[00:00:00] Speaker 03:
The final case for argument is 191276 Pierce Manufacturing versus E1.

[00:01:09] Speaker 00:
I'd like to begin with Pierce's May 2nd letter in which it informed the court that it is now dropping claim 20 of the 915 patent.

[00:01:18] Speaker 00:
That was one of only two claims that it asserted for its preliminary injunction motion.

[00:01:23] Speaker 00:
Now, I believe that Pierce did this because it knows that the claim is invalid, specifically limitations A through I are in fact anticipated by the Seagrave prior arc.

[00:01:33] Speaker 00:
But regardless of the reasons, I'll focus my arguments today on the sole remaining claim, which is claim 20 of the 536 patent, which includes the 750 pound tip load limitation.

[00:01:44] Speaker 00:
District Court erred in granting a preliminary injunction based on that claim because E-1 raised a substantial question of invalidity, which Pierce failed to show lacked substantial merit.

[00:01:54] Speaker 00:
Single-axle quints are not new.

[00:01:56] Speaker 00:
In fact, the specification describes them as traditional.

[00:02:00] Speaker 00:
And the specification also admits that the, quote, traditional method for increasing a quint's ladder length and tip load

[00:02:08] Speaker 00:
is to place more weight on the chassis.

[00:02:10] Speaker 00:
And that is just basic physics.

[00:02:13] Speaker 00:
If you want to put more weight further out on the ladder, you need to put more weight on the chassis to counterbalance the load.

[00:02:20] Speaker 00:
Otherwise, the truck will tip over.

[00:02:23] Speaker 00:
Again, this is just basic, traditional, well-known design principles.

[00:02:26] Speaker 00:
Certainly not something that Pearson invented.

[00:02:29] Speaker 00:
So, what did Pierce invent?

[00:02:31] Speaker 00:
It claims to have invented a single rear axle quint with a ladder that extends 95 feet vertically and 90 feet horizontally with a 750 pound tip load.

[00:02:42] Speaker 00:
But E1 presented evidence below to the magistrate that showed that that combination of features was already known in the art and certainly would have been obvious to a person of ordinary skill in the art in 2014.

[00:02:53] Speaker 00:
E-1 produced prior art photographs and descriptions of two 1990s-era sea-grave quints, each with a single rear axle and a 100-foot aerial ladder.

[00:03:03] Speaker 00:
E-1 also provided sworn declarations from Mr. Salmi documenting a physical inspection of a sea-grave quint in New Jersey, and E-1 provided expert declarations explaining, based on the prevailing

[00:03:15] Speaker 00:
NFPA standards at the time that the Seagrave 100-foot ladder would be capable of extending 100, excuse me, 95 feet vertically and 90 feet horizontally.

[00:03:25] Speaker 03:
So no one inspected the 97 and 96 fire trucks, right?

[00:03:29] Speaker 00:
That's correct, Your Honor.

[00:03:30] Speaker 00:
The inspection was of a 1999 Seagrave Prior Archwind.

[00:03:34] Speaker 03:
Well, you understand why.

[00:03:35] Speaker 03:
Isn't that a problem for you here?

[00:03:37] Speaker 03:
I mean, on our standard of review and given the findings that the district court made, it's just a substantial question of validity.

[00:03:46] Speaker 00:
I don't believe so, Your Honor.

[00:03:47] Speaker 00:
The evidence we put forth was based on 1990s-era Seagrave quints.

[00:03:52] Speaker 00:
We used the 96 and the 97 models as examples.

[00:03:56] Speaker 00:
And my colleague on the other side has argued that the 1997, which was not before the examiner, by the way, was identical to the 1996 for all purposes relevant to this case.

[00:04:06] Speaker 00:
There's no reason to believe that the 1999 model isn't also relevant.

[00:04:11] Speaker 00:
We presented evidence showing that for all of the salient features in this case, those models are all the same.

[00:04:17] Speaker 00:
The only features that they've pointed to between those three models that are different are superficial features, such as the shape of the cab and the capacity of the water tank.

[00:04:26] Speaker 00:
none of which are claim limitations.

[00:04:27] Speaker 00:
And this is the preliminary injunction phase.

[00:04:31] Speaker 00:
It's not, we're not required to make an actual case of invalidity.

