[00:00:00] Speaker 01:
Look away.

[00:00:35] Speaker 01:
Mr. Vespa?

[00:00:40] Speaker 01:
Do you want to reserve a few minutes?

[00:00:41] Speaker 03:
Yes, sir.

[00:00:43] Speaker 01:
You may proceed.

[00:00:44] Speaker 03:
May I please the court?

[00:00:47] Speaker 03:
This court has held that in determining the differences between the prior art and the claims, the question is not whether the differences themselves would have been obvious, but whether the claim to invention as a whole would have been obvious.

[00:01:02] Speaker 03:
In this vein, I think it's important to understand the general state of the art at the time of the invention.

[00:01:09] Speaker 03:
For many reasons that were discussed in the 329 reissue patent, Mr. Wall recognized a need in the utility pole market that he felt could be addressed with a tapered ductile iron utility pole.

[00:01:21] Speaker 03:
Now, in the Wall 851 patent, Mr. Wall disclosed a process by which he could create a tapered ductile iron pole using centrifugal casting techniques.

[00:01:31] Speaker 03:
the traditional technique known as the DeLavod process.

[00:01:35] Speaker 03:
Now, it's important to understand that these traditional DeLavod centrifugal casting techniques were created for centrifugal casting of non-tapered cylindrical pipes.

[00:01:49] Speaker 03:
That was the state of the art.

[00:01:51] Speaker 03:
Now, why is this important?

[00:01:53] Speaker 03:
It's important because the last step in the process of creating these

[00:02:00] Speaker 03:
these ductile iron centrifugally cast poles involves passing these poles or pipes through an annealing oven.

[00:02:08] Speaker 03:
Now, of course, with a non-tapered cylindrical pipe or pole, you can push that along the running rails of the annealing oven, and it goes in a generally straight fashion through the annealing oven.

[00:02:28] Speaker 02:
Is it actually rolling or is it?

[00:02:30] Speaker 03:
Yes, your honor.

[00:02:31] Speaker 03:
It's actually rolling.

[00:02:32] Speaker 03:
Right.

[00:02:32] Speaker 03:
And if it's conical in any way, it'll start to veer.

[00:02:36] Speaker 03:
Correct.

[00:02:37] Speaker 03:
And this is why this is so important because Mr. Waugh applied these centrifugal casting techniques to try to make a tapered pole using technology that was really designed for non-tapered cylindrical pipes.

[00:02:55] Speaker 03:
And

[00:02:55] Speaker 03:
What he discovered was that as you tried to push these poles through the annealing oven, one side outran the other and crashed into the side of the annealing oven.

[00:03:06] Speaker 03:
So the 3-2-9 reissue pattern addresses this problem in the form of the running ring.

[00:03:16] Speaker 03:
Now, McWane's argument is that

[00:03:23] Speaker 03:
The wall 851, one of their arguments, the wall 851 patent discloses a flange that was used to basically attach the pole to a base, like a cement base, for example.

[00:03:39] Speaker 03:
And the argument goes, oh, well, that's a flange.

[00:03:43] Speaker 03:
And that could be a running ring.

[00:03:45] Speaker 03:
Well, the wall 851 patent was completely silent as to that last process of pushing

[00:03:53] Speaker 03:
the pole through the annealing oven.

[00:03:55] Speaker 03:
The design considerations for a running ring that's designed to keep the pole from crashing into the side of the annealing oven are completely different than the design considerations for a flange that's going to be used to attach this pole to a foundation.

[00:04:12] Speaker 01:
I don't find support in the claims or the spec for your proposed construction of running

[00:04:20] Speaker 01:
Certainly the spec describes certain uses of the running ring during the casting process.

[00:04:28] Speaker 01:
But the claims don't require such steps.

[00:04:32] Speaker 01:
And I don't see a clear definition or other information regarding the structural attributes of the running ring.

[00:04:40] Speaker 03:
Well, Your Honor, it's important to note that the claim doesn't claim just a flange.

[00:04:49] Speaker 03:
it claims a, quote, running ring.

[00:04:52] Speaker 03:
Now, this is a term that was created by the patentee.

[00:04:58] Speaker 03:
It's a special term.

[00:05:00] Speaker 03:
And that special term, it is proper to look at the specification, as you know, to see how that term is defined.

[00:05:09] Speaker 03:
That term implies certain, I think, design attributes.

[00:05:14] Speaker 01:
But is it improper to read limitations from a preferred embodiment?

[00:05:19] Speaker 01:
are described in the specification, even if it's the only embodiment.

[00:05:23] Speaker 01:
That's Epos text v. Pegasus text.

