[00:00:00] Speaker 01:
Bellis Electric Company.

[00:00:36] Speaker 03:
Good morning.

[00:00:47] Speaker 03:
May it please the court?

[00:00:49] Speaker 03:
So neither one of you called our attention to our two earlier decisions in these other polygroup cases, which, while they're not precedential, they are binding as a matter of collateral estoppel.

[00:01:04] Speaker 03:
And my view would be, based on those earlier two decisions, that they resolve the issues of the tree portion.

[00:01:19] Speaker 03:
They resolve the issue of Miller alone.

[00:01:22] Speaker 03:
And the only thing that's left here is the Trump connector issue.

[00:01:26] Speaker 04:
Do you agree with that?

[00:01:27] Speaker 04:
Absolutely.

[00:01:28] Speaker 04:
And Your Honor, I apologize.

[00:01:29] Speaker 04:
I wrongly assumed that the court would

[00:01:33] Speaker 04:
There was a connection there.

[00:01:34] Speaker 04:
In fact, our appellate briefing very much refers to the prior briefing.

[00:01:38] Speaker 04:
And I apologize.

[00:01:40] Speaker 04:
I didn't realize we should have filed notice of supplementary authority or something else to connect those dots.

[00:01:44] Speaker 04:
You're absolutely correct.

[00:01:46] Speaker 04:
The prior decisions resolve the tree portion issue and the Miller alone issue.

[00:01:50] Speaker 04:
The only thing I'll add on Miller alone

[00:01:52] Speaker 04:
You'll recall from our prior argument, Your Honor, asking some questions about which claims were specifically asserted with respect to Miller alone.

[00:02:00] Speaker 04:
And in preparing for today, I went back to the briefs and apologize again, lack of pure clarity.

[00:02:08] Speaker 04:
But I will say that Miller alone is asserted with respect to all claims but claims 3, 4, 12, 16, 21, and 26.

[00:02:23] Speaker 01:
And so is this where we get into the question of whether it, so Miller alone, we would have to remand.

[00:02:30] Speaker 04:
Yes, Your Honor.

[00:02:32] Speaker 01:
But I just want to drill down on what's remaining for us to have to decide.

[00:02:36] Speaker 01:
And is that the combination, I guess it would be an alternative for the board to consider on remand, which is the combination of Miller, Yang, and Patrick?

[00:02:46] Speaker 01:
Exactly, Your Honor.

[00:02:47] Speaker 01:
So that's the only issue as to whether or not

[00:02:53] Speaker 01:
Exactly right.

[00:02:54] Speaker 01:
And you're saying that the board was right.

[00:02:58] Speaker 01:
The board refused, said there was no motivation to combine those, right?

[00:03:06] Speaker 01:
Essentially, yes.

[00:03:07] Speaker 01:
So even though you're here as the appellant, you really would want us to affirm that no?

[00:03:14] Speaker 04:
No.

[00:03:15] Speaker 04:
So the board rejected the proposed combination of Miller-Patry and Yang.

[00:03:22] Speaker 04:
And in doing so, we would like that reversed, because at least the claims I just mentioned, Miller alone is not asserted with respect to those.

[00:03:32] Speaker 04:
And if when this is remanded, the board needs to consider, we believe, Miller alone, plus the combination of Miller, Yang, and Patry.

[00:03:40] Speaker 03:
And just for context, the 07-2 patent... Does the tree portion affect that latter question?

[00:03:46] Speaker 04:
The tree portion, you may recall,

[00:03:50] Speaker 04:
Willis predicated its entire argument on the fact that Miller doesn't teach a tree portion as they construed it.

[00:03:56] Speaker 04:
The court rejected that construction that the board had adopted below, and so that is why the court is remanding so that the board will consider Miller alone.

[00:04:06] Speaker 04:
Because Miller alone is a tree

[00:04:10] Speaker 04:
Getting back a little bit into the claim construction that was issued before, tree portion was construed previously to mean non-detachable branches.

[00:04:17] Speaker 04:
Miller doesn't teach that.

[00:04:18] Speaker 04:
The board adopted that construction.

[00:04:20] Speaker 04:
This court reversed that construction, so that has been remanded for in the other case, consideration of Miller alone, based on the change in the tree portion construction.