[00:04:34] Speaker 00:
The question is vulnerability, not invalidity.

[00:04:37] Speaker 01:
What was, what was before the magistrate?

[00:04:41] Speaker 01:
I realize that with respect to the 1999 sea grave quint,

[00:04:47] Speaker 01:
I know that there's the July declaration, but that was after the magistrate's decision.

[00:04:54] Speaker 01:
What did the magistrate have before him?

[00:04:57] Speaker 01:
Was it him or her?

[00:04:59] Speaker 00:
Him, I believe.

[00:04:59] Speaker 01:
What did the magistrate have before him with respect to the 99 point?

[00:05:04] Speaker 00:
With respect to the 1999 Quinn, he had two declarations from Mr. Salmi.

[00:05:09] Speaker 00:
There was a declaration that was submitted, I believe, in early May, excuse me, early April, where he provided some information about a quint that he inspected, and then he followed up with a supplemental declaration in which he included more information about the quint that he inspected.

[00:05:25] Speaker 00:
That was the 1999 Quinn.

[00:05:27] Speaker 00:
that supplemental declaration was the subject of litigation before the magistrate.

[00:05:32] Speaker 00:
Pierce moved to strike it.

[00:05:34] Speaker 00:
And in its motion to strike, it's stated as one of its reasons why it wanted to strike it, that this is a piece of prior art that E1 is trying to assert.

[00:05:42] Speaker 00:
And we responded saying, you're absolutely right.

[00:05:44] Speaker 00:
This is a prior art sea-grave quint that we are asserting here.

[00:05:48] Speaker 00:
The magistrate overruled their objection, and the evidence came in.

[00:05:51] Speaker 01:
But then just- Do you think you can prevail without the benefit

[00:05:56] Speaker 01:
Under the standard review, if we just look at what was before the magistrate, do you think you can still prevail?

[00:06:03] Speaker 00:
Absolutely.

[00:06:03] Speaker 01:
Even if you don't have the benefit of the July 5, 2015?

[00:06:08] Speaker 01:
Is it 2018?

[00:06:09] Speaker 01:
2018.

[00:06:11] Speaker 00:
Absolutely, Your Honor.

[00:06:13] Speaker 00:
There is pictorial, prior art pictorial evidence of these prior art quints, 1996, 1997.

[00:06:20] Speaker 00:
There was a physical inspection of another quint of the same model, different year but same model.

[00:06:27] Speaker 00:
All of that was before the magistrate.

[00:06:30] Speaker 00:
Also before the magistrate was expert declarations citing the NFPA standards.

[00:06:34] Speaker 00:
prevailing at the time.

[00:06:36] Speaker 00:
There was information about the Dana axles that were part of our obviousness combination, as well as other axles that were known at the time.

[00:06:44] Speaker 00:
Information about the very important 2011 white paper, industry white paper, that is part of our obviousness combination.

[00:06:52] Speaker 00:
So all of that evidence was before the magistrate, including voluminous expert opinions, claim charts, and argumentation as to why that evidence renders the claims either anticipated or

[00:07:04] Speaker 04:
Let me give you an example because you're talking in generalities but I mean below they were quite specific about why they thought that the 96 and 97 ladders weren't sufficiently established to create validity problems when the expert had only reviewed the 99 sea-grave quint.

[00:07:29] Speaker 04:
Like they argue and explain that the

[00:07:33] Speaker 04:
E1's experts stated with no support that the 96 and 97 C-grade ladders meet the height and reach requirements of limitation H. But your own expert explained that aerial ladders are capable of reaching 100 feet in one direction or not necessarily able to reach 90 feet horizontally or 95 feet of height without tipping over.

[00:07:50] Speaker 04:
And so that's just one example.

[00:07:53] Speaker 04:
I guess the example being you can't just look at the picture without inspecting the 96 and 97 and be sure

[00:07:59] Speaker 04:
They meet that particular limitation, limitation H. So how do you respond to that?

[00:08:04] Speaker 00:
I mean, just because the 99 meets limitation H doesn't mean the 96 and 97 meet limitation H. Your Honor, first of all, again, I stress this is a preliminary injunction phase where this Court has said,

[00:08:17] Speaker 00:
you need to present a substantial question of invalidity, but it doesn't have to necessarily be the complete case of invalidity.

