[00:00:00] Speaker 02:
Case for argument is 18-2125 Willis Electric Company versus Poly Group.

[00:00:07] Speaker 02:
Ms.

[00:00:07] Speaker 02:
Alton, whenever you're ready.

[00:00:11] Speaker 01:
Your Honor, may it please the court?

[00:00:12] Speaker 01:
I'm Marina Alton here on behalf of Willis Electric.

[00:00:16] Speaker 01:
In this case, I'd like to start by briefly discussing the principal claim construction issue that the parties have brought before your attention.

[00:00:26] Speaker 01:
The key issue is whether or not a central, pardon me, a channel void in the female end of an electronic sub-distribution system for a power system requires a separate plastic housing surrounding that void in order to define it.

[00:00:44] Speaker 01:
That is something other than the trunk.

[00:00:47] Speaker 01:
We submitted that because it's a void, it's simply empty space and it doesn't matter if it's surrounded by anything, much less plastic of the connector housing itself.

[00:00:57] Speaker 03:
The real, I guess there are two questions here.

[00:01:02] Speaker 03:
One relates to the patentability of the independent claim, claim one, and dependent claim four, which have been held unpatentable by the board.

[00:01:15] Speaker 03:
And then the question of whether the dependent claims were

[00:01:21] Speaker 03:
Improperly held patent right that's correct.

[00:01:25] Speaker 03:
If we were to Affirm the board with respect to claims one and four claim one being the only independent Doesn't that mean that the starting place for the analysis of the dependent claims has to?

[00:01:42] Speaker 03:
assume that Claim one is unpatentable

[00:01:48] Speaker 01:
That's correct.

[00:01:49] Speaker 01:
I assume that claim one is unpatentable based upon the claim construction entered by the court the only reason to or entered by the p-tab the only reason to evaluate claim construction is all at all is to determine whether or not the additional reference or or description of the plastic connector housing in the

[00:02:09] Speaker 01:
186 face of the patent instead of the provisional application also is an invalidating reference.

[00:02:16] Speaker 03:
What confuses me is that the channel void issue really becomes, that you're arguing, becomes irrelevant if claim one is held to be unpatentable.

[00:02:31] Speaker 03:
Because it's not the dependent claims that include the channel void limitation, it's the independent claim.

[00:02:37] Speaker 01:
That's correct, Your Honor.

[00:02:38] Speaker 01:
In assessing

[00:02:39] Speaker 01:
whether or not the dependent claims are patentable or not, the issue is not claim construction.

[00:02:45] Speaker 01:
The issue is instead whether or not the petition articulated a position or an adequate rationale for pointing to aspects of the face of the 186 patent rather than the provisional patent in

[00:03:01] Speaker 02:
alleging a challenge or making a challenge to those dependent claims can I ask you though just this is just on a housekeeping matter if we were hypothetically to agree with you

[00:03:13] Speaker 02:
Are there still some dependent claims left unresolved that are affected by this auto question, the combination of auto and the police?

[00:03:23] Speaker 02:
No.

[00:03:24] Speaker 02:
So if we were to agree hypothetically with you that at least it needs to be remanded because the board erroneously didn't consider the provisional and the non-provisional Chen, does that take care of everything?

[00:03:42] Speaker 02:
all of the dependent claims here?

[00:03:45] Speaker 01:
Yes, Your Honor.

[00:03:47] Speaker 01:
All of the, well, between McLeish and the Chen-based grounds, all of the claims would be remanded.

[00:03:54] Speaker 02:
OK.

[00:03:54] Speaker 02:
So what was the relevance of the auto reference?

[00:03:59] Speaker 02:
Wasn't that something that was necessary to clean up some of the dependent claims?

[00:04:03] Speaker 02:
Because you're also challenging the board's treatment of that, right?

[00:04:08] Speaker 01:
Well, it's an alternative argument, Your Honor.

[00:04:09] Speaker 02:
OK, so it's an alternative.

[00:04:10] Speaker 01:
Yes.

[00:04:12] Speaker 01:
And with respect to whether or not there should be a remand for the dependent claims based upon the 10 grounds, I would submit that there should be.

[00:04:21] Speaker 02:
So you're not seeking a reversal here.

[00:04:22] Speaker 02:
You're just seeking a remand.

[00:04:24] Speaker 01:
Well, obviously, we requested a reversal.

[00:04:27] Speaker 01:
But you had raised in your question the possibility of a remand.

