[00:00:58] Speaker 00:
We're ready whenever you are.

[00:01:01] Speaker 02:
Thank you, Your Honor.

[00:01:01] Speaker 02:
May it please the court?

[00:01:04] Speaker 02:
The rule in fairer sense is clear, that a presumption is inappropriate when the success of a product can be attributed to more than one patent.

[00:01:12] Speaker 02:
The board below granted SRAM the presumption.

[00:01:17] Speaker 02:
Despite the undisputed fact, there are at least three more patents that cover different features that are all directed to the same solution the 027 patent solves,

[00:01:27] Speaker 02:
And the board, in fact, in another IPR, not only allowed SHRAM to argue, but gave SHRAM the presumption that a different patent, the 250 patent, which SHRAM calls enabling technology, credit for the very same secondary considerations that the board attributed to the 027 patent.

[00:01:48] Speaker 03:
I have a little housekeeping question for you.

[00:01:51] Speaker 03:
Yes.

[00:01:51] Speaker 03:
On page 43 of the red brief, SRAM states

[00:01:58] Speaker 03:
Fox falsely suggests that five of the eight licenses were not to the 027 patent, even though the board expressly found that each of those five licenses include the 027 patent within their scope.

[00:02:13] Speaker 03:
And indeed, you certainly do seem to suggest that they were not to the 027 patent in the blueprint.

[00:02:25] Speaker 03:
So I want to give you a chance to

[00:02:27] Speaker 03:
Tell me why they're wrong, if they are.

[00:02:30] Speaker 02:
Well, they're wrong in what we suggested.

[00:02:32] Speaker 02:
All we said in our blue brief, and remember, the point with licensing is, did anybody sit down at the licensing table with SRAM out of a desire to license the 027 patent?

[00:02:44] Speaker 02:
And what the licenses show, all the licenses, is that when people sat down with SRAM for a license, what they wanted was access to what SRAM calls all of the Xsync technology, which includes

[00:02:56] Speaker 02:
the enabling technology patent of the 250 patent, but it also includes a – I think there were eight or nine at least other patents covering this technology.

[00:03:06] Speaker 02:
And the point was that those patents, those five licenses, don't even mention the 027 patent.

[00:03:13] Speaker 02:
So that's an indication that nobody really cared about the 027 patent in particular.

[00:03:17] Speaker 02:
There's nothing special about it because nobody mentioned it.

[00:03:21] Speaker 02:
It's not even mentioned in the license.

[00:03:22] Speaker 02:
And in the three other licenses where it is mentioned,

[00:03:25] Speaker 02:
It's mentioned as one of a suite of other patents, again, with nothing special calling out the 027 patent.

[00:03:30] Speaker 02:
So I – and we addressed this in our gray brief.

[00:03:34] Speaker 02:
We never suggested that those licenses do not cover the 027 patent.

[00:03:38] Speaker 02:
They just lump it in with all the other patents that are licensed.

[00:03:44] Speaker 01:
So the board – yes.

[00:03:53] Speaker 01:
an invention or let me say a product like this that has what seems like a bunch of different features that have commercial appeal and is popular.

[00:04:07] Speaker 01:
If you disagree, that's fine, but just go with me on this.

[00:04:12] Speaker 01:
How do you get a nexus

[00:04:16] Speaker 01:
and still be able to enforce your patent rights when you split them up into different patents because, or at least get a presumption of commercial success.

[00:04:25] Speaker 01:
So I get your argument, you know, it has feature A that people love, which is covered by one patent, feature B that people love that's covered by another patent.

[00:04:34] Speaker 01:
And if they're only trying to enforce, or we're only talking about patent A, well, they can't show necessarily that they get the presumption because of that.

[00:04:41] Speaker 01:
It may be because of the grouping of features.

[00:04:45] Speaker 01:
But does that mean that they then have to write a patent that covers all of the features that are possibly successful?

[00:04:52] Speaker 02:
No, not necessarily, right?

[00:04:54] Speaker 02:
I mean, they can prove that more than one patent is responsible for all these things.

[00:04:58] Speaker 02:
And I think this is an important point.

[00:05:00] Speaker 01:
But how do they get the presumption?

[00:05:02] Speaker 02:
They're not entitled.

[00:05:04] Speaker 02:
A presumption of nexus is not one of the rights that comes bundled with the patent when it's given, right?

[00:05:11] Speaker 02:
And so the way they prosecuted the application will have some influence over whether that's done.

[00:05:16] Speaker 01:
So if they had an application for this, for what ultimately turned out to be the commercial product, and they put in all the different features, assuming they were allowed to by the patent office, I don't know the niceties of how much different stuff you can have in one application.

[00:05:31] Speaker 01:
if they could show that this is every single element that's successful here is covered by this, then maybe they get the presumption there.

[00:05:40] Speaker 02:
So they get around the TheraSense problem.

[00:05:42] Speaker 02:
Now, they still have the other problem where one of their witnesses says, you know, these chain retaining features are just

[00:05:48] Speaker 01:
But I'm just trying to talk about hypotheticals about how we do this with multi-feature products when the features are covered by different patents.

[00:05:58] Speaker 01:
Right.

[00:06:00] Speaker 01:
And if they lump them all into one patent, presuming the examiner even allows that, then if it has too many features, then that seems like easy to design around, too.

[00:06:11] Speaker 01:
Right.

[00:06:11] Speaker 01:
And so then they could be in person in terms of effect.

