[00:00:00] Speaker 01: Our first case is Latrum versus Ashworth Brothers, 2022, 1044. [00:00:08] Speaker 01: Ms. [00:00:08] Speaker 01: Breyer. [00:00:10] Speaker 00: Good morning, Your Honors. [00:00:10] Speaker 00: May it please the court, Lauren Dreyer, on behalf of patent owner Latrum in this appeal. [00:00:16] Speaker 00: This appeal concerns two claim construction issues and wholly conclusory and contradictory findings on motivation to combine that cut across all of the challenged claims. [00:00:28] Speaker 00: I'd like to begin with the claim construction issue for the tapering element. [00:00:33] Speaker 00: The board's construction of the term tapered in element 9E, in which the ridge is tapered along a portion of its length, violates the plain and ordinary meaning of the claim language and renders other language in the claim superfluous. [00:00:47] Speaker 00: The board's construction should be reversed. [00:00:49] Speaker 00: And if so, its findings of obviousness should be reversed as well, because the petitioner Ashworth in this appeal [00:00:55] Speaker 00: preserves no argument that the prior art discloses or renders obvious this element under a proper construction. [00:01:02] Speaker 00: The plain and ordinary meaning of the tapering element requires three things. [00:01:07] Speaker 00: It requires that the ridge is tapered, it requires that it is tapered in the lower segment of the drive member, and it requires that it is tapered along a portion of its length. [00:01:17] Speaker 00: Claim element 9E must be construed in the context of the whole claim and its surrounding claim language. [00:01:23] Speaker 00: And claim element 9D already recites that the ridge's distance to the vertical axis varies from bottom to top of the drive tower. [00:01:32] Speaker 00: The board's construction, which construes the claim element in 9E as being met solely by a change in the ridge's distance from the ridge to the vertical axis of the drive tower, ignores the surrounding context [00:01:47] Speaker 00: of the element 9D and 9E and renders the element resided in 9D entirely superfluous. [00:01:55] Speaker 00: Latrum's construction is fully consistent with the patent's use of the term taper in the intrinsic record. [00:02:02] Speaker 00: It refers to tapering an element by changing that element relative to itself. [00:02:07] Speaker 00: For example, the outer surface of the tapered drums in figures 17 and 18, they vary relative to other parts of the drum. [00:02:14] Speaker 00: And so the patent uses the term tapering consistently throughout. [00:02:18] Speaker 00: And Latrum seeks to apply that same meaning to the ridge, consistent with the specifications discussions of a tapered ridge. [00:02:26] Speaker 00: Ashworth admits in its red brief at page nine that the ridge's height is one embodiment. [00:02:32] Speaker 00: that's covered by the tapering element? [00:02:34] Speaker 02: Just to be clear, my recollection is that the word height here is used in two different ways. [00:02:43] Speaker 02: One is top to bottom. [00:02:44] Speaker 02: The other is turning the ridge on its side, so that you're talking about when the ridge is in place is actually horizontal, not vertical, right? [00:02:56] Speaker 00: Right. [00:02:57] Speaker 00: When the ridge is affixed in the claim and in the prior art, it's affixed vertically to a vertical drive member. [00:03:05] Speaker 02: Not quite vertically on a cone. [00:03:06] Speaker 00: Right. [00:03:07] Speaker 00: Right. [00:03:07] Speaker 00: Upwards and downwards. [00:03:10] Speaker 00: But the ridge in terms of the construction that Latrum offers refers to the height of the ridge or otherwise the distance from the edge of the [00:03:21] Speaker 00: part that it's affixed to its outer edge. [00:03:22] Speaker 00: So height or width might be a way to refer to it as well. [00:03:26] Speaker 02: But there are other uses of height that actually talk about top to bottom, right? [00:03:31] Speaker 00: In terms of the drive member and of the drive tower itself. [00:03:34] Speaker 00: Yes, your honor, but not in terms of the ridge necessarily. [00:03:37] Speaker 00: But Ashworth's construction here and the board's construction broadens the meaning of the term in such a way that renders claim language superfluous. [00:03:45] Speaker 00: And as we know, that's a highly disfavored construction under this court's precedent. [00:03:49] Speaker 04: Why does it render it superfluous? [00:03:52] Speaker 00: The board specifically construed the tapering element in 9B as being met solely by a change in the ridge's distance from its outer edge to the vertical axis of the drive tower. [00:04:07] Speaker 