[00:08:23] Speaker 00:
There could be issues that still have to be investigated and tried during the trial.

[00:08:28] Speaker 00:
With respect to your question, however, our expert opined.

[00:08:32] Speaker 00:
Now remember, the pictures of the 1996 and 1997 sea graves also included prior art captions and information, so we know that they were 100-foot aerial ladders.

[00:08:42] Speaker 00:
That, in and of itself,

[00:08:44] Speaker 04:
calls into question the asserted claims because these patents are based... But the experts find that 100-foot aerial ladders are not necessarily able to reach 90 feet horizontally or 95 feet of height without tipping over.

[00:08:57] Speaker 04:
And that's right in the expert's testimony on 8307 and 8308.

[00:09:01] Speaker 04:
So yes, you can tell from the picture that they're a 100-foot ladder.

[00:09:04] Speaker 04:
That doesn't mean they meet the requirement of the claim limitation.

[00:09:07] Speaker 04:
And the expert admitted that.

[00:09:08] Speaker 00:
Well, that's their expert, Your Honor.

[00:09:10] Speaker 00:
Our expert opined that based on the NFPA standards,

[00:09:13] Speaker 00:
and based on Mr. Salmi's inspection of the 1999 version that the latter should be able to reach 95 feet vertically and 90 feet.

[00:09:20] Speaker 00:
That's the problem.

[00:09:20] Speaker 04:
The lower tribunal said that was very speculative and even as you said it right now it sounded incredibly speculative to me so it's kind of hard for me to say they abused their discretion in saying it was speculative.

[00:09:29] Speaker 00:
Well, Your Honor, we also have the obviousness combination, even if the horizontal reach is not proven, which, again, I disagree with because we did the inspection, but even if it's not proven.

[00:09:39] Speaker 04:
We did the inspection of the 99, which wasn't before the magistrate.

[00:09:42] Speaker 00:
Right.

[00:09:42] Speaker 00:
But the 1996 and 1997 clearly have 100-foot ladders.

[00:09:47] Speaker 00:
That, in and of itself,

[00:09:48] Speaker 00:
rebutts one of the central premises of these patents, which is that prior art quints with single axles were limited to only 80 feet vertically and 72 feet horizontally.

[00:09:58] Speaker 00:
We have our obviousness argument, which means how would a person of ordinary skill in the art increase the reach and the tip load of a prior art quint such as the sea grave?

[00:10:06] Speaker 00:
In 2014, they had two choices, Your Honor.

[00:10:09] Speaker 00:
They could use a tandem

[00:10:11] Speaker 04:
I hear what you're saying about this.

[00:10:13] Speaker 04:
Your problem for me, let me just say, because, you know, you can try to convince me on that limitation and possibly you could do it, but your problem is I gave that as one example.

[00:10:22] Speaker 04:
There are many examples that were pointed to in a really good opinion from below, a very detailed and thorough opinion.

[00:10:28] Speaker 04:
Another one would be INJ relating to the estimates of weight and where they said, again, Mr. Salome seems to be basing this on two pictures and ignored the weight of the ladder and the counterbalancing calculations.

[00:10:41] Speaker 04:
There were a lot of little details that all of which led the court below to say this expert is just speculating on all of these limitations.

[00:10:53] Speaker 04:
And that doesn't feel like enough under the circumstances to meet the substantiality requirement.

[00:10:58] Speaker 04:
So your problem for me is that there's a lot of little things.

[00:11:02] Speaker 00:
I understand, Your Honor.

[00:11:03] Speaker 00:
I would just point to the fact that they didn't challenge a lot of those limitations below.

[00:11:07] Speaker 00:
So limitations A through E are just basic limitations of a quint.

[00:11:11] Speaker 00:
I don't think there's any disagreement here that the C grade was a quint, which by definition has its first five features.

[00:11:15] Speaker 04:
Why didn't you talk about A through E?

[00:11:16] Speaker 04:
I just gave you H, I, and J.

[00:11:18] Speaker 00:
So H-I-N-J, it really just goes to the reach and the tip load.

[00:11:22] Speaker 00:
Now, the tip load requirement, our expert presented information, you're right, based on Mr. Saami's estimates.

[00:11:28] Speaker 00:
And they're free to attack his credibility and bias and expertise and so forth.

