[00:00:01] Speaker 04:
the argument is 18.16.0.0, United Technologies.

[00:00:57] Speaker 04:
Please proceed.

[00:00:58] Speaker 01:
Good morning.

[00:00:59] Speaker 01:
May I please support Lauren Dicken on behalf of United Technologies.

[00:01:03] Speaker 01:
The board's first error below was in its claim construction where it read out the limitation bond layer and instead crafted a construction that removed the concept of bond and merely repeated limitations that were already present in the claim.

[00:01:18] Speaker 01:
Those other limitations were trained to the location of the bond layer, its composition.

[00:01:23] Speaker 01:
But since those limitations were already in the claim, it was error.

[00:01:26] Speaker 01:
to craft a construction that simply repeated them and rendered them superfluous.

[00:01:31] Speaker 01:
And so we must go back to the plain language of the claim, which is bond layer.

[00:01:35] Speaker 01:
It has an ordinary meaning that connotes and incorporates the concept of having adhesion, performing an adhesive function.

[00:01:44] Speaker 03:
When you're talking about the plain meaning, you're talking about the plain meaning of bond layer.

[00:01:48] Speaker 03:
Is the plain meaning of bond or both?

[00:01:51] Speaker 01:
It's really both, right?

[00:01:52] Speaker 01:
So bond is an adjective that modifies layer, and bond knows this notion of adhesion.

[00:01:57] Speaker 01:
But in particular, in this field of study, in this art, as you can see from the objective sources we submitted, bond layer is also known to have this adhesive function associated with it.

[00:02:10] Speaker 04:
So if that's true, aren't we down the road with the problematic questions raised with regard to indefiniteness of written description?

[00:02:18] Speaker 04:
because you say it has some sort of functional sort of claiming.

[00:02:24] Speaker 04:
And if you don't know what level of adhesion is required, the spec doesn't speak to that at all, right?

[00:02:34] Speaker 01:
So, Your Honor, I would say that we are not down the path of indefiniteness for several reasons.

[00:02:40] Speaker 01:
I think indefiniteness is not an issue that can be brought before the board and so we're not faced with a lot of evidence as to whether one of our skill in the art would understand the meaning of the term bond layer if a specific degree of adhesion was not specified as part of the construction or the specification.

[00:02:57] Speaker 01:
I think it's clear

[00:02:58] Speaker 01:
Our position is that one would understand what would need to be done in the context of this sort of invention in this field.

[00:03:08] Speaker 04:
So why can't we draw on, I guess, and there's some discussion in the briefs about an alternative construction, which is even if you construe it as bond, does not, whether or not the Tarantieva reference also has the same or similar composition.

[00:03:28] Speaker 01:
Well, so I will say, to respond to your question, Your Honor, so Tarentiva, when it describes its coding, it says its complicated layer adheres to the substrate itself.

[00:03:43] Speaker 01:
And what we're looking for in terms of construction is that the bond layer needs to adhere another layer to the substrate.

[00:03:50] Speaker 01:
There's nothing in Tarentiva that teaches that its layer would be adhered

[00:03:56] Speaker 01:
to this BSAS or the get you silicate that is recited by the claims.

[00:04:04] Speaker 01:
So Tarantiba.

[00:04:05] Speaker 01:
Why can't we make that leap?

[00:04:07] Speaker 04:
I mean, either it has the ability to adhere.

[00:04:10] Speaker 04:
I mean, you're right.

[00:04:13] Speaker 04:
I mean, nothing is ever perfect.

[00:04:15] Speaker 04:
But why is that enough to say, OK, even in an obviousness inquiry or whatever?

[00:04:21] Speaker 01:
Well, I think both science experts agree that there are several factors one needs to consider when you know whether or not two materials will be compatible with each other.

[00:04:30] Speaker 01:
And it's clear that not all materials that meet the requirements of the claim may necessarily adhere to each other.

[00:04:39] Speaker 01:
And there's not a problem that, and really we're looking, I think we're in this position because we're looking through the lens of hindsight.

[00:04:46] Speaker 01:
It's not a problem if not every species of the claim is operable.

[00:04:51] Speaker 01:
that it may be not.