[00:06:13] Speaker 02:
And of course, there's the incentive for the patent owner to not

[00:06:17] Speaker 02:
put a Christmas tree claim where you just start putting things into claims, things like that, right?

[00:06:21] Speaker 02:
So there's a balance here that's in control.

[00:06:24] Speaker 02:
The patentee has control over it.

[00:06:25] Speaker 02:
But there are a couple important things about the presumption here, which is it's, I said earlier, it's not an entitlement.

[00:06:34] Speaker 02:
The patentee has the burden in every case to prove a nexus.

[00:06:38] Speaker 02:
Now, there are some cases that give a shortcut.

[00:06:40] Speaker 01:
I mean, the other answer, too, is even if they don't get the presumption, they can put forth direct evidence linking this feature to the commercial success.

[00:06:49] Speaker 02:
That's exactly where I was going, right?

[00:06:50] Speaker 02:
Because they have the burden of proof.

[00:06:51] Speaker 02:
They don't get the presumption.

[00:06:52] Speaker 00:
We're not saying game over.

[00:06:55] Speaker 00:
If there's more than bells and whistles, it's your view, they can get nexus for commercial success.

[00:07:01] Speaker 00:
The only thing we're disputing here is whether they get a presumption.

[00:07:05] Speaker 00:
So if there are two patents or two different things that drove commercial success, what would they do?

[00:07:11] Speaker 00:
No presumption, but they can come in and they can show.

[00:07:14] Speaker 00:
We've had this feature, here's the marketing.

[00:07:18] Speaker 00:
This is a – these two features have resulted in an increase of $50 billion profit.

[00:07:23] Speaker 00:
We should get 25 percent or 50 percent of that as a commercial success prong.

[00:07:28] Speaker 02:
Is that the way it's supposed to work?

[00:07:30] Speaker 00:
Right.

[00:07:30] Speaker 02:
That's exactly right.

[00:07:30] Speaker 02:
And this is another one of the points they try to make in their red brief.

[00:07:34] Speaker 02:
They raise a straw man, which is we're saying you can never prove a presumption in that case.

[00:07:39] Speaker 02:
We're not saying that.

[00:07:41] Speaker 02:
You have to prove it in that case with evidence.

[00:07:44] Speaker 02:
You have to put evidence in front.

[00:07:45] Speaker 02:
What their position is is that if you have to do it.

[00:07:47] Speaker 00:
And there's no dispute, right, that the burden is on the patent owner for commercial success or for other secondary considerations.

[00:07:54] Speaker 00:
So the only thing in dispute is whether or not they get to leap over what is normally the burden on a person.

[00:08:02] Speaker 02:
Exactly.

[00:08:03] Speaker 02:
Are they entitled to use the shortcut that the law provides when you have

[00:08:08] Speaker 02:
And remember, the reason you have the presumption in the first place is presumably if you have a product on the market and it's got a new novel feature that all the competitors don't, then that's the difference.

[00:08:19] Speaker 02:
that the success of that product is probably due to that difference.

[00:08:22] Speaker 02:
But as soon as you start adding new inventions into it, you can no longer make that presumption.

[00:08:26] Speaker 00:
So in the absence of a presumption, they establish nexus, which doesn't seem that crazy, because presumably it's their product, their marketing.

[00:08:35] Speaker 00:
They have immediate access to all of the information in order to establish if there is a nexus that there was.

[00:08:43] Speaker 00:
So under your theory, what do you do on rebuttal?

[00:08:48] Speaker 00:
What's the?

[00:08:49] Speaker 02:
On rebuttal, what we have to do is come forward.

[00:08:54] Speaker 02:
So let's put aside the question of presumption.

[00:08:57] Speaker 02:
Let's assume the presumption was given.

[00:08:59] Speaker 02:
Correct.

[00:09:00] Speaker 02:
Or no presumption.

[00:09:00] Speaker 00:
No, I'm assuming there's no presumption.

[00:09:02] Speaker 00:
Oh, there's no presumption.

[00:09:03] Speaker 00:
So they have to prove nexus.

[00:09:04] Speaker 00:
They show whatever, and then you get to respond.

[00:09:08] Speaker 02:
And then we can come in and cross-examine their evidence and put in our own evidence, for example.

[00:09:13] Speaker 02:
Well, the best evidence

[00:09:15] Speaker 02:
is SRAM's own documents from the 250 IPR, where they call the 250 Patent Enabling Technology, that is responsible for every single sale they were given credit for in this case, every single bit of praise they were given for in this case.

[00:09:30] Speaker 02:
So that's exhibit one, which ought to destroy the nexus in this case, because we already have a finding from another IPR that a different patent is responsible for those things.

[00:09:39] Speaker 00:
Well, in theory, can't more than one thing be responsible?

[00:09:42] Speaker 02:
Yeah, but you can't give a presumption

[00:09:45] Speaker 02:
that more than one are responsible, right?

[00:09:47] Speaker 00:
So... That was the hypothetical.

[00:09:50] Speaker 00:
Without a presumption, yeah, but there's no presumption.

[00:09:52] Speaker 02:
Oh, so if there's, okay, if there's a, okay, let's assume they come in with proof that both patents are... They come in, we say you have the burden, no presumption, and they come in and they put in evidence.

[00:10:02] Speaker 00:
Okay, and they put in their evidence, okay.

[00:10:03] Speaker 00:
So you then have to come in and rebut.