[00:04:31] Speaker 02:
Counsel, you mentioned briefly in an apology that you didn't call our attention to the prior cases.

[00:04:41] Speaker 02:
I want to emphasize that's no small matter, and it's your duty to

[00:04:47] Speaker 02:
ensure, to the best you can, that the court doesn't go down blind alleys and waste its time on issues that have already been decided.

[00:04:57] Speaker 02:
So I want to emphasize that is no small matter.

[00:05:00] Speaker 02:
I sincerely apologize, Your Honor.

[00:05:03] Speaker 03:
I think that's a comment that applies to both counsels.

[00:05:05] Speaker 03:
both had an obligation to advise us of these cases.

[00:05:10] Speaker 04:
Again, I apologize and will certainly alert my team and all those who practice in front of your honors to make that clearer.

[00:05:16] Speaker 04:
So I'm sorry for that, particularly if you wasted time.

[00:05:19] Speaker 03:
But the issues to that... I'm just trying to understand

[00:05:23] Speaker 03:
where we are here.

[00:05:25] Speaker 03:
If I understand correctly, this trunk connector argument applies to claims 12, 18, 25, 26, and 27.

[00:05:34] Speaker 03:
Am I right about that?

[00:05:35] Speaker 03:
I believe that's right.

[00:05:36] Speaker 03:
Okay.

[00:05:37] Speaker 03:
So let's put that aside for the moment.

[00:05:42] Speaker 03:
With respect to the other claims,

[00:05:46] Speaker 03:
Is it sufficient to bring about a remand that we've decided the tree portion construction contrary to the board and we've decided Miller alone contrary to the board or do we need to decide something else?

[00:06:01] Speaker 04:
We need to decide this as well because actually this, I apologize.

[00:06:04] Speaker 04:
What about this?

[00:06:06] Speaker 04:
whether the board properly rejected the proposed combination of Miller, Yang, and Patchery.

[00:06:13] Speaker 04:
And getting back to the tree connector element, the tree connector element is part of each of the independent claims, so it really affects all of the claims.

[00:06:22] Speaker 04:
And for context, what's really in dispute here is the 072 patents claim of a

[00:06:29] Speaker 04:
tapered or multi-diameter connector between electric connectors within trunk sections.

[00:06:36] Speaker 04:
That's all this issue here.

[00:06:39] Speaker 01:
Okay, let me ask you one more process issue.

[00:06:41] Speaker 01:
I understand, so a remand under our precedent is required for Miller, but you're saying that we also have to decide as an alternative if Miller doesn't work out when we remand it to the board.

[00:06:55] Speaker 01:
whether or not the board correctly concluded that there was no motivation to combine.

[00:06:59] Speaker 01:
And you're challenging that conclusion of no motivation to combine.

[00:07:03] Speaker 01:
Let me ask you, if we were to hypothetically agree with you with regard to the board's error with respect to no motivation, does that end the case, therefore, and obviate the need to remand anything?

[00:07:17] Speaker 01:
Does that compel reversal, or is there still a need to send the case back?

[00:07:23] Speaker 04:
We believe it would result in reversal because we think that the board's conclusions are improper, but it could be remanded as well if it's remanded.

[00:07:33] Speaker 01:
So if we said word wrong, there was a motivation to combine these three references.

[00:07:39] Speaker 01:
Isn't there more to be done or not?

[00:07:49] Speaker 04:
I don't believe there is.

[00:07:51] Speaker 01:
Let me just move on to just quickly.

[00:07:55] Speaker 01:
On that question, we've got a substantial evidence deference.

[00:08:00] Speaker 01:
And the board at 22 and 23 made a bunch of findings with regard to the lack of motivation here.

[00:08:10] Speaker 01:
So how do you, even if we were to agree with you in the first instance, how do we

[00:08:15] Speaker 04:
There are at least three errors here, Your Honor.

[00:08:18] Speaker 04:
First, the board failed to apply a proper KSR analysis.

[00:08:22] Speaker 04:
Second, it imposed a – and I'll get into that.

[00:08:25] Speaker 04:
I'm just going to tell you what the three are.