[00:04:54] Speaker 01:
Now, only with hindsight do we know, by using the patent specification as a guide, do we know that our inventors determined that this particular kind of combination may have this adhesive properties.

[00:05:08] Speaker 04:
But the specification we're talking about doesn't mention that at all, right?

[00:05:12] Speaker 01:
The specification discloses that an improved bond code

[00:05:17] Speaker 01:
that certainly serves the function of this bond because it's a bond code.

[00:05:22] Speaker 01:
It serves the function of having adhesion and then the improvement is in the area of fracture toughness.

[00:05:28] Speaker 01:
The inventors below in the patent are not required to describe why they thought they'd have a reasonable expectation of success or why they had a motivation to put these materials together.

[00:05:39] Speaker 01:
Their requirement is to tell you what they discovered

[00:05:42] Speaker 01:
And the genius behind it is really not a requirement in the patent act.

[00:05:45] Speaker 01:
So I don't think it's appropriate to apply the standard that GE had to meet for reasonable expectation of success to deciding how great or how complete or how appropriate the specification is of the patent.

[00:05:58] Speaker 01:
And I think we're mixing two inquiries there.

[00:06:00] Speaker 01:
Excuse me.

[00:06:03] Speaker 01:
I think it's inappropriate.

[00:06:05] Speaker 01:
If there is some infirmity with the specification, and we don't think there is at all, it is not the time

[00:06:10] Speaker 01:
to address that before the board.

[00:06:12] Speaker 01:
And we can't raise the specter of potential 112 issues in order to completely eliminate a claim limitation from the claim in the term of a bond layer, regardless of how much detail is in the specification.

[00:06:24] Speaker 03:
I understand that this patent is directed to an improvement over a prior invention.

[00:06:30] Speaker 03:
And it was discovered that this bond layer was important.

[00:06:34] Speaker 03:
Does the earlier patent talk about the bond layer?

[00:06:37] Speaker 03:
It's adhesive?

[00:06:40] Speaker 01:
It actually does, Your Honor.

[00:06:42] Speaker 01:
And so I can give you a couple of citations if you would like them.

[00:06:45] Speaker 01:
And so this is the Eaton 356.

[00:06:48] Speaker 01:
And so I think there's really no dispute that Eaton 356 is kind of this earlier invention.

[00:06:55] Speaker 01:
And if you look at its description and the background of the 360 fat, and I think it's so.

[00:07:02] Speaker 01:
So in Eaton 356, I'll get my glasses, I apologize.

[00:07:06] Speaker 03:
Is that in our joint appendix?

[00:07:08] Speaker 01:
It is.

[00:07:08] Speaker 01:
So let me get you to page 8 and 4, 5, 6.

[00:07:14] Speaker 01:
Is that appendix 321?

[00:07:15] Speaker 02:
Well, that talks about an intermediate layer providing adhesion.

[00:07:27] Speaker 02:
And then it talks about a bond layer, which is different.

[00:07:33] Speaker 02:
And it doesn't mention adhesion.

[00:07:35] Speaker 01:
Well, it also says on column four, looking around line 20, excuse me, yes, 13, it says, in addition to the intermediate layer, you may have a bond, bond layer may be provided between the silicon containing substrate and the intermediate layer, and the suitable bond layer includes silicon.

[00:08:00] Speaker 02:
That's the one that doesn't mention adhesion, which is different from the,

[00:08:06] Speaker 02:
intermediate layer that does, which is column 3, line 60 something.

[00:08:12] Speaker 01:
I agree that the intermediate layer does talk about doing adhesion.

[00:08:15] Speaker 01:
I think if we go on, it also says that the silicon containing substrate may be pre-oxidized to provide an SiO bond layer.

[00:08:25] Speaker 01:
So it'd be pre-oxidized to create this SiO bond layer.

[00:08:28] Speaker 01:
I think we see elsewhere that this SiO layer

[00:08:33] Speaker 01:
It says down here at the bottom of column three, perhaps where you were looking, it says that the intermediate can be SIO, and it also has that adhesive function.

[00:08:43] Speaker 01:
So I think when you read it in context as a whole, there is a connotation that the bottom layer is doing adhesion.