04: limitation is exactly what's recited in the previous but it has to be at the bottom of the dry tower no lower just any change that satisfies ninety it has to be the change in the pot [00:04:18] Speaker 04: I understand your argument, but I think you can look at these patent claims a different way, can't you, which is all of them, one, two, and nine, have that general clause that says there's got to be a change. [00:04:33] Speaker 04: Then they also have specific clauses that tells you where that change is located. [00:04:39] Speaker 04: That doesn't read anything out. [00:04:40] Speaker 04: It's just there's a more general thing that says this [00:04:44] Speaker 04: that this this stuff changes from the vertical access and then there's a you can read these as saying the next clause in all of one two and nine tell you where that change occurs and that's in fact what i'm looking at i don't know if it's the same in three eighty eight or five ninety five i'm looking at the three eighty eight and if you look at column one in the summary it seems to suggest that that's exactly what it's doing because it talks about [00:05:10] Speaker 04: you know, this change, the general change, and then it says here are three different ways to do it. [00:05:16] Speaker 04: I mean, isn't that what it says, basically, around 55 to 60 of column one? [00:05:21] Speaker 00: Let me look at that with you, Your Honor. [00:05:24] Speaker 00: 55 to 60 of column one. [00:05:29] Speaker 00: Yes, so 55, I think 55 to 60 of column one, though, is consistent with the way that [00:05:36] Speaker 00: Latrum is construing the term because, looking at the claim language, the claim language in 9D already recites that from the bottom to the top of the tower, the ridge varies, or the distance from the vertical axis varies. [00:05:50] Speaker 00: So it's already including in that a change in the lower segment. [00:05:55] Speaker 00: It doesn't say that the ridge varies at any point. [00:06:00] Speaker 00: Element 9D says that the [00:06:02] Speaker 00: ridge whose distance from the vertical axis varies from the bottom to the top of the drive tower. [00:06:08] Speaker 00: So it's already presupposing that there's a variation in that distance from the vertical axis in the lower section. [00:06:13] Speaker 04: But that's what that phrase says in, am I misreading it or isn't that phrase that you're saying, it's basically the same in one and two, isn't it? [00:06:23] Speaker 04: It all says where in each of the drive members includes an outwardly projecting ridge whose distance from the vertical axis varies from the bottom to the top. [00:06:32] Speaker 04: So it's not that that phrase tells you where the tapering is. [00:06:37] Speaker 04: It's just telling you it does vary somewhere. [00:06:40] Speaker 04: And then the following phrase in each of one and two and nine tells you where specifically on that claim the tapering occurs. [00:06:51] Speaker 00: I think that I agree with you, Your Honor, that it tells you where specifically that it occurs. [00:06:55] Speaker 00: But the problem with the board's construction is that it permits what it points to as tapering [00:07:01] Speaker 00: occurs in the entirety. [00:07:03] Speaker 00: It doesn't just occur in the lower segment. [00:07:05] Speaker 00: What the board points to as tapering in order to find this net in the prior art is a ridge that is the same from bottom to top of the drive tower. [00:07:15] Speaker 00: It's only by being affixed to a conical surface that it finds that element net both in 9D and in 9E. [00:07:21] Speaker 00: So the claim, the board's construction deprives the element in claim 9E of really any meaning because the claim could have equally recited just a ridge [00:07:31] Speaker 00: and you could read out the 9E element and the board would have found the claim met by the prior combination of affixing a ridge that doesn't change in any way to a conical surface. [00:07:44] Speaker 00: And the board finds that... I don't understand that. [00:07:46] Speaker 04: Wouldn't it still have to have tarp bearing at the bottom? [00:07:49] Speaker 00: Under Latrum's construction, it would still need tapering at the bottom, but that's not the way that the board construed it, and it's not the way that the board's construction applied its construction to the prior art. [00:07:58] Speaker 04: It found- Is saying the board's construction doesn't have tapering at the bottom, just not the way you would accomplish it? [00:08:05] Speaker 00: It doesn't distinguish between the tapering in 9D and what Latrum would construe the tapering as in 9E. [00:08:14] Speaker 01: It finds- Council changing