16] Speaker 02:
There's no definition in the IEEE that average discharge current is over the entire rated capacity.

[00:02:24] Speaker 02:
What the court was doing

[00:02:27] Speaker 02:
in our view, was simply saying that one test, and we don't disagree, that one test to test a battery is a constant current discharge test.

[00:02:36] Speaker 02:
And here, had the applicant wanted to claim the constant, that the battery pack met the constant or continuous current discharge test, they could have used that language.

[00:02:45] Speaker 02:
But they chose to use the word average.

[00:02:48] Speaker 02:
And average is not a single continuous.

[00:02:50] Speaker 02:
In fact, as we saw from Mr. Meyer's declaration, he used a test where

[00:02:55] Speaker 02:
The average was, and if we look at, for example, the test result, JA31008, he makes this test using these multiple cuts.

[00:03:08] Speaker 02:
But the average current, even though the current goes above and below 20 amps, the average current is still identified as being 26 amps.

[00:03:17] Speaker 02:
Now the claims were allowed over this, not because this test did not meet the average discharge current test.

[00:03:25] Speaker 02:
Instead, the applicant said that, and this is a JA31005-006, that the cell's temperature exceeded the operating specifications for the cell, and that's why it failed.

[00:03:42] Speaker 02:
But there's never any disclaimer or statement that this intermittent test failed because it did not meet the 20 amp limitation, or it did not produce an average discharge current of 20 amps.

[00:04:03] Speaker 01:
Is the 20 amp limitation, is that measured over the entire capacity of the battery, the life of the capacity of a battery, or at the peak of those intermittent uses that we're talking about?

[00:04:18] Speaker 02:
It's over the, in our proposed construction we believe it's over a time consistent with the use of a handheld power tool.

[00:04:26] Speaker 02:
So if you're drilling 10 screws for example.

[00:04:29] Speaker 02:
It's that time that you're using the battery pack from the time you drill the first screw.

[00:04:34] Speaker 02:
You may have a spike in current, and then it drops.

[00:04:37] Speaker 02:
And then you do the next screw, there's a spike in current.

[00:04:41] Speaker 03:
So we think, for example... When you say consistent with the use of the tool, is that your proposal?

[00:04:51] Speaker 03:
The way I use a tool is maybe two screws, the way that construction

[00:04:56] Speaker 03:
It's unclear, but I think it could be over the life of the battery is used with the tool.

[00:05:06] Speaker 02:
It doesn't require that it be a single continuous discharge where it

[00:05:10] Speaker 02:
You hook the battery up to a tester.

[00:05:12] Speaker 03:
So I guess what I'm maybe trying to get at is, are you making two distinct points?

[00:05:20] Speaker 03:
One is the time period or the period.

[00:05:23] Speaker 03:
It may not even be measured in time, but rather battery capacity over which the average is measured.

[00:05:28] Speaker 03:
And the other is the portion of the board's claim construction that says it needs to, I forget the exact language,

[00:05:38] Speaker 03:
stay reasonably close to 20 amps, so that you could get a 20 amp average over the life of the capacity with a lot of peaks and valleys, I suppose.

[00:05:51] Speaker 02:
You can, and that's exactly what Mr. Meyer did.

[00:05:54] Speaker 02:
So I think it would be over the life of the battery, even if it's this intermittent use, where you use those above 20, as you suggested, or then below 20 when you're

[00:06:05] Speaker 02:
you're performing that screwing operation.

[00:06:07] Speaker 03:
Wasn't it reasonable for the board to say this patent is about a battery pack for use by, use with a variety of different tools, some of which will be, have lots of intermittent on-offs, and some of which will have a steadier use, and since this

[00:06:35] Speaker 03:
is supposed to be useful for all of them, that in context, the broadest reasonable reading is what it gave.

[00:06:47] Speaker 03:
Namely, it's not tool-specific, which I take it to be the real core of your argument, that it should vary from tool to tool.

[00:06:56] Speaker 02:
It's not tool-specific, but all the tools that are disclosed in the specification are a driver drill and a circular saw.

[00:07:03] Speaker 02:
And those are used intermittently.

[00:07:05] Speaker 02:
And the appellees have made this argument that the most demanding power tool is a circular saw.

[00:07:13] Speaker 02:
But even a circular saw, it's unlikely you're going to cut a 40 foot board.

[00:07:17] Speaker 02:
You're cutting two by fours.

[00:07:18] Speaker 02:
So maybe it's 20 seconds in the most demanding application for a cut, or a piece of plywood.

[00:07:24] Speaker 02:
Again, it's 15 to 20 seconds.

[00:07:27] Speaker 02:
And then you're picking up the tool.

[00:07:28] Speaker 02:
You're moving to the next spot and making it cut.