[00:11:34] Speaker 04:
Well, they didn't just attack credibility and bias.

[00:11:36] Speaker 04:
I don't even know if they attacked that.

[00:11:37] Speaker 04:
I didn't pay close attention to that.

[00:11:39] Speaker 04:
They attacked the fact that the estimates lacked.

[00:11:43] Speaker 04:
taking into account important characteristics that would directly affect those weights.

[00:11:47] Speaker 04:
That's not his bias.

[00:11:48] Speaker 04:
That's not his credibility.

[00:11:50] Speaker 04:
That is the nature of his calculations are

[00:11:53] Speaker 04:
improper, wrong, don't meet Adalbert's death, whatever.

[00:11:55] Speaker 04:
It's not him.

[00:11:57] Speaker 04:
It's a problem with his suggestions because they fail to account for everything.

[00:12:01] Speaker 00:
The experts disputed the calculations and that's based on how that claim, that limitation is construed.

[00:12:07] Speaker 00:
That's a claim construction issue.

[00:12:08] Speaker 00:
I'd like to just return to the obviousness issue, Your Honor, because the obviousness combination solves that problem.

[00:12:14] Speaker 00:
So in 2014, there was only two solutions to increasing tip load and ladder reach of a traditional single axle quint like the Seagrave.

[00:12:24] Speaker 00:
One was a tandem rear axle.

[00:12:25] Speaker 00:
That was described as a traditional method.

[00:12:27] Speaker 00:
The only other option was to increase the capacity of the rear axle.

[00:12:32] Speaker 00:
And what Pierce is trying to do in these claims is claim ownership of that entire second solution, simply increasing the capacity of the axle.

[00:12:40] Speaker 00:
But in 2014, that solution was obvious.

[00:12:42] Speaker 00:
We pointed to the 2011 white paper in which a very influential organization was lobbying to increase

[00:12:49] Speaker 00:
the ratings for rear axles for emergency vehicles to 33,500 pounds nationwide.

[00:12:55] Speaker 00:
And the purpose of that article and the purpose of that white paper was to encourage manufacturers to use higher capacity axles up to 33,500 pounds.

[00:13:05] Speaker 00:
And that's precisely what Pierce did.

[00:13:07] Speaker 00:
They took a traditional quint

[00:13:09] Speaker 00:
like the Seagrave, which already had a 100-foot ladder, and they put a 33,500-pound axle on it, precisely as the white paper encouraged, and then they filed a patent application to try to preclude all of their competitors from following that same basic obvious approach.

[00:13:25] Speaker 00:
And even without a motivation to combine, KSR would say that that is obvious under the obvious to try doctrine.

[00:13:31] Speaker 00:
But the white paper itself provides a motivation to combine.

[00:13:34] Speaker 00:
And that was our substantial case of obviousness.

[00:13:38] Speaker 00:
Now, they've already dropped claim 20 of the 915 patent, which is where we made our strongest case of anticipation.

[00:13:44] Speaker 00:
I believe that's pretty indicative that they think the claim is invalid.

[00:13:48] Speaker 00:
The burden was on them to show that our obviousness combination lacked substantial merit.

[00:13:53] Speaker 00:
They didn't show any evidence that a person in 2014 of skill in the art was incapable of making that combination, of simply replacing the axon.

[00:14:01] Speaker 03:
What's the status of this litigation currently?

[00:14:04] Speaker 00:
It's still proceeding, Your Honor.

[00:14:05] Speaker 03:
We have — So it's not stayed or anything?

[00:14:08] Speaker 00:
It's not stayed.

[00:14:09] Speaker 00:
We did file IPR petitions, but there's been no institution decision yet.

[00:14:13] Speaker 00:
We expect that in a few weeks.

[00:14:15] Speaker 00:
And the injunction is in place, and they're enforcing it.

[00:14:19] Speaker 03:
Is there any trial scheduled?

[00:14:21] Speaker 00:
I believe trial is scheduled for next year.

[00:14:23] Speaker 04:
I mean, certainly following on Judge Pro's questions, if the PTO were to grant your IPRs, you could always petition the district court, couldn't you, for relief from the preliminary injunction because of a changed circumstance?

[00:14:37] Speaker 00:
We could, Your Honor.

[00:14:39] Speaker 03:
Why don't we reserve the remainder of your time and we'll hear from the other side.