topics. [00:08:17] Speaker 01: Do you want to tell us why PUP does not disclose wealth positively driven without slip? [00:08:24] Speaker 01: Yes, Your Honor. [00:08:25] Speaker 01: That seems to be an important part of your case. [00:08:28] Speaker 00: Yes, Your Honor. [00:08:28] Speaker 00: That's the second claim construction issue, and whether PUP discloses the term as properly construed. [00:08:35] Speaker 00: The petition argued here that the plain and ordinary meaning of without slip is no slip. [00:08:41] Speaker 00: That's on Appendix 317. [00:08:43] Speaker 00: The parties proceeded with that understanding [00:08:46] Speaker 00: until the final written decision changed the construction without any notice or opportunity for Latrim to be heard on the proper construction. [00:08:53] Speaker 00: And in that way, this case is on all fours with this court's Qualcomm decision, which found an APA violation by a change in a construction in a final written decision when it was an agreed upon construction by the parties. [00:09:07] Speaker 00: The proper construction here that's fully supported by the intrinsic record of without slip is the one that the parties agreed to all along. [00:09:13] Speaker 00: Without slip simply means no slip. [00:09:16] Speaker 00: Equating positive drive and without slip, which is what Ashworth argued during the proceeding and which is what the board found, renders the terminology without slip superfluous. [00:09:27] Speaker 00: Both are used. [00:09:28] Speaker 00: The term uses both positive drive and without slip, unlike other claims, such as claims 8 and 11, which only use the phrase positive drive. [00:09:36] Speaker 00: So that presumes that the term without slip has some separate and independent meaning. [00:09:40] Speaker 00: Ashworth doesn't have a response to this, and nor did it present any evidence. [00:09:45] Speaker 02: Can I just ask, in your patent owner response, did you make [00:09:50] Speaker 02: separate assertions about positive drive and without slip in proceeding with what I think you want to characterize as a two-part institution decision and construction. [00:10:06] Speaker 00: Yes. [00:10:06] Speaker 00: Your honor, if your question is, did Latrum present an argument in its patent owner response that PUP did not disclose positive drive or without slip? [00:10:17] Speaker 02: Both. [00:10:17] Speaker 02: Did you say A, here's why it doesn't [00:10:20] Speaker 02: Um, disclose positive drive and B because we now have to address something additional. [00:10:26] Speaker 02: Here's why it doesn't show without slip. [00:10:31] Speaker 00: Yes, your honor. [00:10:32] Speaker 00: Uh, Latrum did dispute the presence of positive drive and without slip in its patent owner response, uh, at appendix eight 68 through eight 70, Latrum rebutted both elements also at appendix 15, 23 through 15, 25. [00:10:49] Speaker 00: Our Patenona response disclosed why PUP didn't disclose without slip. [00:10:54] Speaker 00: In particular, it said, if there is no friction, there is slip. [00:10:58] Speaker 00: And PUP is a no-friction slip system. [00:11:02] Speaker 00: At 870 of the appendix, we said, this is slip. [00:11:05] Speaker 00: It is certainly not positive drive. [00:11:07] Speaker 00: So we rebutted the presence of both in PUP and our Patenona response. [00:11:11] Speaker 00: And our expert, Mr. Strait, in his... Is meaning different things? [00:11:16] Speaker 02: That is, did you say positive drive requires this if they don't have that? [00:11:21] Speaker 02: Without slip, requires something more and they don't have that. [00:11:25] Speaker 02: The parties... I kind of understood that you were throughout equating these things. [00:11:31] Speaker 00: I disagree, Your Honor. [00:11:32] Speaker 00: I think that we disputed the presence of positive drive in PUP because of the disclosures of positive drive in the [00:11:39] Speaker 00: discussion of the prior art in PUP. [00:11:41] Speaker 00: And so we had a separate argument as to whether PUP disclosed positive drive as opposed to friction drive based on the disclosures and the discussion of the prior art in PUP. [00:11:52] Speaker 00: We also separately responded to Ashworth's argument, which essentially equated positive drive and without slip and said, no, there's actually slippage in PUP. [00:12:01] Speaker 00: And that's consistent with what our expert also testified to, which was submitted along with our patent owner response. [00:12:08] Speaker 01: You're well into your rebuttal. [00:12:10] Speaker 01: You can continue or save it as you wish. [00:12:14] Speaker 00: I'll just briefly use some time to raise the fact that the findings