[00:10:05] Speaker 02:
All right, so we come in with the evidence that we have already in the record, which is, Tram's own marketing materials show

[00:10:12] Speaker 02:
that nobody at SRAM thought the 027 patent was special.

[00:10:15] Speaker 02:
Nothing in their marketing material says anything about an offset.

[00:10:17] Speaker 00:
Okay, and then they just decide, and then the board gets to decide.

[00:10:20] Speaker 02:
Yeah, with them having the burden of proof, right?

[00:10:22] Speaker 02:
But what the board did was they switched the burden of proof on us because of this inappropriate presumption.

[00:10:26] Speaker 00:
So you're not asking for, what you're seeking is a remand that tells them they kind of misapplied this law.

[00:10:34] Speaker 00:
at a minimum how do we I mean this is a very there's a lot of facts here this is a very long and detailed opinion with regard to the details of secondary considerations how can we possibly put ourselves in the role of a fact-finder in the first instance to determine in the absence of a presumption

[00:10:53] Speaker 01:
I mean, did they rely only on the presumption, or did in the alternative they present direct evidence?

[00:10:59] Speaker 02:
They did not present any direct evidence.

[00:11:01] Speaker 02:
When you look at the board's decision, every single one.

[00:11:03] Speaker 01:
What are we looking at in the record?

[00:11:04] Speaker 03:
I mean, there's a lot.

[00:11:04] Speaker 02:
Well, in the record, you can look at the marketing materials that... What I'm saying is there's a lot of evidence in the record related directly to this.

[00:11:13] Speaker 02:
There is.

[00:11:14] Speaker 02:
What you can ask my friend when he's up is,

[00:11:17] Speaker 02:
What in the record shows anybody at SRAM cared about the 027 patent?

[00:11:20] Speaker 02:
Show me a mark anywhere.

[00:11:21] Speaker 01:
I guess my question wasn't specifically about the evidence, but how they actually characterized their case below and whether they did it both as a presumption or if we don't get a presumption in the alternative, here's direct evidence.

[00:11:34] Speaker 00:
They relied on the presumption and then... And the board didn't make alternative findings.

[00:11:38] Speaker 00:
Correct.

[00:11:38] Speaker 00:
Even in the absence of presumption, we would find an excess.

[00:11:42] Speaker 02:
Exactly.

[00:11:44] Speaker 02:
with the exception of maybe copying or maybe, I don't know how that works out, but in every single, certainly with all the important ones, with praise, with commercial success, with skepticism, they make a point of saying, well, we gave Shrem the presumption

[00:11:57] Speaker 02:
You haven't rebutted it, and so game over.

[00:11:59] Speaker 01:
So we're going to stop there.

[00:12:01] Speaker 01:
I'm not asking my question clearly.

[00:12:03] Speaker 01:
I'm trying to figure out whether we need to remand or just reverse.

[00:12:08] Speaker 01:
That is, if they had presented the alternative argument and the board said, we don't need to get to whether it directly shows these secondary considerations because we provide – we give them a presumption that we find unrebutted.

[00:12:22] Speaker 01:
If that's an alternative argument they made to the board and the board didn't address it, then it seems like it has to go back and give them an opportunity to argue the direct evidence supporting secondary considerations, even if we agree that the presumption was improperly implied.

[00:12:40] Speaker 02:
Well, the way the record developed was there was no concession from SRAM, of course, at the IPR stage.

[00:12:46] Speaker 02:
If you don't give us the presumption, we have no evidence.

[00:12:49] Speaker 02:
They pointed to evidence.

[00:12:52] Speaker 02:
the articles, principally, right?

[00:12:55] Speaker 02:
And what we said was when you look at the – and then the records close, right?

[00:13:00] Speaker 02:
So everything that you need is in the record here.

[00:13:04] Speaker 02:
What the record shows is that every article they relied on cites, for praise, the prior art, narrow-wide teeth or the hooked teeth or the – something else in the unit.

[00:13:19] Speaker 03:
quite compelling expert testimony.

[00:13:21] Speaker 02:
Their expert testimony.

[00:13:23] Speaker 02:
So I want to get to that expert testimony.

[00:13:25] Speaker 02:
Because when they say their expert attributed the sales and the praise and things like that to the 027 patent, there's no question the sales are to the x-sync.

[00:13:39] Speaker 02:
There's no question the praise is to the x-sync.

[00:13:41] Speaker 02:
But when we get to the details of the 027 patent, their only evidence shows.

[00:13:46] Speaker 02:
And let me find it here.

[00:13:50] Speaker 02:
So at A1221 is where they make the argument below that they have testimony showing that the 027 patent is responsible for these things.

[00:13:58] Speaker 02:
One reference, there are three references there.

[00:14:01] Speaker 02:
One reference is at A2222, paragraph 20.

[00:14:05] Speaker 02:
And all it says, that's their expert saying, offsets help retain the chain on the chainring.

[00:14:12] Speaker 02:
But we already know that from Parachinian prompts, and offsets do that.

[00:14:16] Speaker 02:
The next two sites they provide are only showing that the X-Sync practiced the claims.

[00:14:20] Speaker 02:
There's nothing in – there's no testimony.

[00:14:23] Speaker 02:
No expert pointed to the offsets in particular were responsible for the success.

[00:14:29] Speaker 02:
When they talk about the success, they talk about very vaguely the patented invention, but they start switching the patented invention with the X-Sync.

[00:14:37] Speaker 02:
as a whole, which is improper here for the reason we discussed that there are so many patents.