[00:04:30] Speaker 01:
I think that because the exact same evidence has been cited and held to be invalidating with respect to the same claim terms in the related family, I don't think that there's a reasonable dispute left

[00:04:41] Speaker 01:
to say that the evidence cited in the dependent claim argument section is not invalidating.

[00:04:50] Speaker 01:
The key issue, as you've been referring to, is whether or not we appropriately cited to invalidating evidence in the course of the petition.

[00:04:58] Speaker 01:
I would submit that the analysis performed by the PTAB was unduly formulaic in that regard.

[00:05:07] Speaker 01:
successfully argued that the non-provisional and provisional application references were properly incorporated, meaning that there's simply one reference.

[00:05:18] Speaker 01:
The rationale that the PTAP employed in failing to consider the evidence that was cited in our limitation by limitation analysis

[00:05:24] Speaker 01:
is simply that we cited, instead of to invalidating material in the provisional, also to the 186 patent phase.

[00:05:32] Speaker 02:
So they thought there would have been required a motivation to combine the various embodiments in the two references.

[00:05:41] Speaker 02:
And that wasn't your intent.

[00:05:43] Speaker 02:
Or was it presented as an alternative in your view?

[00:05:47] Speaker 01:
We intended that we would not have to allege motivation to combine because they're incorporated references.

[00:05:54] Speaker 01:
This is one document.

[00:05:55] Speaker 03:
And in fact, you didn't go item by item or limitation by limitation in the dependent claims to

[00:06:02] Speaker 03:
show motivation to combine the particular features you rely solely, if I understand correctly, that chin should have been combined with the provision, right?

[00:06:12] Speaker 01:
No, Your Honor.

[00:06:12] Speaker 01:
I typically practice with multiple levels of

[00:06:16] Speaker 01:
analysis and so that's why the petition actually does articulate a motivation to combine as a catch-all that you would also combine the Chen provisional with the 186.

[00:06:27] Speaker 03:
I don't really think you're responding to what I said.

[00:06:29] Speaker 03:
What I said is it seemed to me you put all your eggs in one basket.

[00:06:34] Speaker 03:
You said there would have been a motivation to combine Chen which has these other

[00:06:42] Speaker 03:
limitations together with the provisional and I guess maybe you've also said something about McLeish and Otto possibly but you didn't I don't see in your expert testimony now maybe I missed it I'd be happy to look at it I don't see any expert testimony you're taking a limitation by limitation approach to dependent claims like the power cord limitation

[00:07:03] Speaker 03:
and saying it would have been obvious to add a power cord to the device that's shown by claim one, for example.

[00:07:14] Speaker 01:
Well, we did allege a separate motivation to combine for, for example, the shutter and for the limitations related to the alignment mechanisms in the tree.

[00:07:23] Speaker 01:
I might be misunderstanding your question.

[00:07:25] Speaker 03:
Where do I find those separate, those discussions in the appendix?

[00:07:30] Speaker 03:
Just give me an example.

[00:07:32] Speaker 03:
Yes.

[00:07:33] Speaker 03:
Because I thought the theory was that Chin showed all these additional limitations of the dependent claims, and that it would have been obvious to combine Chin with the features of claim one.

[00:07:50] Speaker 01:
No.

[00:07:50] Speaker 01:
With respect to the dependent claims, once there is a motivation to combine both Chen and its provisional application, I don't think I have to allege separate motivations.

[00:07:59] Speaker 01:
But we did do so.

[00:08:00] Speaker 03:
Yeah, I understand.

[00:08:01] Speaker 03:
I understand that Chen showed all of the dependent limitations, right?

[00:08:06] Speaker 03:
And that it would have been obvious to combine Chen with the features shown by claim one.

[00:08:13] Speaker 03:
And that renders the dependent claims obvious.

[00:08:15] Speaker 03:
I understand that theory.

[00:08:17] Speaker 03:
I'm just saying, I didn't understand that you went limitation by limitation and said, here's a reason to add the power cord, for example.

[00:08:28] Speaker 03:
And show me if I'm wrong, because I'd like to know.

[00:08:29] Speaker 01:
Legally, I don't think that that is the standard.

[00:08:31] Speaker 01:
But if I can point you to appendix at 87, this is an example of a dependent claim for claim seven.

[00:08:39] Speaker 01:
where the artificial tree of claim one further comprising alignment mechanisms to prevent the first trunk section from rotating.

[00:08:45] Speaker 01:
This is key seven.