on motivation to combine are consistent with this court's precedent, as explained in the TQ Delta case, that these findings are conclusory, they're contradictory, and they [00:12:30] Speaker 00: lack substantial evidence. [00:12:31] Speaker 00: And those findings cut across all of the independent challenge claims in this case. [00:12:35] Speaker 00: And if possible, I'd like to reserve my own time for rebuttal. [00:12:39] Speaker 00: I will do that. [00:12:39] Speaker 01: Thank you. [00:12:41] Speaker 01: Mr. Alter, is it? [00:12:42] Speaker 01: It's Alter. [00:12:43] Speaker 01: Yes, no. [00:12:43] Speaker 01: Alter. [00:12:44] Speaker 01: And you're not reserving any time for a cross-appeal? [00:12:50] Speaker 03: No, separate. [00:12:50] Speaker 03: I was going to address the cross-appeal in my time. [00:12:56] Speaker 03: May it please the court? [00:12:57] Speaker 03: Your Honor, I turn first to the term tape [00:13:00] Speaker 03: The board properly found that the specification supports two meanings for the term tapered, a change in the distance from the axis of rotation or a change in the height of the ridge. [00:13:11] Speaker 03: Tapered is not limited to only figures 2A and 2B, as argued by Latrum. [00:13:16] Speaker 03: the board correctly construed tapered to have a broader meeting in view of all the extrinsic evidence. [00:13:21] Speaker 03: And I invite your attention to the board's decision in appendix pages 33 to 39. [00:13:26] Speaker 03: It took the language of claim 10, the language of claims 1 and 2, the descriptions of figures 4a and 4b, the descriptions of figures 17 and 18, and the prosecution history and sighted prior art, Ronny, Steady, Heaver, all support the board's construction. [00:13:46] Speaker 03: Contrary to what Latrum argues, there is no specific definition of taper in specification. [00:13:55] Speaker 03: Therefore, there's no language as used herein tapered means. [00:13:58] Speaker 03: As such, one of ordinary skill in the art would understand taper in view of all the intrinsic evidence, just as the board did. [00:14:06] Speaker 03: Latrum incorrectly argues that the board's construction renders the claim term distance from the vertical axis superfluous. [00:14:15] Speaker 03: That's not true. [00:14:16] Speaker 03: The distance from the vertical axis, the element that you're talking about, refers to the distance at the top and bottom of the drive. [00:14:25] Speaker 03: Whereas the other one, where it talks about the tapering of the ridge in the lower segment, is dealing with the lower segment. [00:14:32] Speaker 03: And below which, you can have part of the ridge, which is a constant distance, as set for specifically in claim 10. [00:14:40] Speaker 03: So therefore, we're talking about two different areas or sections of the drive. [00:14:44] Speaker 02: I'm confused. [00:14:46] Speaker 02: I understand that there's a point about the varying from top to bottom. [00:14:53] Speaker 02: And there's also a point about the location of some kind of variation. [00:14:59] Speaker 02: And then you also have a point about there are two different kinds of variation that are at play in the word or can be covered by the word taper. [00:15:07] Speaker 02: One is variation from the [00:15:09] Speaker 02: the outer point of the ridge to the vertical axis of rotation. [00:15:13] Speaker 02: The other is variation of the outer point of the ridge to, let's call it, the inner edge of the ridge, the one that connects to the surface that it's all being connected to. [00:15:22] Speaker 02: How do these two points deal with each other? [00:15:25] Speaker 02: It seems to me they're orthogonal distinctions. [00:15:30] Speaker 03: In figures 2a and 2b, they show where you have the varying from the outer edge to the [00:15:39] Speaker 03: outer surface of the drum. [00:15:42] Speaker 03: That's the change in height. [00:15:45] Speaker 02: Maybe I can put the point this way. [00:15:48] Speaker 02: I will assume, for purposes of this discussion, that the word taper can include both meanings. [00:15:55] Speaker 02: Now, what did, in the prior art, the board find to meet the tapering limitation? [00:16:05] Speaker 03: It's found specifically that when you put the taper on the figure one embodiment of Reunstedt, which is a conical frustal, you do have a tapering. [00:16:15] Speaker 02: All right, and I don't know what the word what the expression is put to the taper on. [00:16:20] Speaker 03: The board said it was a combination of Pup's Ridge all right or Ronstead Tew's Ridge plus Ronstead's Frustoconical shape which had the tapering which where the distance varied at the top and at the bottom. [00:16:41] Speaker 