[00:00:05] Speaker ?:
Wow.

[00:00:31] Speaker 02:
Okay, our third case this morning is number 17, 2297, South Tech Systems LLC versus Engineered Corrosion Solutions.

[00:00:40] Speaker 02:
Mr. Bennett.

[00:00:42] Speaker 02:
Yes, thank you.

[00:00:43] Speaker 02:
And again, let's not start the clock for a moment.

[00:00:45] Speaker 02:
You have asked for a remand to consider additional grounds which were not instituted before, right?

[00:00:53] Speaker 03:
Yeah, that is correct, Your Honor, and I believe that has been opposed by the patent owner in this case.

[00:00:59] Speaker 02:
Okay, and Mr. Stage, is it?

[00:01:02] Speaker 02:
Stack, Your Honor.

[00:01:03] Speaker 02:
Stack.

[00:01:04] Speaker 02:
And you oppose that, the remand?

[00:01:07] Speaker 00:
Yes, Your Honor, we do.

[00:01:08] Speaker 02:
On the ground that you read SAS is only covering unaddressed claims?

[00:01:13] Speaker 00:
That is part of the argument, yes, sir.

[00:01:15] Speaker 02:
What's the rest of?

[00:01:17] Speaker 00:
The rest of it is the non-appealability, 103-14-D, of institution decisions, which needs to be read in light of both COSO and SAS together.

[00:01:26] Speaker 00:
I think still the non-appealability clause would require that appeal here.

[00:01:31] Speaker 00:
But I also do not read SAS to apply to grounds

[00:01:34] Speaker 00:
Only to clients.

[00:01:36] Speaker 02:
Okay.

[00:01:36] Speaker 02:
All right.

[00:01:36] Speaker 02:
Well, you can address that in your room.

[00:01:37] Speaker 02:
So why don't you start the clock, please?

[00:01:42] Speaker 03:
May it please the court.

[00:01:44] Speaker 03:
The first issue I'd like to address is the issue on the motivation to combine the Viking and wood references.

[00:01:51] Speaker 03:
As you know, the Viking reference teaches a dry pipe sprinkler system with manual drains.

[00:01:58] Speaker 03:
And the wood reference teaches an automatic drain

[00:02:01] Speaker 03:
for this specifically designed for a dry pipe system.

[00:02:06] Speaker 03:
The board in the case held there was no persuasive evidence of a reason to combine those references.

[00:02:13] Speaker 03:
However, I think the board's own findings on that issue are inconsistent and undercut the board's legal conclusion there.

[00:02:21] Speaker 03:
And I'd like to start, I guess, by directing the board's attention to three sentences of the final decision.

[00:02:29] Speaker 03:
which I think frames the issue quite nicely.

[00:02:33] Speaker 03:
This will be on page 23 of the appendix.

[00:02:36] Speaker 03:
This is page 14 of the final decision.

[00:02:40] Speaker 03:
And on page 14, the board states, wood refers to a typical prior art two-valve manually operated condensate drain.

[00:02:51] Speaker 03:
The manually operated prior art condensate drain disclosed in wood is referred to as a two-valve drum drip in Viking

[00:02:59] Speaker 03:
and is shown at reference number 24 in the figure on page 2 of the liking.

[00:03:04] Speaker 03:
The wood device improves on this manually operated prior art device by providing for the discharge of condensate automatically.

[00:03:13] Speaker 03:
And then just a few sentences later at the end of the next paragraph, the board says, as explained in wood, the basic purpose of the condensate drain 32, that's the drain in wood, is to eliminate the need

[00:03:25] Speaker 03:
to manually drain small amounts of condensed water from piping systems and other containers.

[00:03:31] Speaker 03:
So in the factual findings, the board found the reason.

[00:03:35] Speaker 04:
So that would be a reason to substitute the wood automatic drain for the Viking manual drain.

[00:03:43] Speaker 03:
Correct.

[00:03:45] Speaker 04:
But what you're trying to get wood for is the vent.

[00:03:49] Speaker 04:
And I know the vent is

[00:03:51] Speaker 04:
or at least you think it's part of the automatic drain.

[00:03:54] Speaker 04:
Correct.

[00:03:55] Speaker 04:
But you didn't, correct me if I'm wrong, but I thought you argued that you would add the wood drain to the system to get a vent, not that you would substitute the wood drain, automatic drain, to the Viking manual drain to improve the operation of the drain.

[00:04:11] Speaker 04:
Yeah, actually I think... They seem to be two different things to me.

[00:04:14] Speaker 03:
Well, they are, those are two different arguments, but I would submit that the argument that you just

[00:04:21] Speaker 03:
articulated is not the argument that we made in our opening brief.

[00:04:25] Speaker 03:
That is the argument that is the patent owner's characterization of our argument.

[00:04:29] Speaker 03:
We have never argued to add a second drain, a second unnecessary drain to Viking to use solely as a vent.

