[00:00:05] Speaker 00:
We have today five cases.

[00:00:10] Speaker 00:
Four of the cases are scheduled for oral argument.

[00:00:14] Speaker 00:
One of our cases, 18-2268, has been decided on the briefs.

[00:00:21] Speaker 00:
So we'll move to our first argument, which is Vallejo, North America versus Schaeffler Technologies, 18-1196.

[00:00:30] Speaker 00:
Counselor Matson?

[00:00:32] Speaker 01:
Yes, Your Honor.

[00:00:32] Speaker 00:
Did I pronounce your name correctly?

[00:00:35] Speaker 00:
Is it Matson?

[00:00:36] Speaker 01:
Matson, yes.

[00:00:37] Speaker 00:
Okay, and you're reserving three minutes of your time for rebuttal?

[00:00:40] Speaker 01:
Three minutes for rebuttal.

[00:00:42] Speaker 00:
Okay, and Mr. Oliver, you're reserving three minutes of time for your cross-claim, is that correct?

[00:00:51] Speaker 00:
Yes, Your Honor.

[00:00:52] Speaker 00:
Okay, all right, you may proceed.

[00:00:53] Speaker 01:
Thank you, Your Honor.

[00:00:54] Speaker 01:
May it please the Court.

[00:00:56] Speaker 01:
The sole question raised by Valeo's appeal is whether the Board erred in finding that substitute claims 19 and 25 yielded unexpected results.

[00:01:06] Speaker 01:
The board's conclusion was wrong first, as a matter of law, because there was no comparative testing between the closest prior art and the claim subject matter.

[00:01:15] Speaker 01:
And second, because there's no substantial evidence to support a conclusion of unexpectedness.

[00:01:20] Speaker 01:
What the board did is they relied on- Why is the first a question of law?

[00:01:24] Speaker 04:
When the board decides what's the closest prior art, isn't that still a factual question?

[00:01:31] Speaker 01:
That is a factual question, Your Honor, but here there is no comparative testing with the prior art that the board identified as closest or any other prior art.

[00:01:41] Speaker 04:
Well, I thought the board identified the prior art that said the even tuning was the closest prior art, and the unexpected results here were that the prior arch said overtuning would lead to bad results and it actually led to good results.

[00:01:59] Speaker 01:
Right.

[00:01:59] Speaker 01:
So what the board identified was the Soudal and Holler references as the closest prior art.

[00:02:04] Speaker 01:
And there was no testing of those prior art absorbers.

[00:02:08] Speaker 01:
We're talking about vibration absorbers.

[00:02:09] Speaker 01:
There was no testing of those absorbers at even tuning or any other tuning.

[00:02:13] Speaker 01:
And this is important because Schaeffler's own expert, Dr. Parker, said that a pendulum absorber's performance depends on the type of vibration absorber.

[00:02:25] Speaker 01:
So what Schaeffler did is they made up a vibration absorber

[00:02:28] Speaker 01:
gave the results to Dr. Parker, their expert, and that's what he had to work with.

[00:02:33] Speaker 01:
And he couldn't explain during his deposition how Pseudal or any of the other prior art would work because Pseudal has a different type of absorber.

[00:02:42] Speaker 00:
Did Pseudal disclose even tuning?

[00:02:46] Speaker 01:
Pseudal doesn't say what tuning is used.

[00:02:48] Speaker 01:
Pseudal says what you do is you match the absorber to the order of excitation.

[00:02:54] Speaker 01:
So what one of ordinary skill and the art would have understood is you need to match the natural frequency of the absorber to the order of excitation.

[00:03:02] Speaker 00:
But it does not disclose even to you.

[00:03:05] Speaker 01:
That's correct.

[00:03:08] Speaker 01:
And this is black letter law.

[00:03:09] Speaker 01:
Getting back to your question, Judge Hughes, about the matter of law, even if Schaeffler had or that the board had identified the right prior art,

[00:03:19] Speaker 04:
Results must be shown to be unexpected compared to the closest prior art and here that step of the analysis wasn't even performed and there's no evidence that well, I take it your position is the air the real air is the board had used the range and echoes to invalidate the original claims and That's what they needed to show unexpected results over That would have been one one

[00:03:46] Speaker 01:
test result that would have provided some probative evidence about what one of ordinary school in the art would have expected?