[00:08:46] Speaker 01:
Yes.

[00:08:49] Speaker 03:
Okay.

[00:08:49] Speaker 03:
All right.

[00:08:52] Speaker 01:
Yep.

[00:08:53] Speaker 01:
We said that the motivation would be to prevent the first trunk section from rotating with respect to the second trunk section.

[00:09:02] Speaker 03:
Because if after assembly, the tree can still spin, then that would... Did you have expert testimony on this?

[00:09:13] Speaker 01:
Yes, I do believe it's in his declaration.

[00:09:15] Speaker 03:
Whose declaration?

[00:09:20] Speaker 01:
Durfee.

[00:09:23] Speaker 03:
Where do I find that?

[00:09:49] Speaker 01:
Go ahead.

[00:09:52] Speaker 01:
There was a separately identified motivation to combine for this alignment mechanism claim and also for claim five, with respect to McLeish, to add the shuttle.

[00:10:02] Speaker 03:
But not for the others?

[00:10:05] Speaker 01:
Only the general motivation to combine the two references.

[00:10:08] Speaker 01:
That applies to the others.

[00:10:10] Speaker 02:
OK.

[00:10:11] Speaker 02:
I'm a little unclear on this motivation to combine issue at all.

[00:10:17] Speaker 02:
Is your threshold argument that the board correctly read it with regard to its analysis of claim one, but not with respect to the dependent claims, that this provisional was incorporated by reference into the other application?

[00:10:35] Speaker 02:
end of story.

[00:10:36] Speaker 02:
You don't have to show a particular motivation to combine them, the various embodiments and pieces of those two references.

[00:10:43] Speaker 02:
So is that your argument, or am I misunderstanding?

[00:10:46] Speaker 01:
I have a two-pronged argument, and one is that because they're incorporated by reference, you don't have to show a separate motivation to combine because they're not separate embodiments.

[00:10:55] Speaker 01:
And secondarily, that we did articulate an adequate motivation to combine the various aspects of the references.

[00:11:03] Speaker 03:
But only two of them.

[00:11:05] Speaker 03:
You told me a minute ago that there was a separate argument or separate evidence about a motivation to combine two of the dependent claim limitations.

[00:11:18] Speaker 03:
And I thought you agreed that with respect to the others, you have to rest on this incorporation theory.

[00:11:24] Speaker 01:
On Appendix 80.

[00:11:29] Speaker 01:
A post that would find it obvious to combine the disclosures of the provisional application with the 186 because the 186 incorporates the 751 in its entirety.

[00:11:40] Speaker 03:
That's the incorporation argument.

[00:11:43] Speaker 01:
No.

[00:11:44] Speaker 01:
Find it obvious to combine.

[00:11:45] Speaker 01:
The two references are highly related from the same field of art.

[00:11:50] Speaker 03:
That's the incorporation.

[00:11:51] Speaker 03:
You combine chin with the provisional.

[00:11:55] Speaker 01:
No.

[00:11:55] Speaker 01:
This is a motivation to combine argument.

[00:11:59] Speaker 03:
I understand, but it is based entirely on the theory that there would be a motivation to combine Chen with the provisional.

[00:12:07] Speaker 03:
Not that the individual features of the dependent claims would have been added to the features of claim one.

[00:12:18] Speaker 01:
I see what you're saying.

[00:12:19] Speaker 01:
I have an incorporation by reference argument, a general motivation to combine the two references and then the two specific motivations also articulated.

[00:12:46] Speaker 00:
The issues today put on the appeal are what arguments Willis failed to make, and we were just talking about them a moment ago.

[00:12:56] Speaker 02:
Before we get into that, could you just confirm any disagreement with your friends' analysis about this hypothetical, or if we were to do – if we were to agree with the Chen issue, then a vacate of all the claims, that there are no other dependent claims hanging out there for Otto or whatever.

[00:13:14] Speaker 00:
Is that your understanding?

[00:13:16] Speaker 00:
I believe so, your honor.

[00:13:18] Speaker 00:
I'm sorry, I don't remember the hypothetical all that well.

[00:13:21] Speaker 00:
But I believe that if the court disagrees with what the board did, the issue is to be remanded, because they just didn't consider it.

[00:13:27] Speaker 00:
But what the board did here was consider the arguments that were presented by Willis.

[00:13:33] Speaker 03:
And what's left for the board to decide?