[00:14:41] Speaker 02:
I see I'm in my rebuttal time, but I'm happy to.

[00:14:48] Speaker ?:
Okay.

[00:14:48] Speaker 04:
Thank you.

[00:15:02] Speaker 04:
Thank you, Your Honor.

[00:15:03] Speaker 04:
Please support.

[00:15:07] Speaker 04:
Nothing short of revolutionary, the biggest evolutionary step forward in a long time.

[00:15:12] Speaker 04:
perform flawlessly, mechanical duct tape, those are words not from our marketing department.

[00:15:18] Speaker 04:
These are words from professional riders.

[00:15:21] Speaker 04:
And we're talking about the product here.

[00:15:23] Speaker 00:
These are comments with regard to the product.

[00:15:25] Speaker 00:
So just let me ask you if Fox contends that the product, this X-sync, includes numerous features not claimed by the claims at issue here, the 027.

[00:15:37] Speaker 00:
That seems right to me, having viewed the record.

[00:15:39] Speaker 00:
Is there any dispute about that at all?

[00:15:42] Speaker 04:
Well, I think that there are other features.

[00:15:44] Speaker 04:
The question is really whether or not other features contribute to the success of the product.

[00:15:48] Speaker 04:
And that's where funds go.

[00:15:49] Speaker 00:
Okay, no, no, no.

[00:15:50] Speaker 00:
That wasn't my question.

[00:15:51] Speaker 00:
I was going to get to that.

[00:15:52] Speaker 00:
You know, okay.

[00:15:53] Speaker 00:
But there's no question that the other features are not claimed by the claims here.

[00:15:59] Speaker 04:
Some other features are not claimed.

[00:16:00] Speaker 04:
That's right, Your Honor.

[00:16:01] Speaker 04:
By these patterns?

[00:16:02] Speaker 04:
By this pattern?

[00:16:03] Speaker 04:
By this particular pattern, Your Honor.

[00:16:05] Speaker 00:
And then, okay.

[00:16:06] Speaker 00:
The next question I have is, with respect to those features not claimed, it seems like they also contend, and I just want to get clear that there's no dispute about certain things.

[00:16:15] Speaker 00:
I don't think you have a dispute that those features are contained in other patents other than the 027 patent.

[00:16:23] Speaker 04:
They are contained in continuations of the 027 parent.

[00:16:28] Speaker 04:
The 027 is the parent.

[00:16:30] Speaker 04:
They are contained in continuations.

[00:16:33] Speaker 00:
Other patents, okay.

[00:16:35] Speaker 00:
And don't you think, is it your view that there's no significance to the non-claimed features?

[00:16:43] Speaker 00:
in the, there's no significance of those features in terms of your product?

[00:16:47] Speaker 00:
I mean, it's not bells and whistles, right?

[00:16:49] Speaker 00:
I just want to confirm.

[00:16:50] Speaker 00:
We're not talking bells and whistles.

[00:16:51] Speaker 00:
We're not talking about a screwdriver in this, you know, sophisticated mechanical product, right?

[00:16:57] Speaker 04:
Right.

[00:16:58] Speaker 04:
Well, this is the product.

[00:16:59] Speaker 04:
These are the products right here, okay?

[00:17:01] Speaker 04:
They are deceptively simple, all right?

[00:17:04] Speaker 04:
But they're narrow.

[00:17:04] Speaker 04:
They're short, okay?

[00:17:06] Speaker 04:
In terms of other features, there are some other features in it.

[00:17:09] Speaker 04:
Some of them are, you can see how these things look differently.

[00:17:12] Speaker 04:
They have different colors.

[00:17:13] Speaker 04:
Some have five connections, some have six connections, et cetera.

[00:17:16] Speaker 04:
There are those other features.

[00:17:18] Speaker 04:
With respect to the patents, and let's get right to it, this is about when they claim, oh, it's a completely separate patent, it's not.

[00:17:26] Speaker 04:
It's a continuation.

[00:17:27] Speaker 04:
And I think, as Judge Wallace was trying to point out earlier, is that we could have, as we know as a matter of law, something as a continuation.

[00:17:35] Speaker 04:
You could have had all of those claims in the original parent patent.

[00:17:39] Speaker 04:
That's the definition of it.

[00:17:41] Speaker 04:
It's not something that's totally different.

[00:17:43] Speaker 00:
And so the idea that you did it- So you think there's a special rule for continuation patents, so that if you have a patent, it's an issue here in validity.

[00:17:52] Speaker 00:
It's only the 027.

[00:17:54] Speaker 00:
that you get to include with respect to commercial success and all of these other factors, everything going on with those other patents?

[00:18:03] Speaker 04:
If you prove that the other parts of the continuation and part patent also contribute to that commercial success, I absolutely do think that you do, Your Honor.

[00:18:13] Speaker 01:
Why do you get a presumption, though, for this single patent that we're talking about?

[00:18:19] Speaker 04:
Well, I think that's the same rule that was determined in WBIP, Gator Tail, and that whole progeny.

[00:18:25] Speaker 01:
I think our case on this is very confused because there are different patents covering this.

[00:18:30] Speaker 01:
So, say hypothetically, we had this patent and it had something

[00:18:36] Speaker 01:
And it turns out, well, it may have a little bit of commercial success or things, but one of these continuation patents is really the driver.

[00:18:44] Speaker 01:
I mean, the testimony and all the evidence here generally is related to the success of the product, not the individual patent.

[00:18:54] Speaker 01:
So why should you get a presumption here rather than being required to show actual direct evidence tying these features to commercial success?