[00:04:38] Speaker 03:
I mean, just studying the argument out loud sounds kind of ridiculous.

[00:04:42] Speaker 03:
So it is not an argument that we made.

[00:04:44] Speaker 03:
The first mention of that argument you will find will be in the patent owner's response.

[00:04:48] Speaker 03:
It is, in fact, a straw man argument.

[00:04:51] Speaker 04:
Well, where in your papers to the board do you argue that you would substitute the automatic drain of wood for the manual drain of Viking to get a vent?

[00:05:04] Speaker 03:
OK.

[00:05:05] Speaker 03:
In the brief, we never used the word substitute or never used the word replaced.

[00:05:08] Speaker 04:
And I would admit that the... You used the word add.

[00:05:11] Speaker 03:
Well, correct on a number of occasions.

[00:05:13] Speaker 03:
But if you read that sentence in context where it says to add a vent, it does not say to add a drain.

[00:05:19] Speaker 03:
And if you read that sentence in context, the first thing we do is describe Viking and the fact that Viking has manual drains.

[00:05:27] Speaker 03:
Next, we mentioned that wood discloses an automatic drain, and that is the fact that its automatic operation is mentioned in wood.

[00:05:33] Speaker 03:
And in fact, the automatic operation is described in detail in our brief.

[00:05:41] Speaker 03:
And really, it's not talking about the automatic operation of the drain.

[00:05:44] Speaker 03:
It says the automatic operation of the drain valve 40.

[00:05:48] Speaker 03:
Immediately after describing the automatic operation of the drain valve the next sentence says thus wood discloses the vent So when he uses the word vent they're referring to the automatic drain valve the automatic drain valve in wood now when you get to the legal conclusion, it says It would be obvious to add a vent Operative to discharge air as talked about wood.

[00:06:13] Speaker 03:
So we're referring back to the teachings of wood.

[00:06:15] Speaker 03:
Now, what does wood teach?

[00:06:17] Speaker 03:
would teach us using an automatic drain with an automatic vent as a replacement.

[00:06:25] Speaker 04:
So what you're saying, I gather, is that even though you didn't say what you meant was substitute would automatic drain for Viking's manual drain because it would get you the automatic drain and a vent, that's what you meant.

[00:06:42] Speaker 04:
Correct.

[00:06:42] Speaker 03:
That's what we meant.

[00:06:43] Speaker 03:
Exactly, Your Honor.

[00:06:44] Speaker 03:
That's not how the board construed your argument.

[00:06:47] Speaker 03:
That's correct.

[00:06:47] Speaker 03:
And that's where we think the legal error lies.

[00:06:51] Speaker 04:
Why is it legal error?

[00:06:52] Speaker 04:
I mean, you didn't make your argument very clearly.

[00:06:58] Speaker 04:
I mean, I get what you're saying is no logical person would have said, let's add a second drain to get a dent.

[00:07:04] Speaker 04:
But that's the way it reads.

[00:07:07] Speaker 03:
But then the question, I think, becomes, we also did not say,

[00:07:11] Speaker 03:
add a second drain and repurpose it as a vent.

[00:07:13] Speaker 03:
We didn't make that argument either.

[00:07:14] Speaker 03:
That's the argument that the board addressed.

[00:07:17] Speaker 03:
If the board is going to say, well, there's a hole here, which the patent owner filled in with this straw man, we did reference the teachings of Wood.

[00:07:25] Speaker 01:
And our reply, Breeze... But that's part of the problem is that you did not give a full developed motivation to combine to the board based on this theory.

[00:07:39] Speaker 01:
Yes.

[00:07:39] Speaker 01:
So, I mean, if you didn't, you had the obligation to present it.

[00:07:44] Speaker 01:
If you didn't present evidence in support of this theory, then why would the board have an obligation to go down that road?

[00:07:52] Speaker 03:
Well, I think we did present evidence, and the evidence is the Wood reference itself, which provides the explicit motivation.

[00:07:59] Speaker 04:
And the board, in its decision, said that... Where in the Wood reference does it provide an explicit motivation to add

[00:08:08] Speaker 04:
an automatic drain to also get a vent.

[00:08:11] Speaker 04:
It doesn't.

[00:08:12] Speaker 04:
Well, you just said it did.

[00:08:13] Speaker 04:
No, no, not to get it.

[00:08:14] Speaker 04:
Well, I mean, here's the problem.

[00:08:16] Speaker 04:
The board found no motivation to combine.

[00:08:18] Speaker 04:
That's a factual issue that we review for substantial evidence.

[00:08:22] Speaker 04:
You're making arguments that, of course, nobody would have said to use wood to get a vent by adding a second drain.

[00:08:30] Speaker 04:
But you didn't say substitute the automatic drain for the

[00:08:37] Speaker 04:
for the manual drain.