[00:08:27] Speaker 04:
The second is they imposed a press fit or push-through limitation that's nowhere in the claims.

[00:08:34] Speaker 04:
And third, they basically relied on their own expertise in making factual conclusions that were not supported by anything in the record.

[00:08:41] Speaker 04:
So with respect to the KSR analysis, as you know, KSR says we should give an expansive and flexible approach to considering prior art.

[00:08:48] Speaker 04:
Here, the board actually acknowledged that the posa, in this instance, would be highly skilled.

[00:08:53] Speaker 02:
Council, we know what a posa is, but it would be helpful to speak English.

[00:08:58] Speaker 02:
A person of ordinary skill in the art.

[00:09:01] Speaker 04:
Yes, your honor.

[00:09:01] Speaker 04:
Sorry about that.

[00:09:03] Speaker 04:
In this instance, would be somebody with electrical engineering degree or equivalent, experience in lighted artificial tree manufacturing design.

[00:09:11] Speaker 04:
So very skilled.

[00:09:12] Speaker 04:
And the problem here being addressed is

[00:09:15] Speaker 04:
relatively simple, how to stick tubular-shaped components inside other tubular-shaped components.

[00:09:20] Speaker 04:
Polygroup's expert here said there's only a finite number of ways of doing it.

[00:09:25] Speaker 04:
Glue, staples, you name it, among them are tapered or multi-diameter connectors, very well known in the ARC.

[00:09:33] Speaker 04:
There was really no dispute as to that.

[00:09:37] Speaker 04:
But the board here conducts its own analysis of the prior art.

[00:09:40] Speaker 04:
And it's really interesting if you look at the analysis section of the board's conclusion, which is JA Joint Appendix 22 through 32, there are only two places where they cite to any evidence from Willis with respect to two minor points.

[00:09:54] Speaker 04:
They just consider the evidence and reject it over and over.

[00:09:56] Speaker 04:
And here, they apply a distinction between tapered electrical connectors inside tubes

[00:10:04] Speaker 04:
as opposed to tapered connectors between tubes.

[00:10:08] Speaker 04:
A very close distinction that they don't explain, and they cite no evidence to support that.

[00:10:14] Speaker 04:
So because they've identified no evidence to support that, that's inadequate under this Court's decisions in NRAE NUVASIV.

[00:10:21] Speaker 04:
In addition, Your Honor, to the second error I mentioned before was this press fit or push through limitation.

[00:10:27] Speaker 04:
A lot of their discussion is how the connectors need to be

[00:10:32] Speaker 04:
have a press fit so they can prevent it from being pushed through the connector.

[00:10:36] Speaker 04:
There's nowhere in the claims any requirement like that, in fact, to the contrary.

[00:10:40] Speaker 04:
Independent claims 1 and 25 merely require that the connector be engaging with the trunk walls.

[00:10:46] Speaker 04:
And in fact, that word was added during prosecution to eliminate, secure.

[00:10:51] Speaker 04:
And then independent claim 11, it only says it needs to be housed within.

[00:10:54] Speaker 04:
So there's no requirement of a

[00:10:58] Speaker 04:
Press-fit or a push-through requirement, but the board applied that requirement in rejecting the prior art And that was exactly what this court faulted in the Belden versus Burtek case which is cited in our papers where the board there also applied to construct apply the limitation of the claim that didn't exist and Use that to reject the priority Okay, you're into your rebuttal.

[00:11:18] Speaker 04:
So why don't we hear from the other side if I may I'll just sure one more I'll be quick the third the third

[00:11:25] Speaker 04:
argument was that the board relied on its own expertise, like I mentioned before, to evaluate the evidence.

[00:11:31] Speaker 04:
And as I mentioned before, the fact that I'm saying I mentioned it before means I've already said it.

[00:11:38] Speaker 04:
So I will reserve the rest of my time.

[00:11:40] Speaker 04:
Thank you.

[00:11:48] Speaker 00:
I'm Marina Alton, and I'd like to also extend my apology for not bringing up the related case.

[00:11:55] Speaker 00:
It was, I think, an oversight.

[00:11:56] Speaker 00:
We understood that we had designated them related and didn't understand we should have filed something else.