[00:07:31] Speaker 02:
And there's no disclosure in the specification of using the tool.

[00:07:35] Speaker 02:
for one continuous cut.

[00:07:38] Speaker 02:
And I think that would actually be a much narrower construction than the broadest reasonable interpretation, which is you're using the battery pack with a tool.

[00:07:49] Speaker 01:
OK.

[00:07:49] Speaker 01:
You're into your rebuttal time, but we'll restore you back to four minutes.

[00:07:52] Speaker 01:
Thank you, General.

[00:08:02] Speaker 00:
Good morning, Your Honors.

[00:08:03] Speaker 00:
May it please the Court?

[00:08:06] Speaker 00:
That issue here are three patents that have been through 20 post-grant proceedings as well as a district court trial.

[00:08:12] Speaker 03:
Do I remember right?

[00:08:14] Speaker 03:
I think we got some correspondence in November.

[00:08:16] Speaker 03:
There was litigation in Wisconsin between these two parties.

[00:08:21] Speaker 03:
And was there an enablement defense presented?

[00:08:25] Speaker 03:
There was not.

[00:08:27] Speaker 03:
So one of the things that's maybe you can just help me out.

[00:08:30] Speaker 03:
And I'm not even sure it's relevant here, obviously.

[00:08:32] Speaker 03:
IPRs are not based on enablement.

[00:08:36] Speaker 03:
Show me where in the spec the patent says, here's how we were able to do what nobody else had been able to do before?

[00:08:48] Speaker 00:
Sure.

[00:08:48] Speaker 00:
It's a combination of things.

[00:08:51] Speaker 00:
So the patent describes, and this was an issue in the reexaminations, because in the reexamination proceedings, enablement was raised.

[00:09:01] Speaker 00:
So we had an expert there, Dr. George Blomgren.

[00:09:05] Speaker 00:
And in response to the enablement question that was presented in the reexamination proceedings, he went through and described what a person of ordinary skill in the art would need to know about this battery pack in order to make it.

[00:09:18] Speaker 00:
He said, there's a couple of fundamental building blocks that you need to know.

[00:09:21] Speaker 00:
You need to know the size and the shape of the cells.

[00:09:24] Speaker 00:
You need to know the chemistry of the cells.

[00:09:26] Speaker 00:
You also need to know about pack management and other things that allow that battery pack to produce the high currents that handheld power tools needed.

[00:09:34] Speaker 00:
And that's what this invention solved.

[00:09:36] Speaker 00:
Before this invention, there was never a lithium chemistry-based battery pack that could supply the high currents that handheld power tools like these need.

[00:09:45] Speaker 01:
But all those elements you just laid out, those were known in the art.

[00:09:51] Speaker 00:
Yes and no.

[00:09:53] Speaker 00:
So it was known that you had to have a chemistry.

[00:09:56] Speaker 00:
It was known that you had to have a certain size cell.

[00:09:58] Speaker 00:
But the specific size cell here, for example, the 70 millimeters in length, that was something that was not known in the art.

[00:10:05] Speaker 00:
And that was something that was new with this invention, a specific size.

[00:10:08] Speaker 00:
And it's really all the pieces that go together to make that puzzle to work.

[00:10:13] Speaker 00:
So having a certain size, a shape,

[00:10:17] Speaker 00:
chemistry and then how you arrange them actually in the pack as well to manage the heat and other things because when you're drawing these high currents.

[00:10:23] Speaker 01:
Wasn't it known that the size can be limited according to its use?

[00:10:30] Speaker 00:
I would not say that.

[00:10:31] Speaker 00:
I would say it was known that you could have different sizes but one of the things that they figured out here was to have additional material added to the cells, the size, to allow it to make the 20 amp limitation.

[00:10:42] Speaker 00:
That's really the key here is the Milwaukee folks determined that

[00:10:46] Speaker 00:
in order to have this be feasible to make it work in the type of applications that they needed it to work in.

[00:10:51] Speaker 01:
That's what I'm talking about.

[00:10:52] Speaker 00:
They needed to have the 20 amp capability for the life.

[00:10:55] Speaker 00:
I mean, if you didn't get that entire life, and this goes back to the claim construction, the whole point here is that this is not about having a battery pack that could deliver 20 amps for a second or two seconds.

[00:11:07] Speaker 00:
That wouldn't be sufficient for use with a handheld power tool.

[00:11:09] Speaker 00:
It just wouldn't work.

[00:11:11] Speaker 00:
So they had to come up with a way to make this work where you could get 20 amps from the start to the end of that charge.

[00:11:16] Speaker 00:
the whole life of the pack.

[00:11:18] Speaker 04:
Getting back to the re-exam, didn't the examiner at some point, when it eventually let the claims go through, declare that the real invention here is not how to put a bunch of batteries together to crank up to 20 amps, but it was more about battery pack management and design?