[00:19:06] Speaker 04:
Your Honor, first of all, I believe that we did show direct evidence.

[00:19:09] Speaker 04:
And we should also end the panel.

[00:19:10] Speaker 01:
Well, I wanted to follow up on that.

[00:19:13] Speaker 04:
Right, right.

[00:19:14] Speaker 01:
Because I didn't get a clear answer from your friend on the other side.

[00:19:17] Speaker 01:
Your view, and I know you don't want us to go here, but your view is if we disagree with the presumption being applied, this needs to be remanded for the PTAP to look at the direct evidence and whether that's sufficient to show secondary considerations.

[00:19:30] Speaker 04:
I think there's enough direct evidence that's in the record for you to

[00:19:33] Speaker 01:
No, I mean, that's a factual finding.

[00:19:35] Speaker 01:
We're not going to make that on appeal.

[00:19:37] Speaker 01:
But you think that this should be, at worst for you, a vacated remand?

[00:19:41] Speaker 04:
Oh, absolutely, Your Honor, because, you know, the presumption starts.

[00:19:44] Speaker 04:
As all the case law says, the presumption starts if you show something is covered and co-extensive.

[00:19:49] Speaker 01:
Why is there even a presumption for this?

[00:19:51] Speaker 01:
Secondary considerations are the patentee's burden to prove.

[00:19:55] Speaker 01:
They're the ones that should be in control of this type of evidence.

[00:19:58] Speaker 01:
They know what their patents are.

[00:19:59] Speaker 01:
They know what their commercial products are.

[00:20:01] Speaker 01:
They know how they're received.

[00:20:03] Speaker 01:
They can go out.

[00:20:03] Speaker 01:
Why do you get a presumption?

[00:20:04] Speaker 01:
Why shouldn't you just be required to show this evidence?

[00:20:06] Speaker 04:
Well, Your Honor, I think we did show it.

[00:20:08] Speaker 04:
You have to start by showing it.

[00:20:09] Speaker 01:
No, answer my question.

[00:20:10] Speaker 01:
Answer my question.

[00:20:11] Speaker 01:
Why do you think, I know it's out there, we have to follow that case law, but why does this presumption exist in the first place?

[00:20:17] Speaker 04:
I think it's because then you would put the patent owner with this impossible burden to prove a negative.

[00:20:22] Speaker 04:
To prove that the only reason something was successful was because of some particular element of claim.

[00:20:28] Speaker 04:
And a presumption is just that, Your Honor.

[00:20:29] Speaker 01:
But that's what you have to do to get the presumption.

[00:20:32] Speaker 04:
No, well, we did, Your Honor.

[00:20:33] Speaker 04:
This panel, these three judges went through eight and a half pages and 11 and a half pages talking about the idea of nexus.

[00:20:43] Speaker 04:
They didn't just say, look, you had a claim chart and so you get a presumption.

[00:20:47] Speaker 00:
They didn't do that.

[00:20:48] Speaker 00:
But you have, in this case, we have a peculiar set of facts where you've got another IPR going.

[00:20:52] Speaker 00:
and you used another patent and commercial success of this product with respect to the other patent.

[00:20:59] Speaker 00:
So this is kind of almost a really unusual situation where that seems

[00:21:05] Speaker 04:
odd, does it not?

[00:21:07] Speaker 04:
It doesn't, Your Honor, because of the fact that these are all part of the same patent, okay?

[00:21:12] Speaker 04:
It's not like Farisens, where it is truly a different patent.

[00:21:15] Speaker 00:
So this comes down to your argument with respect to continuations get treated differently and they get all treated the same patent?

[00:21:21] Speaker 04:
I think absolutely as a matter of law, because everything that's in a continuation you could put in the original patent.

[00:21:27] Speaker 04:
And so just calling it a different patent, and then the cases that are dismissed by Fox in their reply is just saying, oh, well, that's part of the same invention.

[00:21:35] Speaker 04:
Well, if this is part of a continuation, it is part of that original patent.

[00:21:39] Speaker 04:
It could have been done in the original patent.

[00:21:41] Speaker 04:
And they didn't come up with evidence because, as I said before, a presumption is just that.

[00:21:47] Speaker 04:
It's just a start, okay?

[00:21:49] Speaker 04:
They can then come up with evidence that shows, no, the commercial success, the long-felt need, the skepticism, all those other things were shown by something else.

[00:21:58] Speaker 00:
Yeah, but the difficulty we might be having

[00:22:03] Speaker 00:
is that the burden is on the patent owner with regard to these objective indicia.

[00:22:09] Speaker 00:
And so the presumption allows you to make a leap.

[00:22:13] Speaker 00:
One could argue that the reason that the burden is on the patent owner is also the patent owner has greater access to all of this stuff than would the potential infringer.

[00:22:24] Speaker 00:
And you're saying we don't need much.

[00:22:28] Speaker 00:
I mean, what if there were two components covered by the patent and six that weren't?

[00:22:34] Speaker 00:
Do you get a presumption in that circumstance?

[00:22:37] Speaker 04:
Forget this continuation issue.

[00:22:39] Speaker 04:
Well, no, I think you have to show, you have to show, it would never attach, because you have to show that it's coextensive and that it's covered by it.

[00:22:47] Speaker 00:
And your argument of coextensive rests entirely on the continuation piece of this case.

[00:22:53] Speaker 04:
No, no, it's not, Your Honor, because you have to show something's coextensive.