[00:13:36] Speaker 03:
If we were to accept the argument that Chin

[00:13:39] Speaker 03:
and provisional should be treated as a single reference because Chen incorporated the provisional, then what's left for the board to decide?

[00:13:50] Speaker 03:
The case isn't it that all the dependent claim limitations are shown by Chen?

[00:13:55] Speaker 00:
That is true, Your Honor.

[00:13:56] Speaker 00:
But I disagree that it matters whether the court finds whether this was one reference or two references.

[00:14:02] Speaker 00:
What was argued here is what the board assessed.

[00:14:05] Speaker 00:
And we were just talking about in the appendix what the arguments were.

[00:14:07] Speaker 00:
And if you turn to appendix page 79 and 82-3, which we were just talking about, that's where Willis, specifically, it's appendix 79, 80, 81, 82.

[00:14:21] Speaker 00:
This is where Willis, with respect to claim one,

[00:14:25] Speaker 00:
specifically identifies with respect to the Chen provisional, how Chen provisional meets each one of those elements.

[00:14:32] Speaker 00:
Let's see here.

[00:14:34] Speaker 00:
They make it very clear.

[00:14:34] Speaker 00:
And they distinguish between Chen and Chen provisional.

[00:14:37] Speaker 00:
And they don't ever say, you take this part from Chen and this part from Chen provisional.

[00:14:41] Speaker 00:
They make a separate argument as to ground one.

[00:14:44] Speaker 00:
But moving forward, Your Honor, we were just talking about some of these.

[00:14:47] Speaker 00:
If you look at claims two and three, which are on page 42 of, I'm sorry, page 84 and 85 of the appendix, there's no discussion of Chen provisional whatsoever.

[00:14:56] Speaker 00:
But then the very next page, page 85 of the appendix.

[00:15:00] Speaker 02:
Hold on.

[00:15:01] Speaker 02:
On page 84 and 85, what were you saying?

[00:15:05] Speaker 00:
So that's claims two and three, the analysis.

[00:15:07] Speaker 00:
So the dependent claims.

[00:15:09] Speaker 00:
Right there, there's only discussion of Chen.

[00:15:12] Speaker 00:
No discussion whatsoever of the provisional.

[00:15:16] Speaker 03:
Look back up a moment.

[00:15:17] Speaker 03:
But if we were to, and I know for you that claim one was improperly found to be unfathomable, let's assume we reject that argument and we say that the board correctly determined that the sole independent claim, claim one, was unfathomable.

[00:15:31] Speaker 03:
then the only remaining issue in the case is whether the dependent claims are unpatentable.

[00:15:40] Speaker 03:
And the starting point for that has to be that the limitations shown in claim one, which are part of the dependent claims, the starting point is that was obvious.

[00:15:52] Speaker 03:
And the question then becomes whether the dependent claims are patentably distinct from the independent claim, right?

[00:15:58] Speaker 00:
I agree with you, Your Honor.

[00:16:00] Speaker ?:
Yeah.

[00:16:01] Speaker 00:
Let's say it's one reference.

[00:16:04] Speaker 00:
There are multiple embodiments within that reference, clearly.

[00:16:07] Speaker 00:
And figure 13, the connector that is the gen provisional connector that they rely upon, is even identified in the specification as an alternative embodiment.

[00:16:16] Speaker 00:
They can't just mix and match between embodiments without articulating some motivation to do so and some ability to do so.

[00:16:24] Speaker 03:
I thought it was undisputed that Chen showed all the limitations of the act.

[00:16:30] Speaker 00:
Sorry, that's the point I'm trying to make.

[00:16:32] Speaker 00:
It's not undisputed.

[00:16:33] Speaker 00:
In fact, the problem here is that Willis failed to articulate where Chen Provisional taught these other elements.

[00:16:39] Speaker 00:
They relied only on Chen with respect to claims

[00:16:44] Speaker 00:
2, 3, and 5 through 10.

[00:16:46] Speaker 00:
And they cited Chen provisional only with respect to claims 1 and 4.

[00:16:50] Speaker 00:
Like I was just saying, if you turn to page 85.

[00:16:53] Speaker 03:
That seems to be saying that we're going to hold the dependent claims patentable because you haven't come in and shown yet again that claim 1 is unpatentable.

[00:17:07] Speaker 03:
The starting point, under my hypothetical argument, is claim 1 is unpatentable.

[00:17:12] Speaker 03:
Then we have to look to see

[00:17:14] Speaker 03:
whether the dependent claims are also unpatentable, whether they're patently distinct from claim one.