03: So therefore you had the tapering. [00:16:44] Speaker 03: Now, the key point here, though, is this. [00:16:47] Speaker 02: So did the board view some combination of prior art, putting one thing on top of the other, as producing a ridge that was rectangular in profile or not rectangular in profile? [00:17:06] Speaker 02: Was there an elbow in the outer edge of the ridge? [00:17:10] Speaker 03: It's not rectangular. [00:17:12] Speaker 03: It's if you lay it on, if you lay the ridge. [00:17:14] Speaker 02: If you put a rectangular ridge and put it on the outer surface of a cone, then that's what I'm picturing. [00:17:23] Speaker 03: That's what the ward found. [00:17:25] Speaker 03: Yes, Your Honor. [00:17:27] Speaker 03: And as indicated, you have one distance from the axis of rotation at the top, a different distance from the axis of rotation at the bottom. [00:17:37] Speaker 02: That will be always true in a conical tower. [00:17:40] Speaker 03: Always true in the conical tower. [00:17:42] Speaker 03: That's correct. [00:17:43] Speaker 03: And then as claim 10 points out, though, you could have part where below the bottom you had a constant portion. [00:17:53] Speaker 03: And therefore, that's when they're talking about this element, which he said is the ridge below, the taper below, I'm sorry, the constant below the ridge. [00:18:04] Speaker 03: And you still have that. [00:18:05] Speaker 03: That's in a lower segment. [00:18:08] Speaker 03: All right? [00:18:09] Speaker 03: One element that she's talking about goes to at the top and the bottom, and then the other element goes to the lower segment, which doesn't necessarily have to be at the bottom. [00:18:19] Speaker 03: Now, I would like to turn then to the other argument that counsel addressed, which dealt with the term [00:18:29] Speaker 03: construction without slip. [00:18:33] Speaker 03: Now Latrum argues that the board materially changes preliminary construction by inserting the word essentially and therefore read without slip out of the claims entirely. [00:18:44] Speaker 03: That's not correct. [00:18:45] Speaker 03: The board's construction makes it very clear. [00:18:49] Speaker 02: This morning we either mostly or maybe even entirely heard a point that maybe is not [00:18:57] Speaker 02: quite that point namely the change from no slip to essentially no slip to instead an argument about how that creates redundancy between positive drive and slip. [00:19:14] Speaker 02: Maybe I misheard that. [00:19:16] Speaker 03: It's not redundancy. [00:19:18] Speaker 03: What the board determined was that there is no slip as there is an overdrive system. [00:19:22] Speaker 03: Overdrive systems are designed to have the tower speed is faster than the belt speed so that by design there is continuous built-in slippage of the belt. [00:19:31] Speaker 03: Positive drives have no slippage like that. [00:19:35] Speaker 03: In contrast, positive drives through structure on the tower that affirmatively engages the inside edge of the belt [00:19:43] Speaker 03: pulls the belt along at the same speed as the tower and is engaged at multiple points regularly spaced around the tower. [00:19:54] Speaker 03: Thus the belt speed and the tower speed are synchronized and the length of the belt is fixed between the inlet and the outlet so that you don't have slip as you do in a frictional driving system. [00:20:06] Speaker 04: It sounds like you're saying a positive drive system by definition has no slip. [00:20:11] Speaker 03: As shown in prior art, that's correct. [00:20:13] Speaker 03: Now, it is theoretically possible you could have a... Well, wait. [00:20:16] Speaker 04: Let me then ask them, what work is the additional no-slip language doing in the patent claims? [00:20:22] Speaker 04: Or is it redundant? [00:20:25] Speaker 03: You could theoretically have a positive drive that was poorly designed if it's only fixed at one point, or two points, or maybe... [00:20:33] Speaker 03: And then you could possibly have slip. [00:20:36] Speaker 03: As the prior art shows, you have multiple points all the way around the tower that are fixed to engage the belt. [00:20:46] Speaker 03: You're not going to have slip. [00:20:48] Speaker 03: So that is the point there. [00:20:50] Speaker 03: They didn't read it out. [00:20:51] Speaker 03: And as the board determined, without slip meant no overdrive. [00:20:57] Speaker 03: It's not the type of overdrive which you have in the friction system. [00:21:01] Speaker 03: And they didn't change that. [00:21:03] Speaker 03: late-term complaints about the word essentially, but fails to identify any analysis of the board that hinged on inclusion