[00:14:42] Speaker 03:
Thank you.

[00:14:58] Speaker 02:
when Your Honors may please the Court.

[00:15:00] Speaker 02:
The District Court did not abuse its discretion when it found that E1 failed to raise a substantial question as to the validity of the asserted patents, and so granted Pierce's motion for preliminary injunction.

[00:15:12] Speaker 02:
As Your Honors pointed out with my opponent, one of the key issues that the Court found was that the

[00:15:20] Speaker 02:
Invalidity attacks lacked any real substance to it that had a lot of holes and a lot of speculation and the thing that I did not hear this morning and I expect it will not be able to hear is that there is no evidence or at least objective evidence

[00:15:37] Speaker 02:
that the sea graves could counterbalance a tip load of 750 pounds when the ladder was extended 90 feet horizontally, as is required by limitation J in the 536 patent.

[00:15:51] Speaker 02:
As a result, the court below found that E1's invalidity case was not well developed, contained too much speculation, and lacked substantial merit.

[00:16:00] Speaker 02:
And there was no abuse of discretion in this finding.

[00:16:03] Speaker 02:
As was discussed in the appellate side, there were actually three trucks here.

[00:16:09] Speaker 02:
There is a 1996 seagrave, a 1997 seagrave, and we later learned of a 1999 seagrave.

[00:16:16] Speaker 02:
But as Judge Shaw pointed out, only the 1996 and 1997 seagraves were actually before the magistrate.

[00:16:22] Speaker 02:
While it is true that Mr. Assami's April and May declarations mentioned an inspection, there was no mention whatsoever of any of the details of what was inspected.

[00:16:33] Speaker 02:
There was no description of the year the inspector's surrogate was made.

[00:16:38] Speaker 02:
No even description if it was the same model as the 96 or 97, or if it had the same features as those.

[00:16:45] Speaker 02:
No description of what the actual vertical height or horizontal reach of the ladder was, what the tip load capability of that ladder was, or even when that inspection allegedly occurred.

[00:16:55] Speaker 02:
In fact, there was no details whatsoever on that truck that was inspected.

[00:17:03] Speaker 02:
As a result, the magistrate judge correctly held there was never any inspection of the two trucks that were before him.

[00:17:13] Speaker 02:
Even after Mr. Salmi's July declaration, in which he supposedly measured the length of the ladder, he never provides any objective evidence on its tip load capacity.

[00:17:27] Speaker 04:
Instead of spending your time on stuff that wasn't really what was the main focus of the appellant's argument, he really moved us to obviousness.

[00:17:38] Speaker 04:
Can I just tell you to skip over all of this and just go to obviousness?

[00:17:42] Speaker 02:
I am happy to go to obviousness, Your Honor.

[00:17:44] Speaker 02:
And if I could, while I'm going to get you to obviousness, if I could ask you to turn to, in the first volume of the appendix, appendix page 1353.

[00:18:08] Speaker 02:
And so this is a page in that Fama white paper that he discussed that he talks about was the motivation to combine the sea graves with the Dana axis.

[00:18:18] Speaker 02:
And on 1353 is what is described in the Fama white paper on 1351 as typical fire apparatus configurations.

[00:18:28] Speaker 02:
and so on 1353 we have an aerial ladder single rear axle and then below that an aerial ladder tandem rear axle.

[00:18:38] Speaker 02:
So Appellant's argument is that this Fama white paper encouraged manufacturers to use heavier duty axles

[00:18:47] Speaker 02:
to get more weight on the back of a truck and so you could put a single rear axle quint with a 100 foot ladder with a 90 foot horizontal reach and a 750 pound tip load.

[00:18:59] Speaker 02:
Now if you recall back to the appellant's brief, the previous

[00:19:03] Speaker 02:
rule, or the previous limitation under the Federal Highway Administration, at least, was a 31,000 pound rear axle.

[00:19:10] Speaker 02:
So what the Fama Waypaper was saying, you can go from 31,000 to 33,500.

[00:19:14] Speaker 02:
That's an increase of 2,500 pounds.

[00:19:19] Speaker 02:
And you could increase the front axle by another 1,000 pounds.

[00:19:23] Speaker 02:
But if you look at how much weight we put on our tandem rear axle, which is just below that, we're talking 54,000 pounds.