[00:11:40] Speaker 04:
When you read the patent, you see that's what the focus

[00:11:44] Speaker 04:
of the patent specification really is?

[00:11:47] Speaker 00:
I would disagree partly with that.

[00:11:49] Speaker 00:
It's a component.

[00:11:50] Speaker 00:
Again, it's sort of a puzzle that goes together with all the different components.

[00:11:53] Speaker 00:
So you have to have the right size, shape, cell, the right chemistry.

[00:11:58] Speaker 00:
And then you have to put it away and together in a way that actually works for this use, this use for the handheld power tool.

[00:12:03] Speaker 00:
So it is really a combination of all those things that went into making this work.

[00:12:07] Speaker 00:
So I would agree that there was some discussion of that.

[00:12:10] Speaker 00:
But it's not that alone.

[00:12:11] Speaker 00:
There was actually all the things that came together.

[00:12:13] Speaker 00:
The selection of the chemistry, the selection of the size and the shape, and then how you actually put them together in the pack was what made this thing work.

[00:12:20] Speaker 00:
And that's why it's been so successful.

[00:12:22] Speaker 04:
Going to the claim construction, there's an argument that the board didn't account for the word average in the claim, average discharge current.

[00:12:35] Speaker 04:
So I mean, I guess what I'm wondering is, is it your view that the board actually believes that its construction, even though it didn't say the word average, like it said, it necessarily is there.

[00:12:48] Speaker 04:
And that's part of the claim construction that we're talking about, about 20 amps average discharge current over the capacity of the pack.

[00:13:00] Speaker 04:
Or do you think?

[00:13:04] Speaker 04:
that would be an alteration of the claim construction to all of a sudden insert that word average into the construction.

[00:13:10] Speaker 00:
I think yes on both of those points.

[00:13:12] Speaker 00:
I think yes, the construction.

[00:13:14] Speaker 04:
Both of my questions?

[00:13:15] Speaker 04:
Yes.

[00:13:16] Speaker 04:
Okay.

[00:13:18] Speaker 00:
Go ahead.

[00:13:18] Speaker 00:
So yes, I think that the board likely believes that average is already built into the construction just as the district court did.

[00:13:25] Speaker 00:
And we had another construction more recently from the most recent trial in Wisconsin.

[00:13:30] Speaker 00:
where the judge went through and explained exactly why this construction does account for the average requirement.

[00:13:35] Speaker 00:
And saying, as you look at the construction, one way to look at average is just to, say, total up a bunch of numbers and then divide by something.

[00:13:43] Speaker 00:
That's one way.

[00:13:43] Speaker 00:
But in the context of this patent in this industry, it's shown that constant current discharge tests are the way that these things are done.

[00:13:51] Speaker 00:
And when you run it at 20 amps, constant current, that is the average over the entire pack.

[00:13:56] Speaker 00:
So question one is, yes, I believe the board accounted for average.

[00:14:00] Speaker 00:
And I do think it would be a change, an alteration, if you now put the word average in expressly.

[00:14:04] Speaker 04:
When you attach the battery pack to a power tool, a drill, a circular saw, whatever, then all of a sudden, isn't there this intermittent current going up and down like crazy?

[00:14:19] Speaker 00:
There would be.

[00:14:20] Speaker 00:
And that's why I think that that's such.

[00:14:22] Speaker 04:
So how am I supposed to think that's continuous current?

[00:14:26] Speaker 00:
So that's why I think that, and this is what was found in the district court as well,

[00:14:29] Speaker 00:
That is not the right way to test for this.

[00:14:32] Speaker 00:
If you look at the claim, it's directed to a battery pack.

[00:14:35] Speaker 00:
We are talking about the capabilities of a battery pack.

[00:14:39] Speaker 00:
It says nothing about a tool being required to be attached to it.

[00:14:41] Speaker 00:
That's one of the problems with the construction offered by the appellant.

[00:14:45] Speaker 00:
And I think you picked up on it is, once you start introducing variables like a tool, a specific type of tool, you run into all kinds of problems.

[00:14:52] Speaker 00:
What type of tool are we using?

[00:14:54] Speaker 00:
How are you using it?

[00:14:55] Speaker 00:
Are you drilling a hole with a drill bit?

[00:14:58] Speaker 03:
Put aside the general suggestion that the claim construction should account for specific tools.

[00:15:09] Speaker 03:
Put that aside.

[00:15:10] Speaker 03:
It feels to me like it's a different point to say that when the claim says capable of an average, at least the broadest reasonable construction,

[00:15:25] Speaker 03:
doesn't incorporate a notion of hovering around the average through all of the years.

[00:15:33] Speaker 03:
As long as you get to the average, it doesn't matter how spiky the graph would be.