[00:08:41] Speaker 04:
Let me ask you this, if the board's finding is there's no motivation to combine because all you argued was you would add wood and nobody would add a second automatic drain in addition to a manual drain.

[00:08:56] Speaker 04:
That would be supported by substantial evidence, right?

[00:09:01] Speaker 03:
I think not.

[00:09:04] Speaker 03:
Our argument doesn't say add a drain, it says add a vent.

[00:09:08] Speaker 04:
You're not answering my hypothetical.

[00:09:09] Speaker 04:
My hypothetical, though, is the factual conclusion that the board thought you were raising and that they addressed and rejected was you would go to Wood to add

[00:09:20] Speaker 04:
Yes.

[00:09:21] Speaker 04:
And the board said, well, the vent in wood, to the extent there's a vent in wood, it's in the automatic drain.

[00:09:27] Speaker 04:
Yeah.

[00:09:28] Speaker 04:
You haven't shown that a skilled artisan would have combined Viking with wood to add a drain to get that vent.

[00:09:36] Speaker 04:
Is that supported by substantial evidence?

[00:09:38] Speaker 03:
I think not.

[00:09:39] Speaker 03:
I think that's erroneous.

[00:09:40] Speaker 03:
And here's why.

[00:09:41] Speaker 03:
I want to go back to that sentence.

[00:09:43] Speaker 03:
It says.

[00:09:44] Speaker 04:
So you think that there, but that suggests

[00:09:48] Speaker 04:
Let me make clear, my hypothetical is not suggesting that your argument is substituting.

[00:09:54] Speaker 04:
It is adding the drain from wood to Vikings, two drains.

[00:10:01] Speaker 04:
That conclusion

[00:10:03] Speaker 03:
that you wouldn't do that as supported by substantial... I agree that the board's finding that there's no motivation to use wood as a second drain solely as a vent.

[00:10:12] Speaker 04:
To add wood's drain to the system.

[00:10:14] Speaker 03:
I agree.

[00:10:14] Speaker 03:
There's no evidence for that.

[00:10:16] Speaker 03:
But that's not the argument that we made.

[00:10:18] Speaker 02:
Help me.

[00:10:19] Speaker 02:
I'm confused.

[00:10:20] Speaker 02:
The patent we're talking about here, the 700 patent, has two vents, right?

[00:10:25] Speaker 02:
It has drip drain to get rid of the water, and it has a vent to get rid of the excess oxygen.

[00:10:32] Speaker 02:
Is that correct?

[00:10:33] Speaker 03:
That's the way it's claimed.

[00:10:35] Speaker 03:
Yes, Your Honor.

[00:10:35] Speaker 02:
Right.

[00:10:35] Speaker 02:
So the patent we're talking about has two drains, and what you're saying is that you would add the wood drain to get the vent, and there wouldn't be any

[00:10:53] Speaker 02:
inconsistency between the patent and doing that, right?

[00:10:59] Speaker 03:
I think your premise of your question is wrong.

[00:11:01] Speaker 03:
A Viking doesn't, the 700 patent doesn't show two drains.

[00:11:05] Speaker 03:
It shows a drip drain and a vent.

[00:11:08] Speaker 02:
Well, that's what I'm talking about.

[00:11:09] Speaker 02:
We're getting caught up in the terminology.

[00:11:11] Speaker 02:
But it has a vent and a drip drain.

[00:11:14] Speaker 02:
So adding a vent

[00:11:16] Speaker 02:
to Viking wouldn't be adding something duplicative of a drip drain, right?

[00:11:28] Speaker 03:
Correct.

[00:11:28] Speaker 03:
And this gives me back to the point I've been trying to make.

[00:11:31] Speaker 03:
So if you will, Your Honor, the petition equates the drain valve 40 with the vent.

[00:11:40] Speaker 03:
In that sentence, it says,

[00:11:41] Speaker 03:
add a vent, if you substitute the word drain valve there, add a drain valve operative to vent gas as taught by wood.

[00:11:49] Speaker 03:
If you add the word drain valve there, which is what petitioner was talking about, add a drain valve as taught by wood.

[00:11:54] Speaker 03:
Now what does wood teach?

[00:11:56] Speaker 03:
Wood teaches putting the drain valve

[00:11:57] Speaker 03:
in one of the vents, or you could put the whole vent in.

[00:12:00] Speaker 03:
I think either way is equivalent.

[00:12:03] Speaker 03:
But once you add a valve, and the motivation to add the valve is to automatically drain.

[00:12:08] Speaker 03:
It's not to get gas, but it just so happens that it operates that way.

[00:12:13] Speaker 03:
And that's the point, that once you find the motivation to combine, and it doesn't have to be for the reason that the patent owner did, the motivation to combine is to eliminate periodic manual draining.

[00:12:24] Speaker 03:
And then the question becomes, OK, there's a reason to add

[00:12:27] Speaker 03:
Woods drain valve to one of the drains of Viking.