[00:03:51] Speaker 04:
Isn't that the way this normally works is you have an invalidating piece of prior art and particularly in these range cases and you say this range includes the patented range so it's presumptively invalid but then they can prove unexpected results or all other kinds of things to show

[00:04:14] Speaker 04:
Even though that range was there, the particular point we selected was not.

[00:04:21] Speaker 04:
But the board didn't do that analysis, did it?

[00:04:23] Speaker 04:
It didn't compare Eccles to the overtuning.

[00:04:27] Speaker 04:
At least for the, oddly enough, it did for the patented claims, right?

[00:04:32] Speaker 04:
It didn't do it for the amended proposed amendment.

[00:04:36] Speaker 01:
Well, it didn't do it for either claim.

[00:04:38] Speaker 01:
What they asked, what Shaffer asked the board to do, what the board did is they inferred from the trough that's in the border sweep.

[00:04:45] Speaker 01:
That's where the ideal tuning is.

[00:04:48] Speaker 01:
But the real error, getting back to it.

[00:04:49] Speaker 04:
Maybe I was unclear.

[00:04:50] Speaker 04:
I thought that for its invalidation of the original claim to use the range in Eccles.

[00:04:57] Speaker 01:
Yes, that's correct.

[00:04:58] Speaker 04:
So it just seemed to me odd that when they looked at the proposed amendments, they didn't look at Eccles again.

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

[00:05:05] Speaker 01:
And there was no comparative testing of ECHOLE or any other prior art to give us an idea of what one of ordinary skill in the art would have expected.

[00:05:14] Speaker 01:
What the board did is they took one of ordinary skill in the art and they disadvantaged that person by saying that they would have to guess at what the prior art result was.

[00:05:24] Speaker 01:
And we don't have that prior art result.

[00:05:27] Speaker 01:
And that's the starting point for one of ordinary skill in the art, what they would have expected when you look at what the prior art results are.

[00:05:34] Speaker 01:
Now, even ignoring that failure to compare the results of the closest prior art, whether it's Echol or Holler or Soudal, with the claimed device, an artisan still would have expected that the tuning value could be adjusted to achieve the best possible result for a given absorber.

[00:05:52] Speaker 01:
And there's three points, it's a very intensive record in terms of the number of facts, but there's three points I'd like to make.

[00:05:58] Speaker 01:
First, there's not a single prior art reference that teaches that even tuning is optimal in oil.

[00:06:04] Speaker 01:
All instances in the record, whether it's a declarant or someone's deposition testimony or a reference, whenever even-tuning is best, if you look at the underlying absorber, it's operating in air.

[00:06:17] Speaker 01:
And this is common sense.

[00:06:18] Speaker 01:
Anyone would expect that a moving component like an absorber, a pendulum absorber, would operate differently in oil than in air.

[00:06:26] Speaker 01:
And it's also supported by some of the references.

[00:06:29] Speaker 03:
Let me ask you one question.

[00:06:32] Speaker 03:
On Appendix 103, we have the patent and Figure 1B.

[00:06:39] Speaker 03:
Where, I've been trying to understand, maybe I have it right, maybe I have it wrong, but where is the oil in there?

[00:06:46] Speaker 03:
What chambers, because you reminded me this, you just brought up the point about oil.

[00:06:52] Speaker 01:
Where is the oil?

[00:06:54] Speaker 01:
Right, so this entire chamber, most of it in Figure 1B, is going to be filled up with oil.

[00:07:00] Speaker 01:
So everything

[00:07:02] Speaker 03:
within the most extreme outer line is totally oil?

[00:07:09] Speaker 01:
I believe that that's correct.

[00:07:11] Speaker 03:
Not just what's in six.

[00:07:13] Speaker 01:
That's right.

[00:07:14] Speaker 01:
That's the actual torque converter component, what they call the hydrodynamic component.

[00:07:19] Speaker 03:
OK.

[00:07:19] Speaker 03:
So you're saying oil is all throughout the... Yes, Your Honor.

[00:07:24] Speaker 03:
One other question.

[00:07:24] Speaker 03:
What is the difference precisely?

[00:07:28] Speaker 03:
We have these terms linear and nonlinear system.

[00:07:32] Speaker 03:
OK?

[00:07:32] Speaker 03:
What's the difference between those systems?

[00:07:36] Speaker 01:
So the curvature of the swing paths of the pendulum assumes that sine theta equals theta, if you want to get mathematical.

[00:07:50] Speaker 01:
And for small swing angles, that's correct.