[00:05:30] Speaker 03:
Yes, Your Honor.

[00:05:30] Speaker 03:
Well, I think that being said, the specification, I do believe, is informative in defining what a term, as this Court is aware, a patentee can act as its own lexicographer.

[00:05:47] Speaker 03:
it was clear that the patentee in this case, he actually made up this term, running ring.

[00:05:53] Speaker 03:
And I do believe that it's proper to at least look at the specification for guidance on how that term should be defined.

[00:06:03] Speaker 02:
Further... What exactly do you say, in the spec, the inventor acted is as like a psychographer.

[00:06:11] Speaker 02:
Is it the language at column four,

[00:06:15] Speaker 02:
lines, I guess, 7 through 14.

[00:06:18] Speaker 01:
And where do you make that argument, the lexicography argument?

[00:06:24] Speaker 03:
In our reply brief, Your Honor.

[00:06:32] Speaker 02:
So I guess you have two questions to deal with, one from me and one from Judge Wallach.

[00:06:35] Speaker 01:
Yes, Your Honor.

[00:06:36] Speaker 01:
I should have said, where do you make it below?

[00:06:39] Speaker 02:
I'm sorry, Your Honor, what was the?

[00:06:42] Speaker 02:
Well, no, you say that this is the situation

[00:06:45] Speaker 02:
where the inventor acted as his own lexicographer.

[00:06:48] Speaker 02:
And my comment in response to that was, are you referring to the language at the top of column four between, I guess, about lines seven and 14, at appendix 49?

[00:07:06] Speaker 02:
That's where there's a clear discussion of this ring or flange.

[00:07:15] Speaker 03:
Yes, Your Honor, that is part of what we're looking at as well.

[00:07:25] Speaker 03:
Now, the specification in appendix page 49.

[00:07:33] Speaker 03:
Yes, line 7 through 16, that is correct.

[00:07:43] Speaker 03:
There's language there that says, for example, once the pole is removed from the mold, this flange ring is engaged by a control rail such that the pole can be run through a straight annealing furnace.

[00:07:56] Speaker 02:
I guess what I'm wondering is, that's the language you point to.

[00:08:02] Speaker 02:
It seems to me, with due respect, a little bit of a stretch to say that that language shows

[00:08:08] Speaker 02:
the inventor acting as his own lexicographer.

[00:08:11] Speaker 02:
He's describing something about the running ring and what it does and so forth.

[00:08:16] Speaker 02:
But it doesn't seem to me that it rises to the level of his being his own lexicographer as we've delineated it in our cases.

[00:08:25] Speaker 03:
Well, Your Honor, I guess my response would be that the same phrase is used, and the phrase in the claim is running ring.

[00:08:34] Speaker 03:
And that phrase running ring,

[00:08:37] Speaker 03:
is used in the specification.

[00:08:39] Speaker 02:
You're saying the running, that adjective there.

[00:08:43] Speaker 03:
Running ring.

[00:08:43] Speaker 02:
Yes, Your Honor.

[00:08:44] Speaker 02:
I guess a gerund, maybe.

[00:08:47] Speaker 02:
You're saying that that is what you really are pointing to.

[00:08:50] Speaker 03:
Yes, Your Honor.

[00:08:51] Speaker 03:
We use that specific phrase in the claim, and that specific phrase in the specification, there is a discussion as to what that running ring does.

[00:09:02] Speaker 03:
As you know, Your Honor, we also filed a motion to amend.

[00:09:06] Speaker 03:
in which we tried to explicitly put in language with regards to the running ring, which was, of course, denied by the PTAB on the grounds that even the amended claims would be obvious.

[00:09:27] Speaker 03:
Which brings me back to my original point, which is the patentees or the patent owners

[00:09:36] Speaker 03:
insight that, OK, admittedly, there were flanges in existence.

[00:09:43] Speaker 03:
There are flanges to connect pipes together, flanges to connect a pole or a pipe to a foundation.

[00:09:49] Speaker 03:
But the insight to say, wait a minute, we can modify this flange to repurpose it in a way that will now allow us to push these tapered poles through an annealing oven.

[00:10:05] Speaker 03:
And it's not a trivial thing.

[00:10:08] Speaker 03:
If the diameter of the flange is too great, it's going to hit the bottom of the annealing oven.

[00:10:16] Speaker 03:
If it's too short, it's going to hop over the rail.

[00:10:21] Speaker 03:
If it's not strong enough, there's constant force on that running ring as the pole is pushed through, it could fail.