[00:22:56] Speaker 01:
But when there are multiple features here, which you admit, and they're governed by multiple patents, then you can't show that this single patent is coextensive with the invention.

[00:23:08] Speaker 04:
I think you can, Your Honor.

[00:23:09] Speaker 04:
I think you can.

[00:23:10] Speaker 04:
I think you can.

[00:23:11] Speaker 04:
You can have two different patents that are co-extended with a product.

[00:23:14] Speaker 01:
Well, that just makes no sense to me.

[00:23:15] Speaker 01:
Clearly, these other patents are also contributing to this invention.

[00:23:21] Speaker 04:
You're arguing that in other cases.

[00:23:23] Speaker 04:
Well, Your Honor, the second one, the 250, which was done by the exact same judges in the PTAB, was a case in which it's actually more narrow than this.

[00:23:33] Speaker 04:
And it's not something that's different.

[00:23:35] Speaker 04:
It's not, you know, in other words, the different cases that they look upon.

[00:23:37] Speaker 00:
What do you think coextensive means?

[00:23:39] Speaker 00:
You mean coextensive can be even if you're one of two components of a product?

[00:23:44] Speaker 04:
No, no.

[00:23:45] Speaker 04:
I think coextensive means that the patent itself, the elements of it, are covered, not just covered by, but also.

[00:23:54] Speaker 03:
I'm sorry?

[00:23:54] Speaker 03:
Isn't it what you're saying that one, in one case, one patent can

[00:24:01] Speaker 03:
involve a continuation.

[00:24:04] Speaker 03:
And it covers everything.

[00:24:06] Speaker 03:
But on one of the continuation patents, that subordinate part, which would be part of the original parent patent, could in itself be litigated by itself.

[00:24:16] Speaker 03:
And both could exactly contribute one as part

[00:24:23] Speaker 03:
and one as a little subpart of both of them are contributing to this.

[00:24:27] Speaker 04:
And you have to do that through evidence.

[00:24:28] Speaker 04:
And the evidence we presented was sworn testimony.

[00:24:31] Speaker 00:
Well, can I ask you?

[00:24:31] Speaker 00:
Can I just ask you?

[00:24:33] Speaker 00:
I know we have a lot of cases, and I agree that we've said a lot of different things.

[00:24:37] Speaker 00:
Obviously, when we decide a case, we're deciding it based on the arguments made by the parties.

[00:24:42] Speaker 00:
But you know our jurisprudence says you go back to the first case if you think there's any kind of perceived colleague.

[00:24:49] Speaker 00:
So we look at Demarca.

[00:24:51] Speaker 00:
And DeMarco has quite a discussion on this, but what they say is they discuss it when the thing that is commercially successful is not coextensive with the patented invention.

[00:25:03] Speaker 00:
For example, if the patented invention is only a component of a commercially successful machine or process,

[00:25:12] Speaker 00:
the patentee must show prima facie a legal sufficient relationship between that which is patented and that which is set.

[00:25:20] Speaker 00:
So they're saying, yeah, you don't get a presumption that you have to make a showing if it's covered by more, if the product includes more than one component.

[00:25:31] Speaker 00:
And I assume by that they mean,

[00:25:32] Speaker 00:
I assume they're not talking about bells and whistles.

[00:25:37] Speaker 04:
That's right.

[00:25:38] Speaker 04:
And we presented, let's look what we did to present to show that it was coextensive.

[00:25:42] Speaker 04:
We had three sworn people who testified, an expert who testified about it, an internal person who wasn't skilled in the art who testified about it, and the person who was the vice president of product development that testified about it, as well as presenting

[00:25:57] Speaker 04:
over 200 pages of claim charts, et cetera.

[00:25:59] Speaker 00:
Now, let's look what they did to say that it wasn't coextensive.

[00:26:14] Speaker 00:
Not everything in the product is covered by the claims.

[00:26:17] Speaker 00:
There are additional features that are covered by the claims.

[00:26:20] Speaker 04:
There are features that are not necessarily related to the idea of retaining the chain on the ring.

[00:26:27] Speaker 04:
There are features that may be included in there, like an interlink recess, that are not claimed in this particular patent.

[00:26:35] Speaker 04:
But we're talking about commercial success of the product, right?

[00:26:40] Speaker 04:
Right.

[00:26:40] Speaker 04:
What drives that?

[00:26:41] Speaker 03:
And how do you show that?

[00:26:43] Speaker 03:
According to all the people who express surprise and amazement and so on, is retaining the chain on the ring.

[00:26:51] Speaker 03:
when you're riding over rough ground.

[00:26:53] Speaker 03:
Exactly, Your Honor.

[00:26:54] Speaker 00:
I'm only speaking for myself, obviously.

[00:27:00] Speaker 00:
If what we're thinking about or talking about, which is just saying the presumption wouldn't apply in this circumstance, you still, if you can establish the nexus, then you will prevail on the secondary features.

[00:27:14] Speaker 00:
So no one is talking here about you're not having the ability

[00:27:21] Speaker 00:
with evidence that absolutely points strongly in that direction to establish that there's a nexus, right?

[00:27:27] Speaker 01:
Yeah, and we presented that, Your Honor, and they're – yeah, but that's not what the board based its findings on.

[00:27:32] Speaker 01:
The board's based its findings on a presumption and that they failed to rebut that presumption.

[00:27:37] Speaker 01:
They didn't make the alternative finding that you showed by direct evidence a nexus.