[00:07:53] Speaker 01:
But when the vibration is to get larger and this pendulum is swinging farther and farther back and forth, that starts to break down.

[00:08:00] Speaker 01:
And then you get nonlinearities.

[00:08:02] Speaker 01:
And there's a different set of prior art, in particular the Nestor reference, and we're not appealing the board's decision on Nestor, where you over-tuned, in that case, 2.15 to account for the non-linearities.

[00:08:15] Speaker 03:
But does this, what's claimed in the patent, does that involve a system that's linear or non-linear?

[00:08:22] Speaker 03:
Or am I just misunderstanding what you just said?

[00:08:25] Speaker 03:
Don't hesitate to say if I am.

[00:08:28] Speaker 01:
So this is a point that we raised before the board.

[00:08:33] Speaker 01:
We said the claim covers both linear and nonlinear systems because there's no claim limitation that limits this.

[00:08:40] Speaker 03:
What would make a system, though, a device linear as opposed to nonlinear?

[00:08:45] Speaker 01:
Just the amplitude of the vibrations.

[00:08:49] Speaker ?:
OK.

[00:08:52] Speaker 01:
The other point, or one of the other points I wanted to make was that one of ordinary skill in the art understands the implications of tuning

[00:09:02] Speaker 01:
if vibrations are made worse.

[00:09:04] Speaker 01:
Schaeffler's expert, Dr. Parker, again admitted that if you add an absorber to a system and it actually makes the vibrations worse, Dr. Parker admitted that one explanation that would occur to one of ordinary skill in the art is that tuning is not optimal.

[00:09:20] Speaker 01:
Thus, even based on Schaeffler's test device, which isn't representative of the prior art, an artisan still would have recognized that even tuning is not best in oil.

[00:09:30] Speaker 01:
And third,

[00:09:31] Speaker 01:
Tuning by its very nature assumes that the tuning parameter can be optimized so that you can get the best result.

[00:09:38] Speaker 01:
So one of ordinary skill in the art wouldn't have just been stuck at even tuning.

[00:09:42] Speaker 01:
Indeed, the tuning parameter is the one result effective variable that you can change to optimize the results.

[00:09:48] Speaker 01:
And this is even a special case, because you can calculate what the optimum amount of absorption is.

[00:09:55] Speaker 01:
This is Dr. Parker's formula in the appendix set 2495,

[00:10:00] Speaker 01:
So this isn't just a predictable art.

[00:10:03] Speaker 01:
The optimum result obtainable is calculable.

[00:10:07] Speaker 01:
And an artist who would know to keep adjusting the tuning, this is the trial and error that our expert, Dr. Shaw and Ms.

[00:10:15] Speaker 01:
Sullivan talked about in some of the papers, trial and error process that you adjust the tuning until you get the optimum result.

[00:10:22] Speaker 01:
The board also found, in considering level of skill in the art,

[00:10:28] Speaker 01:
an artisan would have an understanding of the influences on a pendulum absorber in different operating environments.

[00:10:36] Speaker 01:
So what the board did, getting back to Judge Hughes' original question, I think, is the board was focused on the wrong expectation and required an artisan to guess how an absorber would operate an oil instead of actually having the results from the prior art.

[00:10:53] Speaker 01:
For example, Pseudal, where there's actually an absorber operating an oil.

[00:10:58] Speaker 01:
artisan would have that result from the prior art.

[00:11:01] Speaker 01:
And that's what they should have been focused on.

[00:11:03] Speaker 00:
This is similar to the... Well, the board did make a finding that Posito would not have been expected to make a different type of tuning for an oil environment, right?

[00:11:14] Speaker 00:
That's a finding that the board made.

[00:11:16] Speaker 01:
Right, and that finding misses the point because it's not based on what the prior art actually is.

[00:11:22] Speaker 01:
Eckel, Sudow, and Holler, the board didn't look at what the results of those

[00:11:27] Speaker 01:
references or those absorbers yielded.

[00:11:30] Speaker 01:
Did any of those prior references have test results?

[00:11:35] Speaker 01:
They do not, Your Honor.

[00:11:37] Speaker 01:
The speckert reference is interesting because it even mentions the trial and error process of tuning and says you can also use computer simulation to adjust the tuning and it has a tuning range of plus or minus 0.15 percent.

[00:11:52] Speaker 01:
But this is similar to the Pfizer case where the

[00:11:55] Speaker 01:
This court reversed a district court because the court should have considered the results obtained from the prior art and didn't.