of the word essentially. [00:21:11] Speaker 02: Or that the board's- When did that term essentially come up in the proceeding? [00:21:18] Speaker 03: It came up in the final judgment, Your Honor. [00:21:20] Speaker 02: However, if you- Why wasn't the other side entitled to an opportunity to say, oh, now that some wiggle room is allowed, then what? [00:21:33] Speaker 03: But the board did not change the application whatsoever to the prior art. [00:21:41] Speaker 03: The way the board applied the prior art was the same way as in the initial decision. [00:21:46] Speaker 03: And the initial decision didn't have the word, essentially, and still found [00:21:50] Speaker 03: that the combination of Pup and Roy instead disclosed this element. [00:21:55] Speaker 02: So are you saying that it may be that the word essentially was put into the language of the final written decision, into the proceeding for the first time, but the application of the claim language, in fact, found in the prior art something that had no slip, and therefore the other side doesn't have anything concrete to complain about, the additional wiggle room? [00:22:18] Speaker 03: Absolutely, Your Honor. [00:22:20] Speaker 03: The application as to the prior art is identical in the way they applied it. [00:22:25] Speaker 03: There's nothing in the opinion whatsoever. [00:22:29] Speaker 03: If you look at our principal brief at page 21 to 22, you have side by side the initial claim construction and the final claim construction. [00:22:41] Speaker 03: And the final one, the word essentially was inserted. [00:22:45] Speaker 03: It's never mentioned again. [00:22:46] Speaker 03: If you go all the way through, he never comes back to that point whatsoever. [00:22:52] Speaker 03: He still applies the claim constructions of this limitation to the prior art the same way, finds it present for the same reasons that he found it in the initial institution decision. [00:23:06] Speaker 01: Now, can I address the cross appeal? [00:23:11] Speaker 03: I can, Your Honor. [00:23:13] Speaker 03: In the cross appeal, [00:23:16] Speaker 03: The board properly found claim 9 obvious over Pupp and Roynstedt, but AR did not likewise find claim 10 obvious over Pupp and Roynstedt. [00:23:29] Speaker 03: Latrum had only argued in its patent owner's response that the dependent claim 10 was not obvious for the same reasons that independent claim 9 was not obvious in ground 1 to 5. [00:23:41] Speaker 03: As Latrum did not separately argue the patentability of dependent claim 10, [00:23:45] Speaker 03: It was error for the board not to also find claim 10 obvious over Puck and Roynstedt. [00:23:53] Speaker 02: So that point about what Latrum didn't argue, are you asking us to say that when the board is not presented [00:24:05] Speaker 02: with an argument by the patent owner that distinguishes two claims. [00:24:11] Speaker 02: The board is obliged to treat them the same, as opposed to free to treat them the same. [00:24:18] Speaker 02: The board is free to treat it, Your Honor. [00:24:20] Speaker 02: That's not enough for you. [00:24:22] Speaker 02: Well, here the board said, OK, Latrum didn't make a case, but we think we have something of an obligation, or in any event, want to see if you all, as petitioners, made a case for claim 10. [00:24:37] Speaker 02: And we're scratching our heads about that. [00:24:40] Speaker 03: The position of the other side was that claims fall together. [00:24:44] Speaker 03: The board did not accept that. [00:24:46] Speaker 03: However, be that as it may, the board also erred. [00:24:50] Speaker 04: Yeah, but the board said you didn't provide any argument as to why claim 10 was invalid. [00:25:00] Speaker 03: Yeah, if I may address that, Your Honor. [00:25:01] Speaker 03: The board erred and finally found claim 10 obvious because it limited its considerations to Ronstead's teaching the single embodiment of figure one rather than Ronstead's teachings as a whole. [00:25:13] Speaker 03: The board profusely found that Ashford's petition relied only on figure one for claim nine, and then switched horses in midstream from claim one to figure 11 for claim 10. [00:25:27] Speaker 03: Now, if you look at the petition and the supporting declaration, you'll see that the petition relied on Ronstead's teaching as a whole, and that the figure one, that's the conical driving drums, [00:25:39] Speaker 03: figure five, the cylindrical driving drums, and the figure 11, mixtape of the cylindrical driving drums, were all relied on because they were known interchangeable driving drum design options that disclose the elements of claim nine, not just figure one. [00:25:55] Speaker 