[00:08:50] Speaker 01:
And then I'll add, even in the 360 patent, when it talks about the environmental barrier system having adhesive properties, it says these are

[00:09:01] Speaker 01:
Systems have adhesive properties.

[00:09:03] Speaker 01:
It refers back up to the composition of what that layer is.

[00:09:07] Speaker 01:
And I'm just going to get you the citation.

[00:09:14] Speaker 01:
So this is in column one that says that the, around lines 31, the prior R environmental barrier systems are adherent.

[00:09:22] Speaker 01:
And immediately up in that column it talks about what that system is.

[00:09:25] Speaker 01:
It's a bond layer on the bottom.

[00:09:28] Speaker 01:
There may be an intermediate layer.

[00:09:29] Speaker 01:
then there's a barrier layer, and there may be an optional layer.

[00:09:32] Speaker 01:
And so even the 360 patent, I think, in context, notes that prior art had this idea of when they had a bond layer, it had this adhesive property.

[00:09:41] Speaker 01:
And so with the ordinary meaning coupled with there's nothing in the written description or elsewhere that would really justify deviation, there's no disclaimer, there's no lexicography, we think it was error to get rid of the notion of bond.

[00:09:54] Speaker 01:
But to get back to your point, Judge Crost,

[00:09:57] Speaker 01:
there should be a reversal here, because there's nothing in Tarantiva, and there's nothing in the record below where there is any showing that Tarantiva's layer can be used to- That would require us to make a fact finding in the first instance.

[00:10:12] Speaker 01:
You know, I take your point, Your Honor.

[00:10:13] Speaker 01:
I think there are cases like the Owings-Corning case when there's only one reasonable explanation that you can reverse.

[00:10:19] Speaker 01:
But I take your point.

[00:10:20] Speaker 01:
If you don't think there's the only one reasonable explanation, the appropriate

[00:10:24] Speaker 01:
Relief would be remand, but I think this case can fall and does fall into the oh, important sort of scenario where there's only one reasonable finding given the complete lack of proof on this issue below.

[00:10:36] Speaker 01:
Remember.

[00:10:37] Speaker 03:
The petition doesn't say anything about bonding or adhering?

[00:10:41] Speaker 01:
Not bonding the EBL, the environmental barrier layer, to the substrate.

[00:10:46] Speaker 01:
It talks about how Tarantiva has adhesive bond itself to the substrate, and that's not quite what the claim requires.

[00:10:53] Speaker 03:
But not the bonding layer in terms of having the top layer bound to the substrate through the bonding layer.

[00:11:03] Speaker 03:
I think that's what you're talking about.

[00:11:04] Speaker 01:
That is what I'm saying.

[00:11:04] Speaker 01:
I think that is a showing that would need to be made with utterly not made below.

[00:11:08] Speaker 01:
And so a remand would be futile on that point.

[00:11:11] Speaker 04:
Why don't we hear from the other side.

[00:11:22] Speaker 00:
Thank you, Your Honors.

[00:11:22] Speaker 00:
May it please the court, Brian Ferguson, for appellant, appellee GE.

[00:11:28] Speaker 00:
The board's construction of a bomb layer was correct here because it is the construction that is consistent with the intrinsic evidence.

[00:11:36] Speaker 03:
What about the word bond?

[00:11:38] Speaker 03:
I mean, that's part of the intrinsic evidence.

[00:11:40] Speaker 03:
It appears both in the specification and in the claims.

[00:11:43] Speaker 00:
It does.

[00:11:44] Speaker 00:
And there is not a single statement anywhere in the intrinsic evidence, the specification or the file history, where

[00:11:51] Speaker 00:
the applicants provided a disclosure that that bond layer had any type of adhesion properties whatsoever.

[00:12:03] Speaker 04:
In plain and ordinary meaning, when we conclude that claim term has a plain and ordinary meaning, that's confirmed by the extrinsic evidence.

[00:12:10] Speaker 04:
We go to the extrinsic evidence for that query, not necessarily to the specification.

[00:12:15] Speaker 04:
So why is this case any different?

[00:12:18] Speaker 00:
Because when you go to that intrinsic evidence, for example.

[00:12:22] Speaker 04:
I'm trying to tell you when you go to the extrinsic evidence.