[00:12:04] Speaker 01:
And here, what the board should have been focused on was the expectation of whether adjusting the tuning value would achieve the maximum absorption capacity.

[00:12:14] Speaker 01:
That's what one of ordinary skill in the art would have been considering, and that's the basis for which, the analytic basis for which the expectation should have been viewed.

[00:12:25] Speaker 00:
You're close to your rebuttal time.

[00:12:27] Speaker 00:
Do you want to stop here?

[00:12:29] Speaker 01:
I will stop here, Your Honor.

[00:12:30] Speaker 01:
Thank you.

[00:12:30] Speaker 00:
Thank you.

[00:12:35] Speaker 00:
Mr. Oliver, you have 12 minutes.

[00:12:45] Speaker 02:
Good morning.

[00:12:45] Speaker 02:
May it please the court?

[00:12:47] Speaker 02:
Before responding to Vallejo's appeal arguments, I'd like to address what we believe to be the most important and straightforward legal issue in this case, specifically in the cross-appeal.

[00:12:56] Speaker 02:
Specifically, the board's finding of lack of commensurateness with respect to substitute claim 14.

[00:13:01] Speaker 00:
You're addressing your cross appeal now?

[00:13:02] Speaker 00:
Yes.

[00:13:03] Speaker 00:
I thought you were reserving your three minutes to do that.

[00:13:06] Speaker 02:
Oh, I was reserving three minutes to rebut any arguments made concerning the cross appeal.

[00:13:13] Speaker 02:
Specifically, the board's finding of lack of commensurateness with respect to substitute claim 14 presents a clear legal error.

[00:13:19] Speaker 02:
First, the board's stated basis for finding lack of commensurateness

[00:13:23] Speaker 02:
relates to an alleged failure to recite the environment in which unexpected results were demonstrated.

[00:13:29] Speaker 02:
However, both the CCPA and the Federal Circuit case law have previously cautioned the board that such is not a proper legal standard.

[00:13:38] Speaker 02:
Second, the board raised this requirement for the first time in the final written decision, thus depriving Schaeffler of the opportunity to respond to that legal error.

[00:13:47] Speaker 02:
In particular, in addressing unexpected results, the board found a lack of commensurateness because substitute claim 14 does not recite the excitation order of the engine in which the unexpected results were found.

[00:14:02] Speaker 02:
The invention itself is a torque converter or a force transmission device in the form of a torque converter.

[00:14:08] Speaker 02:
Torque converters are used in various types of engines.

[00:14:11] Speaker 02:
It could be a two cylinder engine or a three cylinder engine or a 12 cylinder engine.

[00:14:16] Speaker 02:
But the engine itself is the environment in which the invention works.

[00:14:21] Speaker 02:
It is the environment in which the unexpected results are demonstrated.

[00:14:24] Speaker 02:
Established case law, including Inri Chupp and Inri Ackerman said in our brief, specifically hold that it is not necessary to recite the operating environment in which unexpected results are demonstrated for the proper finding of commensurateness.

[00:14:39] Speaker 02:
For this reason, we believe the board's decision concerning substitute claim 14

[00:14:44] Speaker 02:
and the claims that depend there from should be reversed or at the very least remanded for a proper consideration of the legal issue of commensurates.

[00:14:52] Speaker 00:
So your argument is that Valeo before the board never argued or based an argument based on the claim queue ranges?

[00:15:04] Speaker 02:
Correct.

[00:15:05] Speaker 02:
Valeo made a commensurateness argument, but it was with respect to small swing angles.

[00:15:11] Speaker 02:
The swinging of the pendulum.

[00:15:13] Speaker 04:
But if you're arguing for unexpected results, it's not their burden to demonstrate the lack of unexpected results.

[00:15:22] Speaker 04:
It's your burden to demonstrate unexpected results.

[00:15:26] Speaker 02:
It's our burden.

[00:15:27] Speaker 04:
So the fact that they didn't make a specific argument rebutting that doesn't mean that the board can't make its own determination that you haven't met your burden of production.

[00:15:36] Speaker 02:
We're not arguing that on a issue of burden of production specifically.

[00:15:40] Speaker 02:
We're arguing that on a notice issue concerning the Administrative Procedures Act.

[00:15:44] Speaker 02:
Specifically, the idea that the excitation order should have been recited in substitute claim 14 was raised for the first time in the final written decision.