03: And I would invite you to look at the petition that is in the appendix, page 312 to 316. [00:26:01] Speaker 03: And in the supporting declaration in the appendix, it's 628 to 630. [00:26:06] Speaker 03: And in cross-appellants reply brief, we'd lay this out clearly at pages 5 to 8. [00:26:12] Speaker 03: Now, Latre's arguments are based on the faulty premise that the petition relied solely on figure 1. [00:26:17] Speaker 03: And that's proved false by the petition and the expert declaration citations I just referred to. [00:26:24] Speaker 04: Can you just show me in the board's decision where you think it went wrong? [00:26:27] Speaker 04: Are we looking at page 2? [00:26:29] Speaker 04: 18 and 81. [00:26:32] Speaker 04: I'm just trying to figure out whether you think this is legal error or if this is just substantial evidence. [00:26:38] Speaker 03: No. [00:26:39] Speaker 03: Your Honor, this is a legal error in that they did not consider the teachings of Ronstadt as a whole. [00:26:47] Speaker 03: They wanted to take merely Ronstadt figure one. [00:26:50] Speaker 03: That's all they relied on. [00:26:51] Speaker 04: I get that. [00:26:52] Speaker 04: That's your point. [00:26:54] Speaker 04: I mean, this is why I should look at the decision. [00:26:56] Speaker 04: It doesn't seem to me that that's what they're saying. [00:26:58] Speaker 04: They're saying you didn't make that argument. [00:27:01] Speaker 04: although I can read it and it seems like maybe you did, but on 80 they're saying, you know, for claim 9 you only looked at figure 1 and for claim 10 you only looked at figure 11. [00:27:11] Speaker 03: And that's why I cited to these parts of the petition and to the expert declaration that you are wrong. [00:27:16] Speaker 03: They think that's wrong. [00:27:17] Speaker 03: That is flat out wrong. [00:27:18] Speaker 03: Absolutely. [00:27:18] Speaker 04: So they didn't address your proper legal argument. [00:27:21] Speaker 04: That is correct. [00:27:21] Speaker 04: And that's legal error. [00:27:22] Speaker 03: That's necessary. [00:27:24] Speaker 03: This court found [00:27:27] Speaker 03: that Ronstadt uses terminology in referring to common driving drums in multiple embodiments, even though they have different shapes. [00:27:36] Speaker 03: It uses a similar numbering fashion for driving drums. [00:27:39] Speaker 03: For example, the driving drums in figure one are drums 12 and 13. [00:27:43] Speaker 03: And in figure five, which is described as a modification, [00:27:47] Speaker 03: that says the driving drums 112 and 113, and column 12-3033 expressly states that the driving drums may be substituted for drums 112 and 113. [00:28:00] Speaker 03: This case is like the Thurston case. [00:28:02] Speaker 03: where this court has previously found similar references to common features provide an express teaching that would be obvious to look to multiple embodiments with common elements that, when viewed together, contain the limitations at issue. [00:28:15] Speaker 01: Counsel, as you can see, your red light is on. [00:28:18] Speaker 01: Your time has expired. [00:28:20] Speaker 01: Thank you. [00:28:21] Speaker 01: Thank you. [00:28:23] Speaker 01: Ms. [00:28:23] Speaker 01: Dryer has some rebuttal time. [00:28:26] Speaker 00: Thank you, Your Honor. [00:28:27] Speaker 00: In response to the cross-appeal, I'd just also like to point out that Appendix 26 also has some of the board's decision on the petitioner's reliance on the mixed shapes in Figures 1 and Figures 11 of Reunstad. [00:28:41] Speaker 00: And there the board says, importantly, the only statement affirmatively addressing the claim language at issue and the related testimony of Mr. O'Keefe clearly relies on Roynstad's geometry in figure one. [00:28:53] Speaker 00: So what the board found in the cross appeal is that while the petition may have cited a mixed and matched these figures in terms of the argument that it presented, the only affirmative statement that it presented that addressed the claim language is with application to figure one. [00:29:09] Speaker 00: At most here, the petition tried to rely on a right-hand side of Figure 11 to meet some elements and a left-hand side of Figure 11 to meet other elements or a mixture of Figures 1 and 11. [00:29:20] Speaker 04: Well, it can do that, can't it? [00:29:22] Speaker 04: I mean, that's what our law says, that you have to look at what the reference teaches as a whole, not how you specifically mash together two embodiments. [00:29:30] Speaker 00: Yes, Your Honor, that's true. [00:29:31] Speaker 00: But the issue here is not ignoring the teachings of a reference as a whole, but it's the failure