[00:19:31] Speaker 02:
That kind of

[00:19:32] Speaker 02:
additional capacity was required to have this much weight.

[00:19:36] Speaker 02:
Adding two or three thousand pounds would not make it obvious that you could then get all those features on a single rear axle.

[00:19:44] Speaker 02:
And indeed, there is undisputed evidence that the Dana axles were available long before this family paper.

[00:19:51] Speaker 02:
Pierce submitted a declaration.

[00:19:54] Speaker 04:
I will not, Your Honor.

[00:20:05] Speaker 02:
And the judge physically found that.

[00:20:07] Speaker 02:
They said the fact that these new guidelines came into place

[00:20:10] Speaker 02:
would not render the patent claims obvious.

[00:20:14] Speaker 02:
He had the basis for that.

[00:20:16] Speaker 02:
We went through below all the reasons why it would not be obvious to add a that, including the fact that Pierce itself offered a 33,500 pound rear axle in 1998.

[00:20:29] Speaker 02:
And so there was 14 years before the truck was actually released.

[00:20:35] Speaker 02:
It also is undercut by E1's own truck.

[00:20:38] Speaker 02:
They couldn't even make it work on a 33,500-pound axle.

[00:20:42] Speaker 02:
They had to use a 35,000-pound axle.

[00:20:45] Speaker 02:
And even then, it took them two years to do it.

[00:20:47] Speaker 04:
And all of that was before the magistrate judge?

[00:20:49] Speaker 02:
Correct.

[00:20:50] Speaker 02:
The fact that we had a 98 axle.

[00:20:52] Speaker 04:
The fact that they took so many months to be able to do it themselves?

[00:20:57] Speaker 02:
Correct, Your Honor.

[00:20:57] Speaker 02:
It was in Mr. Assami's declaration where he talks about we use a 35,000-pounder axle.

[00:21:03] Speaker 04:
OK.

[00:21:03] Speaker 04:
I think we get this one.

[00:21:04] Speaker 04:
Anything else you want to add?

[00:21:06] Speaker 02:
I'm good, Your Honor.

[00:21:06] Speaker 02:
Thank you.

[00:21:21] Speaker 00:
Thank you, Your Honor.

[00:21:23] Speaker 00:
Just a couple points.

[00:21:24] Speaker 00:
The fact that they offered 33,500-pound rear axles is not relevant.

[00:21:30] Speaker 00:
There's no evidence that they actually loaded those axles to 33,500 pounds.

[00:21:34] Speaker 00:
There's a difference between capacity and what load you actually put on them.

[00:21:39] Speaker 00:
And also, the only evidence comes from a declaration from one of their own employees who merely said they offered the axle.

[00:21:44] Speaker 00:
There's not even any proof that they sold a quint with that axle.

[00:21:47] Speaker 00:
Now, the chart that they pointed to in the white paper shows minimum and maximums.

[00:21:52] Speaker 00:
It shows the maximum rear axle going up to 33,500 pounds.

[00:21:57] Speaker 00:
At the time of that white paper, the regulations regulating emergency vehicles was described as a patchwork.

[00:22:03] Speaker 00:
And it hindered the ability and the motivation of manufacturers to actually put 33,500 pounds on the rear axles because if they did that, even if they were allowed to sell it into one particular state with a waiver, that truck would not be able to go on federal highways and it would not be able to largely cross state lines, which is an important part of modern firefighting if you have to go fight a forest fire, for instance, in a different state.

[00:22:28] Speaker 00:
So we think this is substantial evidence of motivation, and I disagree that the magistrate addressed it under the proper framework, because if you look at appendix page 30 of the report and recommendation, the magistrate said that we had a burden of clear and convincing evidence, which is not true.

[00:22:49] Speaker 00:
The magistrate got that idea from

[00:22:52] Speaker 00:
Pierce, who repeatedly argued in its briefing and oral argument that we bore a burden of clearing convincing evidence to show invalidity.

[00:22:58] Speaker 00:
That is not the case.

[00:22:59] Speaker 00:
We merely have to present a question of invalidity that they are unable to show lacks substantial merit.

[00:23:05] Speaker 00:
We believe we did so in this case, unless Your Honors have any additional questions.

[00:23:10] Speaker 03:
Thank you.