[00:15:53] Speaker 02:
So we were afforded no opportunity to respond to that argument.

[00:15:56] Speaker 02:
So our concern with the idea that Vallejo never raised the idea of the rest of it.

[00:16:02] Speaker 04:
Whether they raise it or not seems completely irrelevant because

[00:16:05] Speaker 04:
They could say nothing, and you could still lose because you didn't meet your burden of production.

[00:16:11] Speaker 02:
I understand that, Your Honor.

[00:16:12] Speaker 02:
What the argument we're trying to make is because this issue was first raised in the final written decision, we had no opportunity to inform the board that their legal analysis concerning commensurateness was incorrect.

[00:16:22] Speaker 02:
Our argument is their finding in the final written decision that you would have had to recite the excitation order, which is the environment in which the invention works, in the claim,

[00:16:34] Speaker 02:
is contrary to case law concerning Henry Chubb and Henry Ackerman.

[00:16:38] Speaker 02:
We didn't raise that because it's not a legal requirement for us to recite the environment to establish commensurances.

[00:16:44] Speaker 04:
The fact that the board required that or made their decision based on that in the final written decision is a- I'm not sure why you're arguing that as an APA problem rather than just as legal error by the board to do that on the merits.

[00:16:57] Speaker 02:
We're arguing both, Your Honor, primarily that it was a legal error.

[00:17:01] Speaker 02:
But it was a legal error to which we did not have an opportunity to respond.

[00:17:05] Speaker 02:
Had the board raised this or Vallejo raised this, we would have actually been able to point out and reach out for Henry Ackerman and say, you got the law wrong.

[00:17:12] Speaker 02:
But we're not afforded an opportunity to do so.

[00:17:14] Speaker 04:
That's the only thing.

[00:17:16] Speaker 04:
I understand where you are on this.

[00:17:18] Speaker 04:
Can you address their appeal?

[00:17:20] Speaker 04:
I baffled why the board used the range in Eccles as an invalidating source for overtuning of the original claims and then didn't look to that

[00:17:31] Speaker 04:
as the prior art for the proposed amendments?

[00:17:35] Speaker 02:
Certainly, Your Honor.

[00:17:37] Speaker 02:
There's a few reasons for that.

[00:17:38] Speaker 02:
First and foremost, for the original claims, the board made a finding specifically at pages 12 and 13 of the decision that the recitation of an oil influence in the original claims was not limited to the rotating oil of a torque converter.

[00:17:52] Speaker 02:
Substitute claim 14 and the claims that depend from there from, including claim 19, actually recites a torque converter with rotating oil.

[00:18:01] Speaker 02:
Eccl does not disclose a torque converter or rotating oil.

[00:18:05] Speaker 02:
This can be actually found in the record.

[00:18:16] Speaker 04:
Sure, but that's not what I'm concerned about, about whether it discloses oil or not.

[00:18:22] Speaker 04:
It seems to me that what the board found was it looked to a different reference and said the reference

[00:18:28] Speaker 04:
The prior art discloses even tuning, is that the right term?

[00:18:32] Speaker 04:
Correct.

[00:18:34] Speaker 04:
And you have unexpected results because you do overturning.

[00:18:38] Speaker 04:
And it looked at a reference other than Eccles.

[00:18:41] Speaker 04:
And so even if Eccles doesn't deal with oil, it does deal with overtuning, doesn't it?

[00:18:46] Speaker 04:
It has a range that includes overtuning, and it at least references that it can be used with lubricants.

[00:18:52] Speaker 04:
Why didn't the board look at Eccles for overtuning?

[00:18:56] Speaker 02:
Certainly, Your Honor.

[00:18:57] Speaker 02:
The critical issue was what would have been expected at the time.

[00:19:00] Speaker 02:
A person who wanted to go in the art would have expected even tuning to work best.

[00:19:03] Speaker 02:
And we can basically break down the references into two categories.

[00:19:06] Speaker 04:
So are you saying the original claims, none of them were confined to oil.

[00:19:13] Speaker 04:
And so Eccles was OK for the range there.

[00:19:15] Speaker 04:
But your proposed amendment specifically confined it to an oil atmosphere.

[00:19:21] Speaker 04:
And therefore, Eccles wasn't good enough.

[00:19:24] Speaker 02:
Yes, specifically rotating oil.

[00:19:27] Speaker 02:
The argument was made that the recitation of oil influence in original claim one was rotating.

[00:19:33] Speaker 04:
Where does the board explain that's why it's not using Eccles?