[00:15:40] Speaker 00:
And so let me address that.

[00:15:42] Speaker 00:
And I think you asked two questions is one is about duration and one is about sort of up and down.

[00:15:47] Speaker 00:
So let me talk about both of those.

[00:15:48] Speaker 00:
I think I heard you.

[00:15:49] Speaker 03:
Let's talk about up and down.

[00:15:50] Speaker 03:
I'm not that worried about duration.

[00:15:52] Speaker 00:
Okay.

[00:15:52] Speaker 00:
So on up and down, in this industry, with this application, it is absolutely the way you test using a constant current discharge test.

[00:16:00] Speaker 00:
This is about the capability of a battery pack.

[00:16:03] Speaker 00:
If you look at all the evidence, you look at the declaration from the inventor, Gary Meyer, he talks about how constant current discharge tests are what we use to test battery packs.

[00:16:13] Speaker 00:
If you even look at the prior art that's been asserted here, look at Linden, that's the battery textbook.

[00:16:18] Speaker 00:
That talks about constant current discharge tests.

[00:16:20] Speaker 00:
If you look at SATO,

[00:16:21] Speaker 00:
their primary reference that they're relying upon, what does it show?

[00:16:24] Speaker 00:
Constant current discharge test.

[00:16:26] Speaker 00:
Because that is how you test the capabilities of battery pack.

[00:16:29] Speaker 00:
It's known, that's what people in industry believe, and that's how they test these things.

[00:16:33] Speaker 03:
Was there contrary evidence?

[00:16:35] Speaker 00:
No, I don't believe so.

[00:16:37] Speaker 00:
Not that it was credited by the board.

[00:16:38] Speaker 03:
That's the other... That wasn't my question.

[00:16:44] Speaker 03:
One question is whether there was contrary evidence, and the second is what did the board do with it?

[00:16:49] Speaker 03:
Let's start with the first question.

[00:16:51] Speaker 00:
So in terms of, can you run other types of tests with tools?

[00:16:55] Speaker 00:
Sure.

[00:16:55] Speaker 00:
I mean, you could put a battery pack on a tool and run a test with it.

[00:16:59] Speaker 00:
And I think my colleagues over here will probably stand up and say, if you look at the test results, if you look at our brief, one of the things that our inventors did when they tested a prototype pack was do cutting tests.

[00:17:09] Speaker 00:
They took a circular saw, they hooked a battery pack up to it, and they ran tests to see how many boards can we cut.

[00:17:15] Speaker 00:
And that's one type of testing that you can do.

[00:17:17] Speaker 00:
That is not the type of test that folks use to evaluate a battery pack.

[00:17:21] Speaker 00:
This is a claim that's directed to a battery pack.

[00:17:23] Speaker 00:
And it's about the capability of that pack that's important.

[00:17:27] Speaker 00:
And when you start running all these different test tools, specific, everything else, and doing the up and down, there's so many variables that come into play.

[00:17:33] Speaker 00:
The type of material.

[00:17:34] Speaker 00:
Are you drilling hard material or soft material?

[00:17:37] Speaker 00:
Are you using a bit or a blade?

[00:17:38] Speaker 00:
Is it stalled?

[00:17:39] Speaker 00:
Is it new?

[00:17:40] Speaker 04:
I guess in the end, I'm still trying to make sure I understand.

[00:17:44] Speaker 04:
The claim says average.

[00:17:45] Speaker 00:
Correct.

[00:17:46] Speaker 04:
You keep drawing me back to say, well, I should, in my head, translate average to constant continuous.

[00:17:56] Speaker 00:
Over the entire capacity.

[00:17:57] Speaker 04:
Over the entire capacity.

[00:17:58] Speaker 00:
Correct.

[00:17:59] Speaker 04:
But again, that seems to exclude what a conception of average that Judge Toronto was referring to about these swings, high swings up and down that ultimately leads to an average current of

[00:18:16] Speaker 04:
say, 20 amps.

[00:18:18] Speaker 00:
Sure.

[00:18:18] Speaker 04:
So I mean, what is it in the record that makes it clear that even though everybody in this industry, when it comes to these battery packs, the power tools, is talking about constant current, continuous current, your patent, when it says average current, also means what the industry is talking about, when the industry is talking about continuous and constant.

[00:18:43] Speaker 04:
That's the bridge that I'm interested in you

[00:18:46] Speaker 00:
I would point you to the declaration that was submitted by the inventor, Gary Meyer, and that's at appendix sites 46087 through 46091.

[00:18:57] Speaker 00:
Now, what was happening there was... Can you give me a hint as to which of these volumes that's in?

[00:19:04] Speaker 00:
It should be in volume three.

[00:19:05] Speaker 03:
The page number being on the cover is self-evident.