[00:27:42] Speaker 04:
Well, I think they list what is direct evidence, Your Honor.

[00:27:44] Speaker 04:
I agree with you.

[00:27:44] Speaker 04:
They don't come to a conclusion that says that we presented through direct evidence, although – Well, right.

[00:27:50] Speaker 01:
in the way they applied the presumption, then they have to make that finding on direct evidence.

[00:27:55] Speaker 04:
But Your Honor, then you're saying not just two different patents, you're actually saying you have to do that for each individual claim, because what they keep calling a second patent could have been the same claim in the same O27 patent.

[00:28:06] Speaker 01:
But it wasn't.

[00:28:06] Speaker 01:
That was your choice to put it in separate patents rather than put it in

[00:28:10] Speaker 01:
the same patent.

[00:28:11] Speaker 01:
Right, but it doesn't make a legally distinct patent.

[00:28:13] Speaker 01:
I mean, I don't understand what you're talking about with continuations unless you're arguing to us that we should further modify our already over complicated presumption thing and add a special rule for continuation patents.

[00:28:25] Speaker 04:
All the ones, all the cases that have looked at a question of nexus and a presumption of nexus with a parent and a continuation, even a continuation in part and a divisional,

[00:28:35] Speaker 04:
have all found that you can have a nexus in both of those.

[00:28:39] Speaker 04:
All you have to do is show that it's covered by it and it's coextensive with it.

[00:28:43] Speaker 04:
It's not changing any case law.

[00:28:45] Speaker 04:
None whatsoever.

[00:28:46] Speaker 00:
But we're not talking about nexus here.

[00:28:47] Speaker 00:
We all agree that the test is nexus.

[00:28:50] Speaker 00:
The question is, I think the question presented by this case is the presumption, but let me move you on to another thing, which is, I mean, the board opinion is very long and it says a lot of things, but one of the additional arguments your friend makes is that on the rebuttal, even if we were to agree with you a presumption applies, on the rebuttal,

[00:29:10] Speaker 00:
The board, I mean you understand, you know the phrases he's talking about, that there were some phrases that suggested that the burden he has on rebuttal is to show it was solely.

[00:29:22] Speaker 00:
Do you agree with that test, or is your view the board didn't really mean it?

[00:29:27] Speaker 04:
I don't think that's what they said.

[00:29:29] Speaker 04:
It's not what they said.

[00:29:30] Speaker 04:
What DiMacco says and what Polaris says, that what you have to do is come up with evidence to rebut something.

[00:29:37] Speaker 00:
You just came in through arguments to rebut it.

[00:29:38] Speaker 00:
I'm just inquiring.

[00:29:39] Speaker 00:
I know what the cases say.

[00:29:40] Speaker 00:
I'm just inquiring what the board said and did in this case.

[00:29:43] Speaker 04:
I don't believe the board said that.

[00:29:44] Speaker 04:
So what do you think?

[00:29:46] Speaker 00:
What standard do you think the board applied in terms of determining whether or not the other side had satisfied?

[00:29:52] Speaker 04:
The board looked at their evidence.

[00:29:55] Speaker 04:
Their expert, who they said was not, they did not credit him.

[00:29:58] Speaker 04:
This is the guy who spent, he looked at 3,700 pages in 35 hours, 19 seconds a page.

[00:30:05] Speaker 04:
He admitted that the lawyers wrote the majority of his opinion.

[00:30:08] Speaker 04:
he admitted that there was a long-felt need.

[00:30:12] Speaker 04:
The only other person who testified was not someone skilled in the yard, Your Honor.

[00:30:17] Speaker 04:
It was someone who was hired after they had already made these rings.

[00:30:21] Speaker 00:
And the board made all of these findings?

[00:30:22] Speaker 00:
Yeah.

[00:30:22] Speaker 00:
They're all in it.

[00:30:23] Speaker 00:
They did use some phrases that seem a little dubious, right?

[00:30:27] Speaker 00:
You know the ones you're talking about.

[00:30:28] Speaker 00:
The blue highlighted them in their brief, but you don't

[00:30:32] Speaker 00:
I don't think they really, they, your view is that they, the standard is that on rebuttal, even assuming there is a presumption, on rebuttal, it's their burden to show it was solely.

[00:30:43] Speaker 04:
Well, they hadn't, I don't believe it is their burden to show that it's solely our.

[00:30:47] Speaker 04:
I think that they have to show, they have to show that there is something there.

[00:30:50] Speaker 04:
They didn't come up with any rebuttal evidence, Your Honor.

[00:30:53] Speaker 04:
They didn't, they didn't, and the evidence that they did

[00:30:55] Speaker 04:
The board rejected it and did not give it credit.

[00:31:00] Speaker 04:
And that's the whole key, Your Honor.

[00:31:02] Speaker 04:
Thank you.

[00:31:02] Speaker 04:
I have a couple more.

[00:31:03] Speaker 04:
Sure.

[00:31:04] Speaker 03:
I just have a couple of little housekeeping questions.

[00:31:07] Speaker 03:
The first is what I asked your opposing counsel.

[00:31:10] Speaker 03:
On 43 of the red braids, you said he falsely suggested.

[00:31:14] Speaker 03:
He said he responded to that in the gray braid.

[00:31:17] Speaker 03:
And indeed, what you said was in the blue braid.

[00:31:20] Speaker 04:
So what's your take on that now?

[00:31:23] Speaker 04:
Well, what was just said was not accurate.