to identify with particularity [00:29:39] Speaker 00: as the petitioner and the petitioner bears the burden to do so, the failure to identify in the petition with particularity how to make the combination under the TQ Delta case in order to do so. [00:29:49] Speaker 04: What do you mean how to make it, how to actually physically put together the two elements or whether the reference, a skilled artisan would read the reference as arriving at the claimed elements? [00:30:00] Speaker 00: I think I agree with you, Your Honor. [00:30:02] Speaker 00: No, no, no. [00:30:02] Speaker 04: Those are two different options. [00:30:04] Speaker 04: One I think is contrary to our law and one is not. [00:30:07] Speaker 00: I think in the TQ Delta case, what the court says is that a petitioner needs to set forth... What about our recent Intel case? [00:30:13] Speaker 04: I know it came out after the briefing, but it specifically addresses this question and says it's wrong to require the petitioner to show how the elements necessarily work together. [00:30:25] Speaker 04: you look at the teaching as a whole of the reference and see whether it teaches the kind of elements. [00:30:30] Speaker 00: Right. [00:30:30] Speaker 00: I don't think the case law, Your Honor, requires that the petitioner identify how these two things work together, but they certainly need to provide evidence and argument in their petition that adequately demonstrates some reasons to make this combination, reasons to combine these two things together. [00:30:44] Speaker 04: That a skilled artist would look at this reference and come up with this. [00:30:48] Speaker 00: Yes. [00:30:49] Speaker 00: which elements to combine, in which way that there would be a predictable operation, how they would operate. [00:30:54] Speaker 00: Those are all parts of the teaching on motivation to combine or looking at combining two very different drum tower shapes, because figure 11 is an up tower and a down tower, whereas figure one just shows these conical drum towers. [00:31:10] Speaker 00: So there needs to be [00:31:11] Speaker 00: evidence presented in the petition with particularity. [00:31:14] Speaker 00: And that's what was absent here. [00:31:16] Speaker 00: And then just to address the argument that was discussed previously as to whether the change in construction in the final written decision of without slip changed the application to the prior art. [00:31:28] Speaker 00: It in fact did because Latrum presented evidence and argument throughout the proceeding that both Pupp and Roynstad II disclosed slippage. [00:31:36] Speaker 02: Those are references that... Are these the passages that... This is what I'm remembering, that those passages do talk about slippage, but not slippage of the entire pad or whatever thing is going around, but rather of say, I'm going to say, individual hooks. [00:31:57] Speaker 00: Oh, of the individual rod ends. [00:31:59] Speaker 02: But those are affixed to the drive members that... Right, but say you had 1,000 of them and three of them slipped. [00:32:05] Speaker 02: No way is the belt slipping. [00:32:07] Speaker 02: Oh, I don't believe that argument was sufficiently developed below, Your Honor, because- But the board said, right, that there will be, I think this is the reference you're talking about, that there won't be slippage of the belt found, won't be slippage of the belt just because there is slippage of a few of the connectors. [00:32:25] Speaker 02: Isn't that a finding for which there's substantial evidence? [00:32:28] Speaker 00: It's a finding for which Latrum was deprived of an opportunity to rebut. [00:32:32] Speaker 00: And I think what the board found here is that when slippage occurs, what it found on appendix 219 is that the positive driving engagement is maintained. [00:32:41] Speaker 00: And that reinforces Latrum's argument that the board essentially equated positive drive and without slip in its construction when it broadened its construction to essentially without slip. [00:32:51] Speaker 00: And that broadening construction deprived Latrum of the opportunity to present evidence as to what the proper construction should be, since it was agreed upon, to develop an evidentiary record, to rebut the motivations to combine of a reference that discloses some elements of slip and some amounts of slip. [00:33:07] Speaker 00: There may have been different motivations to combine. [00:33:09] Speaker 01: Thank you, Counselor. [00:33:09] Speaker 01: As you can see, you worked to save your argument. [00:33:11] Speaker 00: Yes. [00:33:12] Speaker 00: Thank you. [00:33:13] Speaker 01: That is the panel will adjourn for a brief time.