[00:19:07] Speaker 00:
It should be in volume three.

[00:19:09] Speaker 03:
I don't know how many volumes... Part what?

[00:19:11] Speaker 03:
Part what?

[00:19:12] Speaker 00:
I don't know.

[00:19:13] Speaker 00:
I've got...

[00:19:14] Speaker 03:
What was it?

[00:19:15] Speaker 03:
And it's in the 46,000 range?

[00:19:17] Speaker 00:
Correct, yes.

[00:19:18] Speaker 03:
What was the number exactly?

[00:19:20] Speaker 00:
46,087.

[00:19:21] Speaker 00:
Okay, part three.

[00:19:25] Speaker 04:
Sorry about that.

[00:19:28] Speaker 04:
Volume three, part three of three.

[00:19:29] Speaker 00:
Mine are done in just volume one, two, and three.

[00:19:31] Speaker 00:
I don't have sub-parts.

[00:19:33] Speaker 03:
And what was the exact number?

[00:19:34] Speaker 00:
46087 through 46091.

[00:19:38] Speaker 00:
All right, which paragraph number?

[00:19:41] Speaker 00:
Let's start with six.

[00:19:47] Speaker 04:
And where does it say, when I used average discharge current in the claims, I meant the industry accepted way of understanding current discharge as constant current.

[00:20:13] Speaker 00:
Obviously, we're not going to see that exact statement in there.

[00:20:17] Speaker 04:
What's the best paragraph you've got for me?

[00:20:19] Speaker 04:
46,087 to 46,091.

[00:20:24] Speaker 00:
Correct.

[00:20:25] Speaker 00:
So I think, let me give you some background here.

[00:20:28] Speaker 00:
So what we're doing here is there was a prototype battery pack that Milwaukee was testing.

[00:20:34] Speaker 00:
And what they did to evaluate whether this could meet what they were looking for was they ran tests on it.

[00:20:39] Speaker 00:
They did some cutting tests.

[00:20:40] Speaker 00:
But importantly, they ran constant current discharge tests.

[00:20:44] Speaker 00:
And what the inventor says here is, and I'll look at paragraph 10.

[00:20:49] Speaker 00:
He says, in each of the discharge tests, the rapid drop-off in voltage was followed by recovery of the voltage to approximately 20 volts after the pack was disconnected.

[00:20:59] Speaker 00:
Then he says, this demonstration that the pack had not been substantially discharged by a constant load of 20 amps over a period of time, regardless of voltage cutoff.

[00:21:08] Speaker 00:
So what he's saying here is,

[00:21:10] Speaker 00:
By testing this at a 20 amp constant current discharge and then realizing that the voltage collapsed, it couldn't continue discharging, he knows that this is not working because it's not getting the entire capacity out.

[00:21:23] Speaker 00:
So when you look at all the description here, he talks about the key to this requirement is that you can get 20 amps of constant current over the entire capacity.

[00:21:32] Speaker 00:
And if you don't get the capacity, you're not passing the test.

[00:21:36] Speaker 00:
So that's the best that I can point you to.

[00:21:37] Speaker 00:
We don't have a statement.

[00:21:39] Speaker 00:
If I could go back and change the file history, I would.

[00:21:41] Speaker 00:
But we don't have that.

[00:21:43] Speaker 00:
The best we have is all the statements from the inventors here.

[00:21:45] Speaker 00:
Then you also have the other contemporaneous evidence, the Sato reference, the Linden textbook.

[00:21:50] Speaker 00:
Everything in this industry points to this is how things are described for this type of test.

[00:21:54] Speaker 01:
Suppose that the battery is discharged with one cut.

[00:21:58] Speaker 01:
And at the peak of that cut, you have 20 amps.

[00:22:03] Speaker 00:
What does that do to your argument?

[00:22:05] Speaker 00:
If the entire capacity was discharged in one cut,

[00:22:09] Speaker 00:
Then I think that that would be an indication.

[00:22:12] Speaker 00:
Again, I don't think that's the right way to test because cutting things in a lot of variables, in terms of the tool, how you're using it, the material you're cutting, the blade, and everything else.

[00:22:21] Speaker 01:
Well, it goes to my understanding of what we're talking about when we say average.

[00:22:25] Speaker 01:
And I asked your colleague whether we're talking about a 20 amp average at the peak of the cut or for the capacity of the battery.

[00:22:38] Speaker 00:
So again, I think that this is the problem you run into with trying to evaluate this if you're using different materials and different tools to cut.

[00:22:46] Speaker 00:
As we have maintained all along, the way that you test for meeting this claim requirement is a 20 amp constant current discharge test.

[00:22:55] Speaker 01:
Doesn't this problem go back to the use of a dictionary by the district court, which relied on a power measurement that itself is unknown?