[00:19:36] Speaker 02:
Well, it explains why it is not adopting that understanding of oil influence at pages 12 and 13 of the decision.

[00:19:44] Speaker 02:
It finds that the oil influence in claim one is not limited to rotating oil.

[00:19:49] Speaker 02:
However, substitute claim 14 does recite rotating oil and does recite a torque converter.

[00:19:55] Speaker 02:
Eccle does not describe a torque converter.

[00:19:58] Speaker 04:
So can you just answer my question specifically?

[00:20:02] Speaker 04:
Sure.

[00:20:03] Speaker 04:
I know you're reciting generally to that.

[00:20:05] Speaker 04:
In this discussion, do they explain this is why we're not looking to Eccles?

[00:20:09] Speaker 02:
No, but I would direct your attention to that and specifically to bear with me for one moment, Your Honor.

[00:20:44] Speaker 02:
I'll find a say, Your Honor.

[00:20:46] Speaker 04:
I mean, it just seems an odd way of doing things to me.

[00:20:48] Speaker 04:
When we have these range cases and somebody proposes unexpected results for something in the range, you always look back to that prior range and say why the unexpected results, even though falling within the range, are still unexpected.

[00:21:04] Speaker 04:
But the Board didn't do that for your proposed, for the amended claims.

[00:21:08] Speaker 02:
Well, it was argued below, and let me address that a few ways, Your Honor.

[00:21:12] Speaker 02:
With respect to the substitute claims, it was noted that Eckel did not recite a torque converter with rotating oil.

[00:21:17] Speaker 02:
So either Sudow or Holler were discussed as describing the rotating oil environment.

[00:21:23] Speaker 02:
So that is why I believe they went with Holler instead of Eckel, because there was that additional recitation of rotating oil.

[00:21:28] Speaker 02:
That being said, the references can be described or broken down into two categories.

[00:21:34] Speaker 02:
There are references that talk about the idea of tuning.

[00:21:37] Speaker 02:
And if you look at each of those references, they describe that even tuning works best.

[00:21:41] Speaker 02:
That includes ECCL itself, and I believe.

[00:21:49] Speaker 04:
Sure.

[00:21:49] Speaker 04:
And if the board had said, even though ECCLs discloses its range, it teaches away from overtuning or it prefers even tuning or the like, it would have made more sense.

[00:22:01] Speaker 04:
And at least probably would have been substantial evidence.

[00:22:03] Speaker 04:
But when they completely ignore ECCLs for your amended claims, when they'd use that same precise range,

[00:22:11] Speaker 04:
to invalidate the original plans, it seemed logically inconsistent.

[00:22:18] Speaker 02:
Well, the finding that the board made, and that is in view of Eckel as well, because Eckel suggests that if you want to improve damping, you even tune.

[00:22:26] Speaker 02:
If you look at the Nesta reference or the Speckhardt reference, they all say the same thing.

[00:22:30] Speaker 02:
If you want to improve performance, you even tune or you get closer to even.

[00:22:35] Speaker 02:
Speckhardt even suggests undertune.

[00:22:37] Speaker 02:
So the expectation the board found was looking at the prior art and say the prior art tells us that if we want to improve results, we even tune.

[00:22:47] Speaker 02:
The testing was provided relative to that understanding from prior art.

[00:22:51] Speaker 02:
Whether you pick ECHO, whether you pick another reference, that would have been the expectation at the time that even tuning improves performance.

[00:22:59] Speaker 02:
And that was true except when you're operating in rotating oil.

[00:23:04] Speaker 02:
Claim 14 recites the overtuning

[00:23:07] Speaker 02:
operating and rotating oil.

[00:23:08] Speaker 02:
And it was unexpectedly found that in that invention, in that torque converter with rotating oil, overtuning improved performance rather than degraded performance.

[00:23:20] Speaker 02:
And what was understood in the prior art was one thing.

[00:23:22] Speaker 02:
Even tuning worked best.

[00:23:24] Speaker 02:
You could slightly overtune, but that would degrade performance, but extend the operating range of the device.

[00:23:32] Speaker 02:
What happened in the rotating oil environment claimed is the exact opposite.

[00:23:36] Speaker 02:
overtuning improved performance, but actually reduced the operating range.

[00:23:42] Speaker 02:
And that is the distinction that was found as the closest prior art, including ECHO, which doesn't describe a torque converter, said that if you move closer to even tuning, you will get improved damping results.