[00:12:32] Speaker 03:
Now, once you've done that, then the question is, does that meet the claim limitations?

[00:12:36] Speaker 03:
And I think it does because that drain valve is specifically designed to allow air to escape while maintaining pressure between the minimum and a maximum system pressure.

[00:12:48] Speaker 03:
And so the motivation to combine.

[00:12:50] Speaker 03:
So I would suggest go back and read that sentence.

[00:12:53] Speaker 03:
But instead of reading the noun vent, substitute the word drain valve in there.

[00:12:57] Speaker 03:
And if you look at page 15 of our petition, look at the claim chart.

[00:13:01] Speaker 03:
We say that the drain valve is the vent.

[00:13:04] Speaker 03:
And we don't say put the drain.

[00:13:05] Speaker 03:
We don't really.

[00:13:06] Speaker 03:
You're right.

[00:13:06] Speaker 03:
We didn't develop.

[00:13:07] Speaker 03:
We didn't say where to put the drain valve.

[00:13:09] Speaker 03:
But Wood explains where to put the drain valve.

[00:13:11] Speaker 03:
And we did it specifically said as taught by Wood.

[00:13:14] Speaker 03:
And as far as the reply brief is concerned,

[00:13:16] Speaker 03:
All we did was go and further describe those teachings of woods to further argue the obviousness that we had argued before.

[00:13:24] Speaker 04:
If we agree that there needs to be an SAS remand here to consider the other grounds, do you think we should go ahead and decide what the board did on these grounds or just remand the whole case?

[00:13:37] Speaker 03:
It seems like you should remand the whole case if that's what you're going to do and let the board see if they can correct that.

[00:13:45] Speaker 04:
You don't want us to say anything one way or another?

[00:13:49] Speaker 04:
I mean, isn't it likely if we don't do anything, the board is just going to reinstate its decision?

[00:13:57] Speaker 03:
I guess if we're going to, if you're going to have a decision, yes, I guess it would be helpful to the board to have that information since we've now gone through the process of arguing this case.

[00:14:06] Speaker 03:
It's probably helpful to the board to have that.

[00:14:11] Speaker 02:
So.

[00:14:12] Speaker 02:
Okay.

[00:14:12] Speaker 02:
Let's reserve the rest of your time.

[00:14:20] Speaker 00:
Thank you, Your Honor.

[00:14:24] Speaker 00:
May it please the Court?

[00:14:28] Speaker 02:
On this topic of... It seems to me as though there's a problem that the Board mischaracterized wood.

[00:14:35] Speaker 02:
The wood on its face talks about venting air, and the claims describe that venting is

[00:14:47] Speaker 02:
controlling the pressure so that it doesn't release the water.

[00:14:51] Speaker 02:
Isn't that the case?

[00:14:52] Speaker 00:
No, it's not the case, Your Honor.

[00:14:55] Speaker 00:
The 700 patent distinguishes, and in this art, there's a distinguishing feature between vents and drains.

[00:15:01] Speaker 02:
Well, it does show venting ear, right?

[00:15:04] Speaker 00:
In wood, it does, if there's not water present.

[00:15:08] Speaker 00:
The claims, though, require both a vent.

[00:15:11] Speaker 02:
So one of ordinary skill in the art would first have to consider... But the problem is that the board didn't consider

[00:15:16] Speaker 02:
Wood is showing venting of air, right?

[00:15:20] Speaker 00:
No, I think they did.

[00:15:21] Speaker 00:
They used a shorthand for the claim language, which they referred to as balancing pressures.

[00:15:27] Speaker 00:
But what they're referring to there is the operation of what's claimed, where you're displacing oxygen.

[00:15:36] Speaker 00:
And you have to do that at a preset or adjustable limit.

[00:15:40] Speaker 00:
And in wood, even if you were to do the entire combination that the appellants are arguing for today,

[00:15:47] Speaker 00:
where there is this substitution you still don't get to the claimed features because wood if there's water present it's not sending any gas out and it's certainly not sending any gas out at a preset or adjustable limit.

[00:16:00] Speaker 02:
Is that the ground that the board decided and rejected wood on?

[00:16:05] Speaker 02:
I didn't read it that way.

[00:16:06] Speaker 02:
I thought they were rejecting wood on the ground that it didn't show

[00:16:11] Speaker 02:
venting of air and didn't disclose controlling the pressure in that respect so that it would not trip the valve.

[00:16:25] Speaker 00:
That was part of what they found, but they also said that the discharge of air from wood is incidental to its operation.

[00:16:32] Speaker 00:
They acknowledged that there is air that might be discharged from wood, but they also found that that incidental discharge of air

[00:16:41] Speaker 00:
did not meet the, quote, balancing pressures language, which was what the, again, it's a shorthand for what's claimed.

[00:16:48] Speaker 00:
If we look at what's claimed, we see that you have to displace at a preset or adjustable limit.