[00:12:24] Speaker 04:
When you're trying to determine whether or not there's a plain and ordinary meaning to the word bond, you're necessarily looking to the extrinsic evidence.

[00:12:34] Speaker 00:
Two things on that, Your Honor.

[00:12:35] Speaker 00:
First of all, what was submitted with respect to the ordinary meaning of bond or bond layer was a Webster's dictionary, a general purpose dictionary.

[00:12:46] Speaker 00:
That general purpose dictionary

[00:12:49] Speaker 00:
does not confirm that the only construction of the word bond is to adhere.

[00:12:56] Speaker 00:
If you look at the dictionary definition, it's on page 1082 of the appendix, one of the alternate constructions is listed as D, and it includes a fusible ingredient that combines, unites, or strengthens.

[00:13:18] Speaker 00:
And when you look at the intrinsic evidence, the very point of the bond layer in the intrinsic evidence is to strengthen.

[00:13:27] Speaker 00:
It's to provide improved fracture toughness for the article that employs the bond layer.

[00:13:34] Speaker 03:
Now that wasn't the only extrinsic evidence.

[00:13:37] Speaker 00:
That's right.

[00:13:37] Speaker 03:
And additionally, the board didn't make the argument that you're making right now, right?

[00:13:43] Speaker 00:
No, the board said that the better course of action is to follow precedent from this court in terms of looking at what the intrinsic evidence says with respect to the claim construction.

[00:13:57] Speaker 03:
Is it the whole point of claim construction to determine what the meaning of a term is to one of ordinary scale in the art?

[00:14:03] Speaker 03:
Of course.

[00:14:03] Speaker 03:
So in a case where a term has an ordinary meaning that's well accepted, don't we have to credit that?

[00:14:11] Speaker 03:
and start with that.

[00:14:12] Speaker 03:
Then you can look to the specification to see if there's something that changes that meaning or where the patent applicant tried to be their own lexicographer, for example.

[00:14:21] Speaker 00:
Well, that would be my point, Your Honor.

[00:14:26] Speaker 00:
When we look at the extrinsic evidence, first of all, the dictionary definition I don't think provides the support.

[00:14:32] Speaker 00:
Second of all, we have like two articles or patent that the other side would like on.

[00:14:39] Speaker 03:
I'll do it one more time just for a minute.

[00:14:40] Speaker 03:
I'm sorry.

[00:14:41] Speaker 03:
I understand you to be now taking the position that the term bond layer does not have a universally accepted meaning.

[00:14:49] Speaker 00:
Absolutely.

[00:14:50] Speaker 00:
I think Judge Laurie pointed out that even in the Eaton reference, there is a reference to an intermediate layer that has adhesive properties.

[00:15:00] Speaker 03:
That just defines the meaning of intermediate layer.

[00:15:02] Speaker 00:
There's a reference to a bond layer that doesn't indicate that it has adhesive properties.

[00:15:07] Speaker 00:
It's very similar to what's in

[00:15:09] Speaker 00:
the disclosure of the 360 patent.

[00:15:11] Speaker 00:
The purpose of the 360 patent layer is to provide strengthening for the article overall.

[00:15:18] Speaker 00:
There's not a single disclosure in this patent that indicates anywhere that it must have, and this is important, their construction is that it must be designed to adhere a layer to the substrate.

[00:15:34] Speaker 00:
The problem with that construction is that it

[00:15:37] Speaker 00:
It's one, there's no support in intrinsic evidence.

[00:15:39] Speaker 00:
In the file history, the examiner stated that as long as there is a layer on top of the bond layer, it's effectively functioning as the claimed bond layer, and that any reference to adhesion properties are unclaimed limitations that are not commensurate with the scope of the claims.

[00:15:59] Speaker 03:
But just going back to claim construction for a minute, I mean, I can see that as potentially being a problem

[00:16:04] Speaker 03:
when you go to the next step, does the prior art teach the claim limitation?

[00:16:11] Speaker 03:
But how does that prosecution history define what a biomechanics is?

[00:16:15] Speaker 00:
Well, one of the issues with the prosecution history, as this court said in both Phillips and the Monsanto case, A78, F3rd, 1356, is that the file history isn't just an indication of how the patentee understood the invention, but it's also an indication of how the PTO understood the patent.