[00:10:28] Speaker 03:
So there are different design considerations for the running

[00:10:35] Speaker 03:
And I think in hindsight, you can say, oh, look, there's a flange.

[00:10:39] Speaker 03:
It looks just like a running ring.

[00:10:41] Speaker 03:
There you go.

[00:10:41] Speaker 03:
It's obvious to take the flange and modify it.

[00:10:45] Speaker 03:
But it's more than that.

[00:10:47] Speaker 03:
It's that aha moment where you go, hey, wait.

[00:10:49] Speaker 03:
We know these flanges are used for something totally different.

[00:10:53] Speaker 03:
But what if we put the pole on the side and we used it to push it along and keep it from?

[00:10:59] Speaker 03:
That's the invention as a whole.

[00:11:02] Speaker 03:
And that's what I would like.

[00:11:03] Speaker 03:
the court to focus on not just laser focus on, okay, would it be obvious to change the flange to do this, but that kind of aha moment that the inventor had to actually use something that was never used for that before for a completely different purpose.

[00:11:27] Speaker 03:
I'll go ahead and reserve that.

[00:11:35] Speaker 01:
Kelly.

[00:11:50] Speaker 00:
May it please the court.

[00:11:53] Speaker 00:
Counsel for WAH just referred to the aha moment of the inventor.

[00:11:56] Speaker 00:
And I'd like to point the court first to page seven of the gray brief.

[00:12:02] Speaker 00:
And I think this really describes clearly what the aha moment was for the patentees.

[00:12:09] Speaker 00:
And in this section, Waugh is discussing the board's obviousness determinations, and particularly being critical of the obviousness determinations that the board reached.

[00:12:19] Speaker 00:
And at the bottom of the main paragraph there on column seven, Waugh states, referring to the board, it must also consider the patentees' insight

[00:12:31] Speaker 00:
that flange is used in the prior art, and then it goes on, could conceivably be used for completely different purposes.

[00:12:38] Speaker 00:
And that really confirms what the issue is in this case, because the patentee's insight was that existing prior art flanges could be used in a different way.

[00:12:46] Speaker 00:
There's no difference in the prior art flange.

[00:12:49] Speaker 00:
Wod didn't invent a new flange.

[00:12:51] Speaker 00:
There's nothing new about the flange itself physically.

[00:12:53] Speaker 00:
They believe, allegedly, that they came up with a new use for the flange.

[00:12:58] Speaker 00:
The problem is, claim 10 is a product claim.

[00:13:02] Speaker 00:
And I'd like to address the board's construction of the running ring limitation in claim 10 in that context.

[00:13:08] Speaker 00:
The board's construction was correct for a couple different reasons.

[00:13:11] Speaker 00:
First, it was based directly on the specifications definition of what the running ring physically is.

[00:13:17] Speaker 00:
The specification says the running ring is simply a larger base circle ring cast at the pole's larger diameter end.

[00:13:25] Speaker 00:
It's very clear about that.

[00:13:26] Speaker 00:
And that's important because, again, claim 10 is a product claim.

[00:13:29] Speaker 00:
It's defined by what the pole

[00:13:31] Speaker 00:
physically is.

[00:13:33] Speaker 00:
The second point is that there's no other physical attribute of the running ring that's described anywhere in the intrinsic record.

[00:13:39] Speaker 00:
You can look in the specification, the prosecution history, wherever you want.

[00:13:43] Speaker 00:
You won't find any definition of the structural features of the running ring other than the fact that it's a larger base circle or ring cast at the large end of the pole.

[00:13:52] Speaker 00:
The board recognized that.

[00:13:54] Speaker 00:
And under the broadest reasonable interpretation standard, there's simply no other reasonable construction they could have reached.

[00:13:59] Speaker 00:
to define what the running ring physically is.

[00:14:03] Speaker 00:
The board also correctly rejected Wall's proposed construction of the running ring.

[00:14:07] Speaker 00:
And they did so because the construction focuses on what the running ring does instead of what it is.

[00:14:13] Speaker 00:
And again, that's confirmed at page 7 of the Gray brief.

[00:14:16] Speaker 00:
But the board went further and said that the entire record is devoid of any evidence of structural differences between the prior art and the claimed running ring.

[00:14:25] Speaker 00:
They focus on this repeatedly.

[00:14:27] Speaker 00:
And what they recognized was that,

[00:14:29] Speaker 00:
The proposed construction that Waugh offered was an attempt to effectively backdoor an alleged method invention into a product claim.

[00:14:38] Speaker 00:
The board recognized the claim ten as a product claim, and they rejected Waugh's construction for that reason.