[00:16:51] Speaker 00:
And in wood, you don't know how much water is coming through.

[00:16:54] Speaker 00:
You don't know how much oxygen at any point might come out.

[00:16:57] Speaker 00:
You don't know if it's ever going to vent in the, the, the Palin's terms any oxygen.

[00:17:03] Speaker 00:
And you're certainly not doing it at the preset or adjustable limit that's in our claims.

[00:17:07] Speaker 02:
So you've got multiple... Well, I'm not sure that that's true because it talks about the predetermined limit in relation to not tripping the valve that allows the water to come in.

[00:17:17] Speaker 00:
Well, it's talking about using pressure.

[00:17:19] Speaker 00:
Are you referring to the 30 to 40 psi where it cycles?

[00:17:25] Speaker 00:
Yes.

[00:17:25] Speaker 00:
So that's the pressure in the system as a whole.

[00:17:28] Speaker 00:
And you can relieve that pressure in the system by getting rid of water from the system or by getting rid of gas.

[00:17:35] Speaker 02:
Well, it talks about maintaining a predetermined pressure, right?

[00:17:37] Speaker 02:
Yes.

[00:17:38] Speaker 02:
Yeah, and the purpose of the maintaining the predetermined pressure is so that you don't trip the valve that allows the water in it.

[00:17:47] Speaker 00:
I think, yes.

[00:17:47] Speaker 00:
I mean, you do want to have that pressure so that you don't end up tripping the valve.

[00:17:53] Speaker 00:
I don't think Wood states that, and the board was free to make its findings on that, but I think what I'm arguing is that even if you take into account and say it wasn't going to trip the dry pipe valve,

[00:18:06] Speaker 00:
you still don't end up with the claimed vent because you have no idea how much water or air or if any air at all is going to be vented out of woods drain even if you consider it to be a vent which in this art you know if you like the drum drip will have some incidental release of gas that's a manual drain that when you close the top valve if the chambers not full of water some gas is going to come out so

[00:18:33] Speaker 00:
But no one would look at the drum drip, and no one's claiming the drum drip is a vent, just because some gas comes out.

[00:18:39] Speaker 00:
It's the same idea with wood.

[00:18:40] Speaker 00:
One of ordinary skill in the art, looking at wood, would say, this is a drain, not a vent, for one.

[00:18:46] Speaker 00:
And so that's one distinguishing feature of the claims.

[00:18:48] Speaker 00:
But for two, we say, you not only need a vent, but you need a vent that does a very specific thing.

[00:18:52] Speaker 02:
Let's say that wood does show venting of air, which is different than allowing the water out, right?

[00:18:58] Speaker 00:
No, it shows a venting of air only if water is not present.

[00:19:01] Speaker 00:
That is the disclosure in wood.

[00:19:03] Speaker 00:
It says, when water is not present, air could be vented.

[00:19:08] Speaker 00:
And that's a distinguishing feature, because when you have a claim that's talking about expelling oxygen at a preset or adjustable limit, you don't know if any oxygen at all is coming out, much less at what limit it's going to come out.

[00:19:22] Speaker 02:
So your basic point is that wood doesn't help them because it only shows discharging air when there's no water present?

[00:19:31] Speaker 00:
Well, because it doesn't have any rate associated with it.

[00:19:34] Speaker 00:
It may never discharge any air.

[00:19:35] Speaker 02:
Well, it does have a rate.

[00:19:36] Speaker 02:
It talks about the predetermined limit.

[00:19:38] Speaker 00:
Well, it talks about, it's using pressure like a clock on the system.

[00:19:42] Speaker 00:
It's basically saying that you could open an automatic valve in a number of different ways.

[00:19:48] Speaker 00:
You could have electronics there and you could hook up a clock to it, something like that.

[00:19:52] Speaker 00:
But they knew that there was already a pressure regulator on the air compressor in wood.

[00:19:57] Speaker 00:
So they used that as a clock to put enough pressure on that valve to open it every so often to get rid of the condensate.

[00:20:04] Speaker 00:
And when you read wood, it refers to condensate in almost every location.

[00:20:07] Speaker 00:
There's a couple spots where it says, it acknowledges, if there's not enough water there, when the pressure gets lowered, then some additional gas might come out.

[00:20:17] Speaker 00:
But that's an incidental, and the board acknowledged that and called it incidental.

[00:20:24] Speaker 02:
OK, go ahead.

[00:20:27] Speaker 00:
I sense confusion, Your Honor, with my argument.

[00:20:30] Speaker 00:
And I apologize if I'm confusing things here.

[00:20:33] Speaker 00:
But that pressure that's being discussed, cycling between, say, 30 and 40 PSI.

[00:20:39] Speaker 00:
So that when the pressure drops down to 35 PSI, at 40, the valve is going to open in wood.

[00:20:46] Speaker 00:
Water is going to come out.

[00:20:47] Speaker 00:
Pressure is going to drop.