[00:23:06] Speaker 00:
I don't think so at all.

[00:23:06] Speaker 00:
I think that that shows you that in this industry, when you talk about things, the way you talk about it is measuring it over the life of the discharge.

[00:23:14] Speaker 03:
Can I ask you, you keep referring to how the industry talks about something.

[00:23:21] Speaker 03:
Does the industry use the term average?

[00:23:24] Speaker 03:
And were any of the references, the textbooks, the whatnot, did they say,

[00:23:30] Speaker 03:
Did they use the term average talk and in particular in reference to a current or are we in a situation where the claim language is actually a departure from the way the industry talks about it and then we have to figure out whether that departure, what to do with the departure to distinguish it from whatever it is the industry is talking about in different terms or to fold it into what the industry uses different terms to talk about.

[00:24:00] Speaker 00:
I have to say, I don't know if Linden anywhere talks about average or doesn't talk about average.

[00:24:07] Speaker 00:
I can't answer that affirmatively one way or the other.

[00:24:09] Speaker 00:
I'd have to go back and look at Linden.

[00:24:11] Speaker 00:
It's a huge, thick textbook.

[00:24:13] Speaker 00:
I think here, we are using, Patentee is using the term consistent with the usage in the industry.

[00:24:19] Speaker 00:
I think folks understand that.

[00:24:21] Speaker 03:
You can't say that he's using the term of greatest

[00:24:25] Speaker 03:
Difficulty average consistent with the term the way the term is used in the industry if you can't even identify a single place where the industry uses the term Understood understood that that's So what does the word average mean in the claim here?

[00:24:42] Speaker 00:
I believe and I think we also just can't focus on the one term, right?

[00:24:46] Speaker 00:
You've got to consider the limitation as a whole when you look at the limitation as a whole it means that that pad can deliver just like the

[00:24:54] Speaker 00:
District court said, just like the PTAB said, 20 amps over the entire capacity.

[00:25:00] Speaker 00:
Close to 20 amps over the entire capacity.

[00:25:02] Speaker 00:
That's what it means.

[00:25:03] Speaker 04:
Correct.

[00:25:05] Speaker 04:
What if we said the claim construction needs to say the word average?

[00:25:10] Speaker 04:
Average 20 amps over the capacity.

[00:25:16] Speaker 00:
I don't think that would change anything here based upon the references.

[00:25:19] Speaker 00:
I mean, if you look at the underlying board decision,

[00:25:21] Speaker 00:
What they found was is none of the references teach 20 amps over the entire capacity.

[00:25:27] Speaker 00:
They didn't limit it to constant or up and down.

[00:25:30] Speaker 00:
So if you were to change that construction, I don't think it would change the outcome.

[00:25:35] Speaker 00:
They also said there was no motivation to combine the references.

[00:25:37] Speaker 00:
So again, regardless of what the construction is, I don't think it alters the outcome in these cases at all in terms of the IPR.

[00:25:44] Speaker 01:
And we haven't devoted too much time to the issue of motivation to combine.

[00:25:47] Speaker 01:
But that is a central issue here, isn't it?

[00:25:51] Speaker 00:
I think there's two other issues that they raised in their briefs.

[00:25:54] Speaker 00:
One was whether the board properly considered the scope and content of the prior art from the perspective of one of ordinary skill in the art.

[00:26:01] Speaker 00:
And two is whether they required explicit motivation to combine in the references themselves.

[00:26:07] Speaker 00:
I think the board got it right on both of those points.

[00:26:09] Speaker 00:
It absolutely considered the scope and content of the prior art from the perspective of one of ordinary skill in the art.

[00:26:14] Speaker 00:
It considered all of the appellant's arguments and statements from its expert.

[00:26:18] Speaker 00:
It made decisions and credibility determinations between the different experts.

[00:26:22] Speaker 00:
And there is substantial evidence to support its conclusions on what the prior art teaches and what it doesn't teach.

[00:26:27] Speaker 00:
With respect to motivation to combine, I think the board absolutely got it right again.

[00:26:31] Speaker 00:
They didn't ignore the arguments from the appellant.

[00:26:34] Speaker 00:
They didn't ignore the arguments from their expert.

[00:26:37] Speaker 00:
They considered all the arguments and the statements from the expert and, again, made credibility determinations.

[00:26:42] Speaker 00:
They credited our expert with his statements as to why one would not be motivated to combine.

[00:26:47] Speaker 00:
looking for an express motivation to combine in the references they specifically said we've looked at the statements in the arguments from both sides and both experts

[00:26:54] Speaker 00:
And we believe the Apple is here, our side, so.

[00:26:57] Speaker 03:
Can I just double check something?

[00:26:58] Speaker 03:
Sure.

[00:26:59] Speaker 03:
At least in the snap-on IPRs.