[00:14:47] Speaker 00:
Under the board's construction, there's no dispute the claims 10 through 13 are obvious.

[00:14:52] Speaker 00:
But even if this court were to adopt a narrower construction,

[00:14:55] Speaker 00:
substantial evidence would still support the board's conclusion that claims 10-13 are obvious.

[00:14:59] Speaker 00:
It's undisputed that the Y-851 prior art discloses a circular ring-shaped flange.

[00:15:05] Speaker 03:
Would that actually be the question, whether substantial evidence supported a finding that the board didn't make but could have made?

[00:15:14] Speaker 00:
It's really more of a harmless error argument, Your Honor, because even if this court adopts an error reconstruction, the evidence remains of the board's conclusions of obviousness with respect to 10-13.

[00:15:25] Speaker 00:
would remain the same.

[00:15:27] Speaker 00:
So even if this board can reach, as a matter of law, a new claim construction, but all of the evidence still supports the determination.

[00:15:34] Speaker 00:
And vacating the board's obviousness determinations for claims 10 through 13 wouldn't produce a different result.

[00:15:41] Speaker 00:
All the evidence is there.

[00:15:42] Speaker 00:
If you were to remand to the board, they would just find the same thing again.

[00:15:45] Speaker 00:
And I'll explain why.

[00:15:47] Speaker 00:
The board was clear that they found specifically

[00:15:51] Speaker 00:
There's no structural difference between the WA 851 flange and the running ring.

[00:15:56] Speaker 00:
They said the trial record is devoid of any evidence of any structural difference between the prior flange and the running ring.

[00:16:02] Speaker 00:
And they even went further.

[00:16:04] Speaker 00:
They said that a person of ordinary skill would have known how to configure any running ring to work with any annealing oven or any running rail.

[00:16:12] Speaker 00:
There's testimony from our expert to that effect.

[00:16:15] Speaker 00:
And in fact, Waugh has never disputed in the IPR or anywhere in the appeal that it would have been obvious to configure the flange in the prior art to perform the guiding function in his claim construction.

[00:16:26] Speaker 00:
So even under a very narrow interpretation of running ring, there's effectively no dispute that claims 10 through 13 are obvious.

[00:16:37] Speaker 00:
I'd like to move on to the board's denial of the motion to amend.

[00:16:41] Speaker 00:
And really, I'd like to begin at page 24 of the joint appendix in the board's decision.

[00:16:46] Speaker 00:
I think this is very important.

[00:16:50] Speaker 00:
Mr. Wall's argument is only that the board failed to properly allocate the burden of proof with respect to the motion to amend.

[00:16:57] Speaker 00:
But in the board's decision at page 24, and I'm at the bottom of the main paragraph, they cite to this court's order granting rehearing en banc and aqua products.

[00:17:07] Speaker 00:
At the time this opinion was crafted, the board knew that aqua products was being reheard en banc, and they specifically noted that the issue was to address burdens of persuasion and productions regarding the motion to amend.

[00:17:19] Speaker 00:
And they were very careful to note that at the beginning of their analysis of the substitute claims.

[00:17:25] Speaker 00:
Knowing that the burden of proof might change, the board then deliberately assessed the substitute claims in two ways.

[00:17:31] Speaker 00:
First, they found, under the old standard, that the patent owner failed to meet their burden of establishing patentability.

[00:17:37] Speaker 00:
But they didn't stop there.

[00:17:38] Speaker 00:
They went further and made a separate and independent finding of obviousness.

[00:17:42] Speaker 00:
The evidence of record also demonstrates that the subject matter of the running ring limitation or the variable casting limitation, which was the other added feature, would have been obvious to a person of ordinary skill in the art.

[00:17:52] Speaker 00:
They took deliberate care to make those separate and independent findings of obviousness.

[00:17:57] Speaker 00:
And it's clear from page 24 that they did that to make sure the decision would survive whatever the outcome in aquaproducts was.

[00:18:05] Speaker 00:
The other point I would make on that issue is that WAH identifies no error whatsoever in the board's factual findings that stem from that alleged placement of the burden of proof.

[00:18:16] Speaker 00:
So even if this court were to find some issue with the court's references to the pre-Occuproduct standard, that leaves this court with the board's undisputed findings that all of the limitations in the substitute claims were known, that it would have been obvious to combine them, and that they would have been entirely obvious.

[00:18:35] Speaker 00:
If this court were to vacate, the board's denial of the motion to amend, there's no question what would happen on remand.

[00:18:40] Speaker 00:
The board would again find the substitute claims obvious, and we would be right back here where we started.

[00:18:48] Speaker 00:
If there are any questions from the panel, I'd be happy to entertain them.