[00:20:48] Speaker 00:
But then at 35 PSI, it closes again.

[00:20:50] Speaker 00:
And when the pressure comes down.

[00:20:51] Speaker 02:
To maintain the pressure so that the water valve doesn't get tripped.

[00:20:56] Speaker 00:
That is certainly what the appellants are arguing.

[00:21:00] Speaker 00:
And I think even if you agree with that premise, that still does not get us to the claims.

[00:21:05] Speaker 00:
The claims actually require not tripping the valve.

[00:21:08] Speaker 00:
That's one separate requirement.

[00:21:10] Speaker 00:
This has to be an up operational system where you're not tripping that valve.

[00:21:17] Speaker 00:
It has to be in service.

[00:21:18] Speaker 00:
But it also separately has to have a vent that has this oxygen venting feature

[00:21:25] Speaker 00:
at a preset or adjustable limit.

[00:21:29] Speaker 00:
So even if you were to say that wood wouldn't trip the dry pipe valve, that still doesn't get you to the claim.

[00:21:36] Speaker 00:
This is a separate requirement of the claim.

[00:21:38] Speaker 00:
Now acknowledge, the board also found that there was not persuasive evidence that it would prevent the dry pipe valve from tripping.

[00:21:45] Speaker 00:
And that's certainly helpful to our case.

[00:21:47] Speaker 00:
But even if you don't buy that, there are other reasons why, and the board identified them,

[00:21:54] Speaker 00:
why we have additional features in our claim that would preclude a finding of obviousness here.

[00:22:01] Speaker 00:
And there's substantial evidence to support that, which is, you know, the big question for me is there's sort of two prongs to it.

[00:22:08] Speaker 00:
They did bear the burden.

[00:22:10] Speaker 00:
So even if we hadn't provided evidence in opposition, the board was free to find against them because they didn't carry their burden.

[00:22:20] Speaker 00:
But we did actually provide affirmative evidence

[00:22:22] Speaker 00:
that supported our positions through expert testimony.

[00:22:25] Speaker 00:
And in Appellant's opening brief, they mention it once, but only to agree with the statement that they quoted.

[00:22:32] Speaker 00:
And then in the reply, they said it was a straw man argument, and it was irrelevant.

[00:22:36] Speaker 00:
But it's actually not irrelevant to the arguments.

[00:22:38] Speaker 00:
It identifies why wood is not a vent and doesn't do this pressure balancing that the board found.

[00:22:44] Speaker 00:
So there's not really been an attempt to.

[00:22:46] Speaker 01:
Wouldn't it be better if we had a claim construction of vent so that we could

[00:22:50] Speaker 01:
I see that the board didn't think wood was disclosing events, but wouldn't have been better off if we had a claim construction event.

[00:22:59] Speaker 01:
So that conclusion would be tied to a claim construction?

[00:23:04] Speaker 00:
I mean, I don't know that it needed to be an explicit construction, given that the 700 patent, even in its claims, distinguishes between drains and vents.

[00:23:14] Speaker 00:
But I also think that it wasn't essential

[00:23:20] Speaker 00:
for at least some of the additional board's findings.

[00:23:22] Speaker 00:
We're dealing with a number of findings here, and any one of them, I think, would support the finding of non-obviousness.

[00:23:29] Speaker 00:
So even if the court were to assume that we needed to construe VENT for some reason, we still have these other features that are, you know, even if you were to call Wood a VENT, it still doesn't do what the rest of our claim requires.

[00:23:40] Speaker 00:
So I don't know that we would need to send it back for a construction there on VENT, per se.

[00:23:45] Speaker 01:
With respect to the SAS issue,

[00:23:47] Speaker 01:
I didn't really understand your second point about the institution decision's not appealable because, I mean, that's exactly what SAS did was consider the institution decision, right?

[00:24:03] Speaker 01:
And it distinguished Quozo near the end of the opinion.

[00:24:06] Speaker 01:
So how is that still an argument?

[00:24:09] Speaker 00:
It's still an argument because the no appeal clause in 314D that was interpreted in Quozo

[00:24:16] Speaker 00:
The reason that the Supreme Court found the institution decision aspects reviewable in SAS was because there was a clear directive they found in 318A that required on a claim by claim basis that the board had to institute on all claims for challenge or none.

[00:24:33] Speaker 00:
And that that was a clear directive of the statute that had been violated and therefore would fall into that category that the Supreme Court referred to as shenanigans.

[00:24:42] Speaker 00:
that are reviewable.

[00:24:43] Speaker 02:
What they said in SAS is the final written decision requirement is that they address all claims and perhaps all grounds also and so it's a defect in the final written decision rather than a defect in the institution.

[00:24:58] Speaker 02:
It flows from the defect in the institution but it's a defect in the final written decision itself, right?

[00:25:04] Speaker 00:
I disagree with the portion of the premise that says that they said it applies to claims and grounds.