[00:16:35] Speaker 00:
And here, the PTO understood the claim as not requiring an adhesive property.

[00:16:41] Speaker 00:
And so the Patent Office, and this is the office action at pages 122 and 123 of the file history, they said specifically the Tarantiva layer functions as a bond layer because when it has the optional outer coat, it's between, it has the chemical properties,

[00:17:02] Speaker 00:
And it's located between the substrate and an outer layer.

[00:17:06] Speaker 00:
Therefore, it functions as a bond layer.

[00:17:09] Speaker 00:
The applicant never contested that.

[00:17:12] Speaker 00:
So that is at least an indication that is consistent with how a person of ordinary skill looking at the intrinsic evidence would say, yeah, I've looked at this.

[00:17:19] Speaker 00:
I've looked at the file history.

[00:17:21] Speaker 00:
In the file history, the examiner understood the bond layer as not requiring adhesion.

[00:17:26] Speaker 02:
Now, a bond must hold a couple of things together, right?

[00:17:31] Speaker 02:
And how does it do it other than by adhesion?

[00:17:34] Speaker 00:
Or strengthening.

[00:17:35] Speaker 00:
But I think, Your Honor, when you're looking at these layers, I think it should be understood that there must be something that is going to allow them to stay together.

[00:17:44] Speaker 00:
I mean, it could be something like pressure on top of them.

[00:17:47] Speaker 00:
It doesn't necessarily have to be adhesion.

[00:17:50] Speaker 00:
Now, the problem with UTC's construction is that it is limited to

[00:17:59] Speaker 00:
being designed to adhere another layer to the substrate.

[00:18:04] Speaker 00:
That is inconsistent with what is in the specification, your honor.

[00:18:08] Speaker 00:
The specification says specifically that you can also have an intermediate layer between the substrate and the bond layer.

[00:18:17] Speaker 00:
You can also have an intermediate layer between the bond layer and the outer BSAS layer.

[00:18:23] Speaker 00:
So in that case, how is that designed to adhere

[00:18:27] Speaker 00:
an outer layer to the substrate.

[00:18:29] Speaker 00:
In that case, the intermediate layers are the one performing the adhesion functionality.

[00:18:34] Speaker 00:
So the board was correct to reject their construction, not only because it has no support in the intrinsic cabinets, but because it's overly narrow in light of what's in the specifications.

[00:18:45] Speaker 03:
But what about the board's construction, which just repeats language that's already in the claim and doesn't give any meaning whatsoever to the word bond?

[00:18:53] Speaker 00:
Two things, Your Honor.

[00:18:55] Speaker 00:
First of all,

[00:18:56] Speaker 00:
We would disagree that it doesn't give any meaning to the layer bond because, again, the point of the bond layer in the claim is to provide an overall strengthening in improving the fracture toughness of the article that contains the layer.

[00:19:11] Speaker 00:
That's very clear from the specification.

[00:19:15] Speaker 00:
It's at columns 1, 61 to 66, and column 2, lines 43 to 46.

[00:19:21] Speaker 00:
That's the purpose of the bond layer.

[00:19:22] Speaker 00:
So the board's construction.

[00:19:25] Speaker 00:
includes the chemical composition that provides that toughness, that provides that strengthening.

[00:19:32] Speaker 00:
And then number two, the board's construction.

[00:19:35] Speaker 00:
Again, the board said it was based on where it's located in the article and also what it's made up of.

[00:19:42] Speaker 00:
But it says that it's any layer located between at least two other layers or between the substrate and another layer.

[00:19:50] Speaker 00:
And it's that limitation or it's that.

[00:19:53] Speaker 02:
You mentioned chemical materials

[00:19:55] Speaker 02:
The chemical bond doesn't have adhesion, right?

[00:19:59] Speaker 00:
It doesn't.

[00:20:00] Speaker 02:
Chemical bond is what?

[00:20:01] Speaker 02:
Shared electrons?

[00:20:04] Speaker 00:
It's like an attractive force between them.

[00:20:06] Speaker 02:
Yeah, but we're not talking about atomic bonding here.

[00:20:13] Speaker 00:
That's right, Your Honor.