[00:31:25] Speaker 04:
He said that the 027 wasn't mentioned in the first few licenses.

[00:31:30] Speaker 04:
The 027 patent wasn't issued, Your Honor.

[00:31:32] Speaker 04:
The first licenses were for a European patent, and it was considered called Kettering, which is chain ring in German.

[00:31:39] Speaker 04:
But it included all of that family.

[00:31:42] Speaker 04:
As you generally give a license, you just don't give it for one particular patent.

[00:31:46] Speaker 04:
You give it for a family, Your Honor.

[00:31:47] Speaker 04:
But the unrebutted testimony was that it was all those licenses were covered by the 027.

[00:31:55] Speaker 04:
I don't think there's any dispute about that, Your Honor.

[00:31:57] Speaker 04:
And that's why we said that that was kind of falsely suggesting that.

[00:32:00] Speaker 03:
On page 45 at footnote 13, you say the pictures that Fox Factory

[00:32:07] Speaker 03:
put into their brief are misleading, undated comparisons.

[00:32:11] Speaker 03:
Right.

[00:32:13] Speaker 03:
What record evidence shows that those are undated or outdated?

[00:32:17] Speaker 04:
There's no record, there's nothing in the record that shows the dates of any of those pictures.

[00:32:22] Speaker 04:
The board looked at those pictures and they said, I believe they recognized that they were undated.

[00:32:26] Speaker 04:
They also recognized that they were fuzzy.

[00:32:28] Speaker 04:
You couldn't tell from them.

[00:32:29] Speaker 04:
They were fuzzy, yeah.

[00:32:30] Speaker 04:
And it was just a question of

[00:32:31] Speaker 04:
You were looking at something, say, well, I don't know if I copied this or not.

[00:32:35] Speaker 04:
And it was admitted that one, we had evidence showing that the one ring that they were showing was from 2016.

[00:32:40] Speaker 04:
They copied this in 2013, so they weren't using it that.

[00:32:46] Speaker 04:
And so that was the point, Your Honor.

[00:32:50] Speaker 04:
Thank you, Your Honor.

[00:32:59] Speaker 02:
Just a couple of points, Your Honor.

[00:33:01] Speaker 00:
But you need to respond very briefly, if you can, to the sort of continuation argument.

[00:33:05] Speaker 02:
Yeah.

[00:33:05] Speaker 02:
Well, so the continuation argument just disregards that when you're looking at secondary considerations, you do it on a claim-by-claim basis.

[00:33:13] Speaker 02:
It's not on a patent-by-patent basis, and it's certainly not on a family-by-family basis.

[00:33:17] Speaker 02:
It's got to be on the claimed invention.

[00:33:19] Speaker 02:
All the case law talks about that.

[00:33:22] Speaker 02:
They – he mentioned WBIP and Gator Tail.

[00:33:26] Speaker 02:
In both of those cases – and I can find the quotes for you, but they're quoted in our bravery – in both cases, the court – in the WBIP, a single claim was representative of the claims in both patents.

[00:33:39] Speaker 02:
In Gator Tail, the court went out of its way to say for the purposes of this appeal, the two patents claim essentially the same invention.

[00:33:45] Speaker 02:
And that's true for all the cases that they cite.

[00:33:48] Speaker 02:
I wanted to talk briefly about the licensing.

[00:33:51] Speaker 02:
And the reason they don't mention the 027 patent is it hadn't issued – well, how important could the 027 patent be if the patent hadn't even issued at that point?

[00:34:03] Speaker 02:
They're licensing the German Kettering patent, and that's in the appendix.

[00:34:07] Speaker 02:
You'll see the claims in that case don't claim an offset.

[00:34:11] Speaker 02:
that there are different claims than were claimed in the 027 patent.

[00:34:15] Speaker 02:
So we have to stay focused on the claim, and that's what the board failed to do.

[00:34:19] Speaker 02:
That's what SRAM fails to do.

[00:34:23] Speaker 02:
Your Honor, I can give you the sites for when the board said Fox had to attribute all the benefits of the X-sync chainring to unclaimed features.

[00:34:33] Speaker 02:
That's at A38, and they did it again at A104.

[00:34:36] Speaker 02:
And then they went on to say that our evidence was no good because it failed to show that the praise was only directed to the features found in the prior art.

[00:34:45] Speaker 02:
And again, the same two points, 38 and 104, 105.

[00:34:49] Speaker 02:
And then finally, with regard to the issue of – we asked for reversal, and the reason we asked for reversal is the records closed

[00:34:58] Speaker 02:
There is no evidence in the record that shows anything supporting the 027, the claimed offsets.

[00:35:05] Speaker 02:
Not a single piece of evidence attributing success to the offsets.

[00:35:09] Speaker 02:
It's all to the claim narrow-wide, which we already know would contribute to chain retention from JP Shimano and Martin, or the mud clearing recesses, which are separately patented.

[00:35:23] Speaker 03:
The- Well, that's not my recollection of the record.

[00:35:25] Speaker 03:
I'm sorry, Your Honor.

[00:35:26] Speaker 03:
There's nothing about the offsets.

[00:35:29] Speaker 02:
There's no mention of the offsets in any of the record materials in there.

[00:35:35] Speaker 02:
And I mean, we just don't have time to go through them all, but they are discussed in the brief.

[00:35:40] Speaker 02:
If there are any more questions.

[00:35:41] Speaker 00:
Thank you.

[00:35:42] Speaker 00:
Thank you, Your Honor.