[00:12:01] Speaker 03:
And those prior cases resolved the tree portion and Miller alone, right?

[00:12:05] Speaker 00:
I hope I can prevail upon you to argue against at least one of those concepts, Your Honor, and that is that the primary arguments that are made in a petition vary petition by petition.

[00:12:18] Speaker 00:
And so I think that because this is a different petition, the court would have to do an independent analysis as to whether or not Miller alone was a primary argument that was raised.

[00:12:31] Speaker 03:
does exactly the same thing the petition in the other case did in arguing not along and tell me if there's a difference because I didn't see one.

[00:12:39] Speaker 00:
All right.

[00:12:40] Speaker 00:
I will tell you if there's a difference, your honor.

[00:12:42] Speaker 00:
Thank you for the invitation.

[00:12:44] Speaker 00:
I'll just go through a couple exemplary elements.

[00:12:49] Speaker 00:
The first difference that I would point to is, for example, at appendix 194.

[00:12:54] Speaker 00:
And I won't walk you through each of the elements.

[00:12:56] Speaker 00:
But the claim language states the first end portion having an outside diameter greater than the outside diameter of the second end portion.

[00:13:05] Speaker 00:
And this just sort of refers to that Miller had conventional plug socket connectors and they include first and second end portions without claiming that they meet the diameter limitations.

[00:13:17] Speaker 00:
And if you look at the incorporated material, it also doesn't reflect any argument related to the diameter limitations.

[00:13:24] Speaker 00:
And my recollection from the prior case is that each of the independent elements that was argued, there was at least an argument or a structure identified in Miller that met each of the claim limitations, whereas I think here, that's not an accurate depiction of- It says Miller's conventional plug socket connectors include a first, second, and fourth shape, and then refers cross-references to other things.

[00:13:47] Speaker 03:
It simply says to the extent Patent Owner may allege Miller does not teach a connector as claimed, blah, blah, blah, they go on.

[00:13:54] Speaker 03:
So they're arguing Miller alone there.

[00:13:57] Speaker 00:
But they don't point to anything for the change in diameter, is my point, Your Honor.

[00:14:02] Speaker 00:
And additionally, with respect to the thank you for allowing me to prevail upon you with my argument, I can see how it's going.

[00:14:08] Speaker 00:
But also with respect to the dependent claims, the parenthetical where they indicate what they're, so for example, at appendix 206, what they're incorporating by reference, they say that they're explaining the Yang Miller Patry is what they're incorporating, which I think means that this is a primary argument.

[00:14:27] Speaker 00:
And just to add one point, leaving that behind,

[00:14:32] Speaker 03:
Suppose we reject your arguments that they didn't argue Miller alone properly here.

[00:14:38] Speaker 03:
And we find that they argued it just the way they did in the other cases.

[00:14:41] Speaker 03:
And so the tree portion construction is resolved based on the earlier cases.

[00:14:48] Speaker 03:
Miller alone is resolved based on the earlier cases.

[00:14:51] Speaker 03:
Where does that leave us?

[00:14:53] Speaker 03:
We have the trunk connector issue.

[00:14:56] Speaker 03:
Is that the only issue that's left?

[00:15:00] Speaker 00:
Um, there's the trunk connector issue and then I also, so he listed a number of claims, I think also claim five, which relates to a modular wiring assembly.

[00:15:11] Speaker 00:
Um, that's on appendix 229 to 235.

[00:15:16] Speaker 01:
So is that different from the argument your friend made that the one remaining issue is the combination of the, are you saying there's another issue that has to be addressed here?

[00:15:27] Speaker 00:
Well, you have to – we have to address their argument on motivation to combine, I suppose, to affirm that.

[00:15:34] Speaker 00:
I was simply identifying the scope, I think, of the claims that would not be subject to remand based on Miller alone, which is what I thought the question was.

[00:15:40] Speaker 00:
I may have misused it.

[00:15:41] Speaker 01:
Okay, I'm sorry.

[00:15:42] Speaker 01:
No, go ahead.

[00:15:43] Speaker 01:
So you're going to identify claims, but if they wouldn't be subject to Miller alone, would they be covered by a reversal or vacate of the board's determination that there was no motivation to combine the other references?