[00:27:05] Speaker 03:
Yes.

[00:27:05] Speaker 03:
Maybe not so much in the shervon, but we don't have to care about those anymore.

[00:27:11] Speaker 03:
I took the board's discussion about no sufficiently proven motivation to combine to fold in a notion of no reasonable expectation of success.

[00:27:23] Speaker 03:
That is, it was at crucial places, the board said, the Relevance Guild Artisan wouldn't think to do this because they wouldn't think it would work.

[00:27:35] Speaker 03:
And I guess I took that to be rather central to your case, in part because I took your secondary consideration evidence to be something like everyone knew what the goal was,

[00:27:53] Speaker 03:
Nobody can figure out how to do it until we did.

[00:27:58] Speaker 00:
So I think you're absolutely right on the secondary consideration point.

[00:28:00] Speaker 00:
I think you've got that right.

[00:28:01] Speaker 00:
That's the evidence that was presented.

[00:28:03] Speaker 00:
I think part of it, in terms of the obviousness, motivation to combine, may be at least somewhat based upon the outcome determination.

[00:28:13] Speaker 00:
But I don't think entirely.

[00:28:15] Speaker 00:
I do think when you bring in the three references.

[00:28:18] Speaker 03:
If you take out expectation of success, how do you square your secondary consideration theme?

[00:28:26] Speaker 03:
Everybody knew what the goal was here.

[00:28:29] Speaker 03:
Nobody could do it with an idea that nobody was motivated to start combining as many different things as they could to reach the goal.

[00:28:37] Speaker 03:
They just couldn't.

[00:28:39] Speaker 00:
Well, I think a couple things.

[00:28:42] Speaker 00:
The motivation

[00:28:44] Speaker 00:
The things that folks were trying to do I think was just to get more power out of battery pack.

[00:28:49] Speaker 00:
I don't know that everybody was motivated to do what Milwaukee did was to try this specific chemistry to produce these specific amp hours and amperage.

[00:28:58] Speaker 00:
So there was a general consensus in the industry.

[00:29:00] Speaker 00:
We want more power.

[00:29:01] Speaker 00:
Folks always want more power from battery packs.

[00:29:04] Speaker 00:
But I don't know that folks are as focused on using this type of chemistry and this type of construction with what we've got in the claim.

[00:29:10] Speaker 04:
I think another way of stating your argument is that these proposed combinations, Sato, lots of problems with Sato, super high discharge rate, be very dangerous.

[00:29:22] Speaker 04:
danger of overheating, et cetera.

[00:29:25] Speaker 04:
And then for the Hilti proposed rejection with Yanai, those proposed usages of the various different cells in Yanai wouldn't get you to 20 amps.

[00:29:41] Speaker 04:
So it's a technical problem with the references being relied upon.

[00:29:46] Speaker 04:
for trying to make this claim eventually.

[00:29:49] Speaker 00:
I think you're right, again, on both of those.

[00:29:51] Speaker 00:
On Yunai, it was a calculation that was done incorrectly.

[00:29:55] Speaker 00:
You know, the expert there, Dr. Abraham, really just missed it.

[00:29:58] Speaker 00:
And in fact, when you get down to the end, he admitted that he did the calculations wrong, and the only combination in the institution decision wouldn't get you to 20 amps.

[00:30:06] Speaker 00:
They would have to add other cells or something else.

[00:30:08] Speaker 00:
So I think it just doesn't get you there on Yunai.

[00:30:10] Speaker 00:
And I think here on Sato, you're right.

[00:30:14] Speaker 00:
First of all, it's a high discharge current.

[00:30:16] Speaker 00:
There's no indication that you would be able to put those cells together into a battery pack, especially with the halage material that retains heat and wants to introduce it back into the battery.

[00:30:25] Speaker 00:
That's the antithesis of what you need to do in this type of situation.

[00:30:28] Speaker 01:
OK, you're well over your time.

[00:30:30] Speaker 01:
Got it.

[00:30:30] Speaker 01:
We took you there, so.

[00:30:31] Speaker 01:
I understand.

[00:30:32] Speaker 01:
We thank you for your arguments.

[00:30:34] Speaker 01:
And we'll just give Mr. Parky five minutes of rebuttal time.

[00:30:41] Speaker 01:
Thank you, Your Honor.

[00:30:52] Speaker 03:
addressing the point that was made that the board's decision should be affirmed even if its claim construction was wrong about the need to hover around 20 during the life as opposed to getting to a numerical average around 20?

[00:31:11] Speaker 02:
Of course.

[00:31:13] Speaker 02:
So under the correct BRI, we have this average which would encompass these intermittent cuts.

[00:31:19] Speaker 02:
The prior art unquestionably discloses the limitations of the claim.