[00:20:14] Speaker 00:
This is not.

[00:20:15] Speaker 00:
This is a layer.

[00:20:16] Speaker 02:
That's not a good analogy.

[00:20:18] Speaker 00:
It's a chemical, right, the bond coat or the bond layer that's in this 360 patent.

[00:20:24] Speaker 00:
is a chemical structure, a composition that has certain properties.

[00:20:33] Speaker 00:
So where the board's construction says any layer located between at least two other layers or between the substrate and another layer, it's that between at least two other, any two layers recognizes what is in the specification that the bond layer does not

[00:20:54] Speaker 00:
necessarily lie directly between the substrate and the BSAS layer, which is the barrier layer.

[00:21:05] Speaker 00:
UTC's construction would read that out because UTC's construction is designed to adhere another layer to a substrate.

[00:21:14] Speaker 00:
So their construction is overly narrow in light of the intrinsic evidence, and therefore it's inconsistent with the intrinsic evidence.

[00:21:28] Speaker 00:
If there are any more questions regarding the claim construction I would want to address the reasonable expectation of success.

[00:21:41] Speaker 04:
hypothetically assuming we were to remand the discussion of whether under SAS you would want the board to consider the non-instituted grounds.

[00:21:51] Speaker 04:
And at page 31 of Gray, they make an argument about that.

[00:21:55] Speaker 04:
So do you have anything more to add on that?

[00:21:59] Speaker 00:
Yes.

[00:21:59] Speaker 00:
One, we did say in our red brief that if this board were to alter the claim construction, the appropriate remedy is not a reversal.

[00:22:09] Speaker 00:
It's a remand, at least because

[00:22:11] Speaker 00:
there is another ground that the board instituted on but did not provide any analysis of in light of the fact that they believe that the first ground, the ground of Eaton and Tarantida, was the appropriate grounds for invalidity.

[00:22:29] Speaker 00:
But two, we did, GE did in the proceedings below, provide

[00:22:36] Speaker 00:
a discussion in our petitioners' reply brief.

[00:22:43] Speaker 04:
So SAS deals with non-instituted claims.

[00:22:45] Speaker 04:
You're saying this is a little bit different, if I'm understanding you.

[00:22:49] Speaker 04:
You're just saying if hypothetically we were to remand it, there's an alternative ground that was instituted on that you think the board should consider?

[00:22:57] Speaker 00:
Yes, because the board did not provide any analysis of the second ground.

[00:23:02] Speaker 00:
They did institute on it, but they did not provide any analysis of it.

[00:23:06] Speaker 00:
With respect to Tarantiva, we did include a discussion in the reply brief.

[00:23:11] Speaker 00:
This is in the appendix at page 1870 that does discuss the fact that if... You're talking like before the board.

[00:23:24] Speaker 00:
Yes, this is before the board, yes.

[00:23:26] Speaker 04:
In a footnote, I think?

[00:23:27] Speaker 00:
It is, Your Honor.

[00:23:28] Speaker 00:
But I will say, it's a footnote that takes up two-thirds of the entire page, and it contains a complete

[00:23:35] Speaker 00:
argument with respect to if the board were to find that Tarantiva or that the claim required some sort of adhesion, who knows what type, but if it does, then there is a discussion in Tarantiva itself that Tarantiva has adhering properties.

[00:23:53] Speaker 00:
And that is something that the board could consider on any remand.

[00:23:58] Speaker 00:
To answer your honor's question with respect to the 112

[00:24:04] Speaker 00:
This isn't a situation where what we're saying is if this court reads the claim construction as requiring adherence, one, there is no disclosure in that specification.

[00:24:17] Speaker 00:
So how much adherence is designed to hold the BASS layer to the substrate is a serious question this patent has.

[00:24:27] Speaker 00:
But the point

[00:24:28] Speaker 00:
is that because this patent provides absolutely no teaching whatsoever of the amount of adherence, then a person of already skilled in the art reading Tarantino would certainly understand the type of adhesion that it would need as well in order to function properly.

[00:24:45] Speaker 03:
It's a question of... You're saying they would not understand?

[00:24:47] Speaker 03:
They would understand.

[00:24:48] Speaker 03:
Would understand.