[00:15:57] Speaker 00:
I don't believe so.

[00:15:59] Speaker 00:
There are three independent rationales that the PTAB articulated in preserving the validity of the claims.

[00:16:07] Speaker 00:
I believe if those failed, we would still be remanded as to them to consider whether or not the asserted elements actually do meet those limitations.

[00:16:18] Speaker 01:
I'm confused.

[00:16:19] Speaker 01:
I'm sorry.

[00:16:20] Speaker 01:
I may have cut you off, and I apologize.

[00:16:21] Speaker 01:
Maybe it's my fault, but I don't know where or what.

[00:16:24] Speaker 00:
I doubt that, Your Honor.

[00:16:26] Speaker 03:
But let's assume we treat portions governed by the earlier cases.

[00:16:32] Speaker 03:
Miller alone is governed by the earlier cases.

[00:16:34] Speaker 03:
And for the moment, hypothetically, we reject your argument about the Trump connector clients.

[00:16:40] Speaker 03:
What's left that we have to decide?

[00:16:46] Speaker 00:
I may still be misunderstanding, but I think just the motivation to combine arguments that they've raised.

[00:16:52] Speaker 03:
Motivation to combine with respect to the trunk connector or other motivation?

[00:16:57] Speaker 00:
With respect to the trunk connector.

[00:16:59] Speaker 00:
So Miller, Yang, Patrick combination.

[00:17:03] Speaker 03:
I'm saying we find that the board was wrong about rejecting a motivation to combine on the trunk connector point.

[00:17:13] Speaker 03:
What's left?

[00:17:13] Speaker 03:
Is there anything left then?

[00:17:16] Speaker 00:
other than the Miller alone ground?

[00:17:20] Speaker 00:
Nothing, Your Honor.

[00:17:22] Speaker 01:
So the Miller alone is an alternative to the no motivation.

[00:17:26] Speaker 01:
So if we were to conclude there was a motivation, then there's nothing left of Miller alone, right?

[00:17:31] Speaker 01:
Because this is an alternative.

[00:17:33] Speaker 00:
We did have some, we had some other arguments that weren't reached on claim construction related to I think lighted artificial tree and the meaning of joined.

[00:17:43] Speaker 00:
So I'm not sure that

[00:17:46] Speaker 00:
Unless there were additional arguments made to the PTAB that were not reached on claim construction that I think would still potentially preserve the validity of the claims.

[00:17:55] Speaker 00:
I'm not sure if I'm answering your hypothetical question, and I apologize for that.

[00:17:58] Speaker 01:
Is that going to be the case with respect to the other cases we were talking about our precedent here, the cases we decided before this?

[00:18:07] Speaker 00:
Is claim construction?

[00:18:08] Speaker 01:
Are those cases going back to the board?

[00:18:10] Speaker 00:
Yes, they were remanded.

[00:18:12] Speaker 01:
Is it claim destruction, you think?

[00:18:15] Speaker 00:
There are claim construction issues on the Miller alone ground, yes.

[00:18:21] Speaker 01:
But not on the motivation to combine the three references.

[00:18:26] Speaker 01:
So if we were to flip the board here on that one question, motivation on the three references, does that obviate the need to send it back for anything?

[00:18:41] Speaker 00:
No, because I think there are still then claim construction issues.

[00:18:48] Speaker 00:
Yes.

[00:18:50] Speaker 01:
Sorry.

[00:18:52] Speaker 01:
I understand.

[00:18:54] Speaker 00:
It's difficult to follow the hypothetical from my position.

[00:18:56] Speaker 03:
I'm sorry.

[00:18:57] Speaker 03:
I hate to keep beating a dead horse, but some of this confusion would have been avoided if you bothered both of you to submit 28 J letters telling us what the effect of the earlier pieces was here.

[00:19:10] Speaker 03:
So why wasn't the board wrong on the motivation to combine with respect to the trunk connector?

[00:19:15] Speaker 03:
They said, oh well, there's no motivation to combine.

[00:19:18] Speaker 03:
The prior art deals with tapered connections that didn't involve electrical connectors.