[00:25:11] Speaker 02:
I don't think... No, no, I didn't say that.

[00:25:13] Speaker 02:
I said what I said is that they're not addressing the institution.

[00:25:17] Speaker 02:
They're addressing the final written decision, which is supposed to address all grounds.

[00:25:21] Speaker 02:
And they say it was an error to not address all claims.

[00:25:27] Speaker 00:
I disagree.

[00:25:29] Speaker 00:
I think with all that they said in SAS,

[00:25:32] Speaker 02:
No, you're misreading me.

[00:25:34] Speaker 02:
Forget about grounds.

[00:25:35] Speaker 02:
Let's just talk about claims.

[00:25:36] Speaker 00:
Just about claims, yes.

[00:25:38] Speaker 02:
The defect is that they didn't address all the claims in the final written decision, which flows from their failure to institute.

[00:25:46] Speaker 02:
But it's a defect in the final written decision, which doesn't seem to be barred by appealability.

[00:25:50] Speaker 02:
And that's what the court concluded.

[00:25:52] Speaker 00:
You are right that they did find that it is all about the claims.

[00:25:57] Speaker 00:
And then they worked backwards.

[00:26:00] Speaker 00:
If the final written decision needed

[00:26:02] Speaker 00:
address all claims than the institution decision need to, and they were able to address that.

[00:26:06] Speaker 00:
They weren't barred under 314D because of that.

[00:26:09] Speaker 00:
That's a different factual scenario here.

[00:26:11] Speaker 00:
We don't have a clear directive.

[00:26:12] Speaker 01:
So your two arguments really are tied together.

[00:26:15] Speaker 01:
In other words, there's no argument about the institution, about our review being barred, unless we accept the proposition that it applies only to claims and not to grounds.

[00:26:26] Speaker 01:
That SAS applied only to claims and not to grounds.

[00:26:29] Speaker 00:
No.

[00:26:31] Speaker 00:
So they may be related, but I don't think they're necessarily.

[00:26:34] Speaker 04:
Can we just cut that out then?

[00:26:35] Speaker 04:
Let's just assume we agree SAS requires institution on all grounds and not just dog claims.

[00:26:43] Speaker 04:
So I know you're making that argument.

[00:26:44] Speaker 04:
Let's assume you lose.

[00:26:46] Speaker 04:
Why are we barred then from review here?

[00:26:50] Speaker 00:
Well, isn't it the same error?

[00:26:52] Speaker 00:
It is not the same error because, well, if you believe that

[00:26:58] Speaker 04:
SAS requires the PTO to address everything in the petition, not just institute on or not institute on all claims, but institute or not institute on all claims and all grounds.

[00:27:13] Speaker 04:
That's the way we read SAS.

[00:27:15] Speaker 04:
Then that error, as my colleague says, is in the final written decision.

[00:27:19] Speaker 04:
And we're not barred from reviewing it, are we?

[00:27:23] Speaker 00:
I think if you take that reading of SAS, then you are correct.

[00:27:28] Speaker 00:
And I don't think we can read SAS that way.

[00:27:32] Speaker 00:
And the reason is because the closest they come in the decision to talking about grounds is, I think, this binary choice language and about the petitioner defining the scope of the trial.

[00:27:46] Speaker 00:
And they were doing that all in the course of talking about whether you need to have a final written decision that reaches all claims.

[00:27:55] Speaker 00:
And I agree that it is a binary.

[00:27:56] Speaker 01:
Actually, the language of the statute doesn't just say claims.

[00:27:59] Speaker 01:
It says the patentability of all claims.

[00:28:03] Speaker 01:
Correct?

[00:28:04] Speaker 00:
I believe that's correct.

[00:28:05] Speaker 01:
And so patentability of claims turns on what the grounds for attacking patentability is.

[00:28:12] Speaker 01:
So in addition to the binary choice language, which is pretty rough for your argument, you also have the fact that you're reading the statute.

[00:28:20] Speaker 01:
You're omitting words from the statute.

[00:28:22] Speaker 00:
Well, I think on this binary choice, it was based on the language of the statute that says whether to institute.

[00:28:32] Speaker 00:
And we see that language actually in other parts of the AIA.

[00:28:35] Speaker 00:
And if we interpret SAS as saying that whether to institute means binary for entire petitions and all of the grounds raised in there, we run into conflicts with other parts of the AIA.

[00:28:48] Speaker 00:
such as in 325D, that also talks about whether to institute or order of proceeding under this chapter, chapter 30, and so on.

[00:28:56] Speaker 00:
What it's talking about there is when it says determining whether to institute or order of proceeding, the order of proceeding is referring to re-exams.

[00:29:05] Speaker 00:
So we have the same language of determining whether to institute.

[00:29:09] Speaker 00:
And then in 325D, they extend it into re-exams.

[00:29:12] Speaker 00:
But we know from SAS

[00:29:13] Speaker 00:
re-exams are a claim by claim, ground by ground basis.