[00:24:49] Speaker 03:
If they would understand it when they're... I think you're saying that the term would be broad then.

[00:24:53] Speaker 00:
Right.

[00:24:53] Speaker 03:
It could be anything.

[00:24:55] Speaker 00:
At the point being, Your Honor,

[00:24:57] Speaker 00:
A person of ordinary skill in the art is allowed to read the 360 patent and say, oh, I know how much adhesion to use.

[00:25:05] Speaker 00:
Well, that same knowledge has to be applied when the person of ordinary skill in the art is reading the prior art as well.

[00:25:11] Speaker 00:
Even though Tarantiva may not say exactly how much adhesion it has, it does teach that it has adhesion, or a person of ordinary skill in the art would be able to apply their knowledge in order to successfully use the Tarantiva layer

[00:25:27] Speaker 00:
with the disclosed Eaton layer.

[00:25:30] Speaker 00:
Are there any other questions for me?

[00:25:34] Speaker 00:
Thank you, Your Honor.

[00:25:41] Speaker 01:
OK, please support.

[00:25:44] Speaker 01:
Just a couple of reactions here.

[00:25:46] Speaker 01:
The first thing is, I think if you look on the record below, GE never really disputed the ordinary meaning of a bond as having this adhesive quality and just

[00:25:57] Speaker 01:
have them suggest now.

[00:25:58] Speaker 01:
There's some great ambiguity there.

[00:25:59] Speaker 01:
I think it is not really consistent with the position below.

[00:26:02] Speaker 01:
But in any event, I think the record is abundantly clear that adhesion is part and parcel of the bond.

[00:26:09] Speaker 04:
Well, if you're saying that they never disputed that and they always thought that, then that also leads one to suggest that the prior art that they were discussing that they thought was sufficient to result in the patent being obvious, also their view was that that included

[00:26:26] Speaker 01:
I think that's not true at all.

[00:26:28] Speaker 01:
I think it was a deliberate decision not to make a case on the issue of whether Tarantiva discloses that it could adhere the BSAS in their secondary reference Eaton 456 to the substrate.

[00:26:42] Speaker 01:
They never made that showing.

[00:26:43] Speaker 01:
There's nothing in Tarantiva where Tarantiva talks about adhesion.

[00:26:47] Speaker 01:
It is not with respect to BSAS.

[00:26:50] Speaker 01:
So they made a deliberate attempt below to read bond out of the claim because they knew there are, couldn't get them there.

[00:26:56] Speaker 01:
and they made no showing.

[00:26:57] Speaker 01:
So I would disagree with that, Your Honor, that they knew this was going to be an issue.

[00:27:00] Speaker 04:
I'm sorry, I may have misunderstood.

[00:27:02] Speaker 04:
I thought you were making the argument that they didn't dispute below that adhesion was required under the bar.

[00:27:07] Speaker 01:
No, I'm saying that the ordinary meaning is something they never challenge.

[00:27:10] Speaker 01:
And now they're saying it has to do with strength and not adhesion.

[00:27:13] Speaker 01:
And I think that is somewhat new.

[00:27:14] Speaker 01:
But the record is clear that adhesion is the key part.

[00:27:17] Speaker 01:
Respect to our construction, Your Honor, it goes without saying, I think that she's clear to point out that adhesion is a key part of our construction.

[00:27:24] Speaker 01:
And we talk about hearing another layer to the substrate that could be the intermediate layer I think nothing council said really detracts from that so And with respect with respect to the remand it's actually quite interesting so if you were not to reverse on bond and remand anyway Would there be an instruction for them to address the second ground?

[00:27:49] Speaker 01:
That is an unusual posture from this court.

[00:27:51] Speaker 01:
Usually the remand say we won't rule at all and we'll make everything get redone and brought up.

[00:27:56] Speaker 01:
There is a lot of overlap between the two and we'd kind of leave to your judgment if there is a remand rather than reversal of how you would like to handle the SAS issue.

[00:28:04] Speaker 04:
Thank you.

[00:28:05] Speaker 04:
We thank both sides.

[00:28:05] Speaker 04:
The case is submitted.

[00:28:07] Speaker 04:
That concludes our proceeding for this morning.