[00:19:23] Speaker 03:
But that's a much too cramped a view of KSR, isn't it?

[00:19:27] Speaker 00:
I don't agree, Your Honor.

[00:19:28] Speaker 00:
I think that we articulated in our briefing to the PTAB the distinction between what the problem that the 072 seeks to solve, which is basically hosting electrical connections inside of a tree trunk and enabling them to be securely fastened such that a connection can be made,

[00:19:49] Speaker 00:
versus whether or not you're sticking two tubes together or something like that.

[00:19:55] Speaker 00:
I also note that it's, you know, of course, their burden to show that there is a motivation to combine and all of the evidence that they submitted was carefully examined and rejected by the PTAB.

[00:20:06] Speaker 03:
But it was rejected solely on the grounds that the prior art just involved connecting tubes by paper connections and that somehow the prior art wasn't relevant because it didn't also involve

[00:20:22] Speaker 00:
I disagree with that, Your Honor.

[00:20:24] Speaker 00:
They said that it taught a divergent path and that the types of forces and questions that APOSA is looking at or examining in the course of those references are different than the ones that were being addressed by the 072.

[00:20:38] Speaker 00:
They also addressed materially the difference in whether you have the same problems and concerns related to metal versus plastic components and whether or not

[00:20:50] Speaker 00:
there would be any manufacturing ease that would be accomplished by changing out, you know, one connector for another.

[00:20:59] Speaker 00:
I think that it was a pretty fulsome analysis, three different parts.

[00:21:10] Speaker 00:
With respect to whether or not the board actually relied solely upon its own expertise in reading of the prior art, I'd like to draw the court's attention briefly to the case of Buretnex, Inc., v. Apple, Inc., 665 F, appendix 880.

[00:21:31] Speaker 00:
And that addressed fairly specifically the board's entitlement to rely upon its own review of the asserted references and also upon its understanding of the problems that are being faced by the inventor.

[00:21:45] Speaker 00:
I also want to note that on starting at appendix 3500 through 3506,

[00:21:55] Speaker 00:
There is a lot of argument regarding the differing problems that were involved in connecting two poles versus affixing or securing electrical contacts set within a trunk portion.

[00:22:09] Speaker 00:
So the claim of the appellant has been that there was no argument or evidence submitted that supports the findings and conclusions of the board, but I would contest that.

[00:22:21] Speaker 00:
There was both testimony and argument submitted on those points.

[00:22:28] Speaker 00:
Also with respect to the argument that council raised that

[00:22:41] Speaker 00:
The press fit and push through issues were not appropriately determined by the board.

[00:22:48] Speaker 00:
I would submit that those issues were actually raised by Polygroup itself in its petition.

[00:22:53] Speaker 00:
In its petition, in articulating what structures it was asserting against the patents, they referred to the Miller or the Patreon Yang

[00:23:04] Speaker 00:
combined connector as being one that provides for a compression fit within the trunk portion.

[00:23:12] Speaker 00:
And the board acknowledged that because they're assessing the asserted priority that allows for a compression fit, there is no rationale for differentiating between whether it's engaged or housed or was an interference fit-based connector in footnote 10 of their opinion.

[00:23:29] Speaker 00:
So after Polygroup

[00:23:31] Speaker 00:
at issue, I mean, the implied understanding that the connector should be compressed or somehow fixed within the tube, that was simply adopted by all parties.

[00:23:42] Speaker 00:
We as Willis Electric argued that it related to a securely fit connector in a tree trunk portion, and that was also part of the board opinion.

[00:24:02] Speaker 04:
Your Honors, I'll just make one very quick point.

[00:24:04] Speaker 04:
I disagree that claim five would be, Miller was asserted with respect to claim five.

[00:24:12] Speaker 04:
I'm happy to answer any other questions that you all may have, but I feel like I owe you some time back.

[00:24:16] Speaker 04:
So I'm willing to give it now unless you have questions.

[00:24:18] Speaker 01:
We'll take it.

[00:24:19] Speaker 04:
Thank you.

[00:24:19] Speaker 04:
Thank you, Your Honors.

[00:24:22] Speaker 04:
Case is submitted.

[00:24:23] Speaker 01:
Thank both parties.