[00:29:16] Speaker 00:
You don't have to accept or reject an entire re-exam request just because 325D refers to it as a weather determination.

[00:29:27] Speaker 00:
It's the same language in the AIA, also applying to institution decisions in the context of IPRs and to re-exams.

[00:29:36] Speaker 00:
I think we're getting set up for a conflict in the way we would have to interpret

[00:29:42] Speaker 00:
this whether-to language, if we were to take a broad view of it and say that it's a purely binary choice at the petition level, because then we would essentially be saying that that would also be true of the re-exam level.

[00:29:55] Speaker 00:
And we know in SAS, the Supreme Court even agreed, that that's not the scheme that exists in re-exam.

[00:30:03] Speaker 00:
So I think we have to, there may be other conflicts as well.

[00:30:06] Speaker 00:
This is just one of them that I think would be created.

[00:30:10] Speaker 00:
And I don't think we need to get there, though.

[00:30:12] Speaker 00:
We can limit SAS to what was being addressed there.

[00:30:15] Speaker 00:
Does 318A require all claims?

[00:30:17] Speaker 00:
Look back at the institution decision.

[00:30:19] Speaker 00:
You have to institute on all claims to get there.

[00:30:21] Speaker 00:
And that's what was argued and briefed and decided by the court.

[00:30:25] Speaker 00:
And if we go beyond that, we start to run into some of these additional issues that I'm talking about.

[00:30:32] Speaker 02:
OK.

[00:30:33] Speaker 02:
Thank you, Mr. State.

[00:30:36] Speaker 02:
Mr. Bennett, you've got a couple of minutes here.

[00:30:38] Speaker 03:
Yes.

[00:30:41] Speaker 03:
In the argument, I really didn't get to the point about the erroneous factual findings regarding the board's characterization of Wood's teachings.

[00:30:49] Speaker 03:
I think it was discussed at length during my opposing counsel's argument.

[00:30:57] Speaker 01:
But that's rough, given our standard of review, right?

[00:31:00] Speaker 01:
I mean, we would have to find that they were clearly erroneous.

[00:31:03] Speaker 01:
They go through a lot of bases for what

[00:31:07] Speaker 01:
they were deciding on.

[00:31:09] Speaker 03:
And I think they are.

[00:31:10] Speaker 03:
They are clearly erroneous.

[00:31:12] Speaker 03:
The board found that the Woods drain valve did not regulate pressure.

[00:31:17] Speaker 03:
In fact, the system is designed to operate between 30 and 40.

[00:31:22] Speaker 03:
The valve opens at 35 when you're pressurizing and closes at 35.

[00:31:25] Speaker 03:
It clearly regulates pressure.

[00:31:29] Speaker 01:
But the board specifically found that the release of air was completely incidental to the operation.

[00:31:38] Speaker 03:
And again, that's clearly erroneous.

[00:31:39] Speaker 03:
When the system is pressurized to 40, the valve has to remain open to drop the pressure back to 35.

[00:31:45] Speaker 03:
The pressure drop is essential to the operation of the valve.

[00:31:48] Speaker 03:
You're losing 12.5% of the volume of that system.

[00:31:51] Speaker 03:
When you drop from 40 to 35, you do that nine times.

[00:31:57] Speaker 03:
You've replaced the entire volume of the piping system.

[00:31:59] Speaker 03:
So that is not incidental.

[00:32:01] Speaker 03:
That is how the system operates.

[00:32:03] Speaker 03:
Now, the purpose, of course, the board's correct that the purpose is to drain water, but they do that by opening the valve and let the water carry.

[00:32:11] Speaker 03:
In fact, in one embodiment at the bottom of column three in that patent, I think it's on page 837 in your appendix,

[00:32:19] Speaker 03:
They say they leave the valve open, and it continuously vents as long as the system pressure doesn't go below 30.

[00:32:26] Speaker 03:
So in one embodiment, it's continuously venting air.

[00:32:29] Speaker 03:
So it clearly lets air out.

[00:32:31] Speaker 03:
It clearly regulates pressure.

[00:32:34] Speaker 03:
And as far as this about not operating at a predetermined limit, the only example of a predetermined limit that's cited in the patent itself is a pressure limit.

[00:32:43] Speaker 03:
And this operates at pressure limits.

[00:32:46] Speaker 03:
The patent says,

[00:32:47] Speaker 03:
The only reference to a limit is a relief valve that operates at a predetermined limit to prevent over-pressurization.

[00:32:57] Speaker 03:
There is no other example of a limit in the patent.

[00:32:59] Speaker 03:
So a pressure limit has to be a limit.

[00:33:02] Speaker 03:
And in addition, Wood describes, in addition to the pressure limit, it has a discharge orifice that controls the rate of flow out of that valve once it's open.

[00:33:12] Speaker 02:
So it does also disclose a predetermined limit.