[00:23:55] Speaker 02:
And I believe that's at 909 of the appendix.

[00:24:00] Speaker 02:
That was the factual finding that the board made, that the expectation at the time

[00:24:05] Speaker 02:
Whether you pick echo, whether you pick holler, the expectation was the same, is that overtuning would degrade performance.

[00:24:12] Speaker 02:
And what was shown by the test results is that in the claimed test range, overtuning improved performance.

[00:24:20] Speaker 02:
And that was what was unexpected.

[00:24:22] Speaker 02:
And what the board is doing is making a determination of would the person of ordinary skill in the art have expected this result?

[00:24:29] Speaker 02:
And the answer was no.

[00:24:30] Speaker 02:
And we believe that answer would have been the same, regardless of what

[00:24:33] Speaker 02:
particular piece of priorities chosen.

[00:24:36] Speaker 02:
And I note, considering the Henry Holliday case, that the applicant may choose what reference and the board may choose what reference.

[00:24:43] Speaker 02:
That Vallejo doesn't agree with what the closest reference is goes to the problem here that no reference is particularly close.

[00:24:51] Speaker 02:
You either have references that talk about rotating oil, such as Holler, but they don't say anything about tuning.

[00:24:57] Speaker 02:
Or you have references that talk about tuning, including Nestor, Speckhardt, and Eckel.

[00:25:02] Speaker 02:
And they all say that if you even tune, it works best.

[00:25:05] Speaker 02:
And that was wrong.

[00:25:07] Speaker 00:
OK.

[00:25:07] Speaker 00:
You're in your rebuttal time right now.

[00:25:09] Speaker 00:
Thank you, Your Honor.

[00:25:18] Speaker 00:
You've got a little bit over three minutes, Mr. Matson, if you need the time.

[00:25:23] Speaker 01:
Thank you, Your Honor.

[00:25:25] Speaker 01:
The first point I'd like to make is about ECCL.

[00:25:28] Speaker 01:
And the board did find that ECCL's range

[00:25:32] Speaker 01:
overlapped with the ranges in the substitute claims.

[00:25:35] Speaker 01:
Where the analysis breaks down is, again, with comparing the closest prior art.

[00:25:40] Speaker 01:
And there's no comparison of Eccles' results.

[00:25:44] Speaker 01:
In this case, perhaps the most probative evidence of what one of ordinary skill in the art would have expected would have been what Eccles' results were, which we don't have.

[00:25:54] Speaker 01:
And again, whenever the board or Schaeffler says that even tuning is working best,

[00:26:01] Speaker 01:
that's always in the context of error, and it ignores the tuning ranges in Echol.

[00:26:09] Speaker 01:
On the issue of commensurateness, I think the DuPont-Vies and Vinnet case that we cited that came out after briefing was complete, resolves this issue about the burden.

[00:26:22] Speaker 01:
In Schaeffler's brief, they talk about a production, a burden of production shifting back

[00:26:27] Speaker 01:
or to the petitioner, but that's not the case.

[00:26:30] Speaker 01:
The burden of production is always on the patent that are trying to show unexpected results.

[00:26:36] Speaker 01:
And what they have to do is show that the range is a critical range.

[00:26:41] Speaker 01:
And here, the board found, and the board's interpretation of the test results is not even contested, the board found that for any excitation order, the ranges covered results that were no better than or worse than the prior art.

[00:26:56] Speaker 01:
And the patent itself only discloses a single embodiment, which is a four-cylinder engine which gives excitation order two.

[00:27:03] Speaker 01:
And all of the ranges in the patent are in the context of a four-cylinder engine with second-order excitation.

[00:27:11] Speaker 01:
And there has been no criticality established for any of those ranges, given that they cover situations where the results are worse.

[00:27:20] Speaker 01:
The in-rate CHUP case is distinguishable because their

[00:27:24] Speaker 01:
the compound always provided superior results for corn and soybeans.

[00:27:29] Speaker 01:
Here, as I just mentioned, you've got ranges that give you inferior results for portions of those ranges.

[00:27:39] Speaker 01:
The Henry Johnson case, I think, discusses holiday and says that holiday doesn't stand for the proposition that the patent owner only has to test one reference.

[00:27:50] Speaker 01:
That's not the way it works, and there,

[00:27:53] Speaker 01:
The applicant tested one reference but not another and the court found there were no unexpected results because there was no evidence that the testing of one reference was representative of how the other reference would have behaved.