[00:31:22] Speaker 02:
We argue in our brief that even under the adopted construction, the prior art references meet the limitation.

[00:31:28] Speaker 02:
But it's unquestionable, even under the board's notion that SATO and 4, that combination would lead to overheating, for example.

[00:31:39] Speaker 02:
So the board relied heavily on this unsupported.

[00:31:42] Speaker 04:
I guess the problem is, whatever the articulation of the claim, hovering at

[00:31:49] Speaker 04:
constant 20 amps, average of 20 amps.

[00:31:53] Speaker 04:
The reasoning for combining SAPO with 4 and Halage, the board identified specific problems and was more persuaded by the other side's expert than the other expert in terms of

[00:32:07] Speaker 04:
whether those problems are real or not.

[00:32:10] Speaker 04:
And so there's this more fundamental question of whether SATO's, I don't know, allegedly more experimental type battery cell would just be something that's too dangerous to combine with other SATO battery cells to create a battery pack for a cordless hour pool.

[00:32:30] Speaker 04:
So there's that more fundamental problem you've got to get over before you can

[00:32:35] Speaker 04:
debate whether SATO would meet your conception of an average discharge rate?

[00:32:41] Speaker 02:
So I would push back on the combination of SATO cells leading to overheating.

[00:32:46] Speaker 02:
That was an argument that was concocted by Milwaukee's expert.

[00:32:50] Speaker 02:
There is no indication in SATO that the cells overheat.

[00:32:53] Speaker 02:
And in fact, the cells in SATO were assembled or built, tested, and confirmed to meet the 20 amp limitation test.

[00:33:03] Speaker 04:
Well, let me just ask.

[00:33:06] Speaker 04:
If we say there's substantial evidence to support the police finding that there wouldn't be a reasonable expectation of success, I suppose, in combining Sato with Hallaj and Foer, then the claim construction is just a technical one, isn't it?

[00:33:30] Speaker 02:
It's not moot, because in combining foreign sato, as you recognize, the board rely on this notion of overheating.

[00:33:38] Speaker 04:
And there's... I know, but I'm taking that away from you for a second, just so I can organize in my mind what is the importance of the debate over the claim construction if, hypothetically, I were to accept that I'm going to give deference to the board's

[00:33:58] Speaker 04:
finding that one wouldn't be motivated to combine these things for various reasons.

[00:34:03] Speaker 04:
Is that fair to say?

[00:34:05] Speaker 02:
I don't think it's fair to say in the sense that the board's, the board finding that you wouldn't be motivated to combine Florence Auto was based on its adopted construction, which requires that single continuous use over the entire rated capacity.

[00:34:19] Speaker 02:
That if you adopt Snap-on's construction, where it's this intermittent

[00:34:24] Speaker 02:
use.

[00:34:24] Speaker 02:
That, and there's testimony that that obviates the overheating.

[00:34:28] Speaker 02:
You don't have that problem of overheating because one of the, and this is unrebutted testimony from one of Snap-on's experts, Dr. Ed Chalkwick, that an intermittent discharge allows the cell to sustain higher average discharge currents.

[00:34:42] Speaker 02:
And that's a JA 31205 and 31216 to 217.

[00:34:48] Speaker 02:
And what he explains there is that

[00:34:51] Speaker 02:
when the battery is able to rest in between cuts, it re-equilibriates the battery.

[00:34:58] Speaker 02:
And it goes into some details about the chemicals in the anode and cathode, reducing polarization.

[00:35:06] Speaker 02:
But what he's saying there is that reduces any potential overheating.

[00:35:10] Speaker 02:
So the basis for the board rejecting the combination of 4 and Sato under their construction is obviated under

[00:35:17] Speaker 02:
snap-on proposed construction where you can have these these intermittent cuts you don't have that problem of overheating and you don't have that problem that maybe one of ordinary school in the yard wouldn't have been motivated to combine those two references which you know as we discussed in our brief we disagree with but I just you know as far as harmless error okay you got 37 seconds you want to conclude yes

[00:35:41] Speaker 04:
So here, there were- Could you argue that argument in your brief?

[00:35:44] Speaker 04:
Just curious, this point about now you've got all this resting periods in this intermittent time.

[00:35:58] Speaker 02:
We do in our brief.

[00:36:02] Speaker 02:
And it's, I don't know the exact spot, but it's towards the end of the claim construction section in our opening brief.

[00:36:13] Speaker 02:
So around page 31, page 35 and 36, line four, there is a statement, there's no question that a given cell will be able to

[00:36:39] Speaker 02:
deliver a given current more easily if discharged intermittently as opposed to continuously, and it cites to the declaration of Dr. Wrench-Aublich.

[00:36:48] Speaker 02:
Thank you very much.

[00:36:49] Speaker 02:
Thank you.