[00:18:51] Speaker 00:
Otherwise, I'll yield the rest of my time.

[00:18:52] Speaker 00:
Thank you, Mr. Kelly.

[00:19:00] Speaker 01:
Mr. Vasquez, you have some time left.

[00:19:09] Speaker 03:
So a council for McWane is making a big deal about our statement regarding the new use for the flange and that we're

[00:19:35] Speaker 03:
We always talk about the flange with regards to what it does as opposed to what it is.

[00:19:42] Speaker 03:
The important thing to note, though, is that what the running ring does- That's a concession you just made.

[00:19:47] Speaker 03:
What's that?

[00:19:48] Speaker 01:
I said that's a concession you just made.

[00:19:52] Speaker 03:
No.

[00:19:53] Speaker 03:
Your Honor was saying that's what McWane's argument is.

[00:19:57] Speaker 03:
The important thing to note, though, is that what the running ring does informs what it is.

[00:20:05] Speaker 03:
it informs what the structural requirements of that running ring is.

[00:20:10] Speaker 01:
How does it differ from the prior iron physically?

[00:20:14] Speaker 03:
Well, there's evidence on the record from not only our expert, but from McWane's expert as well, that basically says once you have the parameters of the annealing oven,

[00:20:30] Speaker 03:
the how far apart the running rails are, how the distance between the running rail and the floor of the oven, these physical parameters, then that will inform the structural requirements in terms of the dimensions, thickness, length of what the running ring should be.

[00:20:51] Speaker 03:
Now, this court in the orthognetics case dealt with an issue regarding

[00:21:01] Speaker 03:
In orthonetics, it was a claim directed to a wheelchair that included the phrase, so dimensioned as to be insertable through the space between the door frame of an automobile and one of the seats thereof.

[00:21:15] Speaker 03:
This court found the phrase to be as accurate as the subject matter permits, because automobiles come in various sizes.

[00:21:21] Speaker 03:
And as long as those of ordinary skill in the art realize that dimensions could be obtained, that's all that's required.

[00:21:28] Speaker 03:
This is a similar situation, annealing ovens

[00:21:31] Speaker 03:
can vary depending on the manufacturer, the model.

[00:21:36] Speaker 03:
So as not only our expert from McLean's expert as well testified, a person of ordinary skill in the art, once they have those parameters of the annealing oven, would be informed with regards to the physical requirements of that running ring.

[00:21:54] Speaker 02:
So Mr. Vasquez, your challenge here is to the claim construction the board used.

[00:22:01] Speaker 02:
Yes, Your Honor.

[00:22:04] Speaker 02:
But do you challenge the obviousness determination under the board's claim construction?

[00:22:11] Speaker 02:
In other words, assuming for the moment one agrees with the claim construction of the board on this term, running ring, I don't understand you to be challenging the obviousness finding

[00:22:24] Speaker 02:
based on that claim construction, although you do challenge the claim construction.

[00:22:28] Speaker 03:
Yes, Your Honor.

[00:22:28] Speaker 03:
We do challenge the claim construction.

[00:22:30] Speaker 03:
The claim construction that the board settled on, no, we did not challenge that.

[00:22:38] Speaker 03:
We challenged the construction.

[00:22:40] Speaker 02:
The construction, but not the determination based on the construction.

[00:22:46] Speaker 02:
In other words, if one accepts the board's... No, you're right.

[00:22:50] Speaker 03:
You're correct, Your Honor.

[00:22:51] Speaker 02:
Correct.

[00:22:58] Speaker 03:
With regards to the motion to amend, in our reply brief, we did address and we did make arguments with regards to the non-obviousness of the proposed claims.

[00:23:15] Speaker 03:
And one of the key arguments that we made was that the board improperly focused

[00:23:25] Speaker 03:
on the differences between the flange and a running ring as opposed to the invention as a whole, that insight moment that the inventor had to basically take a flange and repurpose it, redesign it for a running ring.

[00:23:42] Speaker 01:
But unlike Bayh, the board very carefully made an alternative finding.

[00:23:50] Speaker 03:
I'm sorry, Your Honor, an alternative finding

[00:23:52] Speaker 03:
with regards to?

[00:23:53] Speaker 01:
That it would have found the amended claims unpatentable as obvious, even if Mr. Wilde did not bear the burden of establishing patentability.

[00:24:01] Speaker 03:
Yes, Your Honor.

[00:24:03] Speaker 03:
Your time's up.

[00:24:05] Speaker 03:
Thank you, Your Honor.

[00:24:07] Speaker 01:
Thank you.