[00:28:11] Speaker 01:
In conclusion, if there are no more questions, what Schaeffer is asking is that the court broaden the unexpected results analysis to

[00:28:20] Speaker 01:
include testing and consider testing relevant even if it's a comparison between the invention and a device that here yields the worst possible results, irrespective of whether that device is even representative of the prior art.

[00:28:34] Speaker 01:
This is a major departure from all of the cases that ask whether there was an expectation that adjusting the prior art parameter would improve the results.

[00:28:43] Speaker 01:
In other words, one of ordinary skill in the art

[00:28:45] Speaker 01:
has the results of the prior art.

[00:28:47] Speaker 01:
And then the question is, what would one of ordinary skill in the art expect if the critical parameter was changed?

[00:28:55] Speaker 01:
OK.

[00:28:55] Speaker 01:
Thank you.

[00:28:56] Speaker 01:
Thank you.

[00:29:00] Speaker 00:
Mr. Alder, we have two and a half minutes.

[00:29:04] Speaker 00:
Thank you, Your Honor.

[00:29:07] Speaker 02:
Just with respect to your question, I'd direct you to,

[00:29:10] Speaker 02:
the board's consideration of page 61 of the fact that the newly recited features in substitute claim 14, including the torque converter and rotating oil, were present in SUDAL, but not in ECHO.

[00:29:23] Speaker 04:
How does that relate to your cross appeal?

[00:29:25] Speaker 04:
Well, to our... Aren't you up on rebuttal for your cross appeal?

[00:29:29] Speaker 02:
I was just answering your... That's fine.

[00:29:33] Speaker 04:
I have your answer from your previous argument.

[00:29:36] Speaker 02:
Thank you.

[00:29:37] Speaker 02:
With respect to the cross appeal, Your Honor,

[00:29:39] Speaker 02:
The in-reach-up is informative here.

[00:29:43] Speaker 02:
Vallejo argues that there were test results in the range that did not show unexpected results, but that is not the issue.

[00:29:50] Speaker 02:
In-reach-up states that the invention need not produce superior results in every environment in which the compound may be used.

[00:29:57] Speaker 02:
It goes on to state the expectation that persons would want to use the compound to produce inferior results or would want to fight lawsuits over such use is simply false.

[00:30:07] Speaker 02:
What we have here

[00:30:08] Speaker 02:
in the claim rage is basically a genus.

[00:30:12] Speaker 02:
It is a genus of overtuning amounts that are comprised of a number of species, each species of which shows unexpected results in substitute claim 14.

[00:30:23] Speaker 02:
It happens that the unexpected results happen in various environments.

[00:30:27] Speaker 02:
One species works best in a two-cylinder engine.

[00:30:30] Speaker 02:
Another species works better in a nine-cylinder engine.

[00:30:33] Speaker 02:
But each of those species were demonstrated to have unexpected results.

[00:30:37] Speaker 02:
The burden that the board applied was that we didn't recite the excitation word of the engine.

[00:30:43] Speaker 02:
But that's the environment.

[00:30:45] Speaker 02:
And Henry Chupp says, you don't have to show that it works in every environment.

[00:30:50] Speaker 02:
And it doesn't matter that it might not work in some environments, because no one's going to use an invention where it doesn't work.

[00:30:56] Speaker 00:
So Henry Chupp, that's a pharmaceutical case?

[00:30:59] Speaker 02:
It is not a pharmaceutical.

[00:31:00] Speaker 02:
It's a weed killer.

[00:31:01] Speaker 02:
So it's a chemical case.

[00:31:02] Speaker 02:
It's a compound.

[00:31:03] Speaker 02:
So I would equate Henry Chupp to a species.

[00:31:07] Speaker 02:
And what the board says is you have a species that works well in some environments, but not in others.

[00:31:11] Speaker 02:
But it doesn't matter, because all you need to show is that it works in an environment.

[00:31:16] Speaker 02:
What we have in the present case is a genus with a number of species.

[00:31:20] Speaker 02:
And we have shown that each of those species work in different environments.

[00:31:25] Speaker 02:
And Henry Chupp says we do not need to recite each environment in the claim.

[00:31:30] Speaker 02:
But that is the exact burden or requirement that the board imposed.

[00:31:35] Speaker 02:
And it is contrary to Enri Chopp, as well as Enri Ackerman, which reached the same conclusion in the CCPF.