[00:17:20] Speaker 03:
And they've said, on that point, they say chin shows all the limitations of the dependent claims.

[00:17:26] Speaker 03:
And you don't disagree with that, right?

[00:17:31] Speaker 00:
Your Honor, maybe the better we don't.

[00:17:34] Speaker 03:
Is that true, the chin?

[00:17:36] Speaker 00:
shows all the limitations of the dependent claim.

[00:17:51] Speaker 00:
There are one or two claims to answer your question.

[00:17:54] Speaker 03:
So it's to most of them.

[00:17:58] Speaker 00:
Absolutely.

[00:17:59] Speaker 00:
But what I was going to say, maybe the better way to articulate this is if it's one reference, there are two distinct embodiments here.

[00:18:04] Speaker 00:
There's the Chen embodiment and there's the provisional embodiment.

[00:18:08] Speaker 00:
And they argue

[00:18:10] Speaker 00:
them separately and distinguish between them in their petition, very clearly, very distinctly.

[00:18:16] Speaker 00:
And Chen by itself they found did not teach the channel boy, which we were talking about earlier.

[00:18:23] Speaker 00:
In fact, the board noted that

[00:18:25] Speaker 00:
Willis never even argued that it met the construction of Channel Boy that was adopted.

[00:18:29] Speaker 03:
The Channel Boy limitation is not a limitation of the dependent claims.

[00:18:33] Speaker 03:
It's a limitation of the independent claims.

[00:18:34] Speaker 00:
I understand, Your Honor, and what I'm trying to explain is Chen, by itself, does not teach claim one.

[00:18:41] Speaker 00:
So thus the dependents also are not taught by Chen.

[00:18:43] Speaker 00:
Chen provisional, which the board found did teach the Channel Boy, does not, it was not assertive.

[00:18:50] Speaker 03:
I'm sorry, I don't understand what you're saying.

[00:18:53] Speaker 03:
Under the hypothetical I gave you,

[00:18:55] Speaker 03:
Claim one is unpatentable.

[00:19:02] Speaker 03:
Unpatentability finding by the board rests on a determination that the provisional shows the channel void limitation.

[00:19:10] Speaker 03:
And the claim one is unpatentable, right?

[00:19:13] Speaker 03:
So we're no longer concerned about the channel void limitation once we get to the dependent claims, because that's not a limitation of the dependent claims.

[00:19:24] Speaker 00:
Under your assumption, Your Honor, you're melding Chen and Chen Provisional into one thing.

[00:19:29] Speaker 00:
They're not.

[00:19:30] Speaker 00:
They're two separate embodiments.

[00:19:32] Speaker 03:
They go together.

[00:19:33] Speaker 03:
The documents go together, right?

[00:19:35] Speaker 00:
I'm agreeing with that, Your Honor.

[00:19:37] Speaker 00:
They incorporate by reference, and they go together.

[00:19:40] Speaker 00:
And they teach multiple different inventions and embodiments within them.

[00:19:44] Speaker 00:
And Willis, if it intended to pull bits and pieces from each part, it had to articulate it.

[00:19:50] Speaker 00:
But it didn't.

[00:19:51] Speaker 00:
And in fact, it very clearly

[00:19:54] Speaker 00:
articulate an argument with respect to Chen, and then a separate argument with respect to Chen provisional, which is distinctly different because of the connector.

[00:20:02] Speaker 00:
The figure 13 connector is vastly different than the connector in the Chen document.

[00:20:07] Speaker 00:
And as the board properly found, there are only two places

[00:20:11] Speaker 00:
where Willis articulated arguments based on Chen provisional.

[00:20:14] Speaker 00:
That's claim one and claim four.

[00:20:17] Speaker 00:
If they wanted to assert Chen provisional is to claim two and three and what have you, they should at least cite to it.

[00:20:22] Speaker 00:
But they don't.

[00:20:23] Speaker 00:
They don't say anything about it.

[00:20:24] Speaker 03:
It's the same issue as with respect to claim one.

[00:20:27] Speaker 03:
It's that part of claim one which is incorporated into the dependent claims.

[00:20:32] Speaker 03:
It's already been found under the hypothetical, already been found to be unpardonable.

[00:20:37] Speaker 03:
That's the starting point for the analysis of the dependent claims, under the assumption that claim one is unfathomable.

[00:20:44] Speaker 00:
Well, under the assumption, yes.

[00:20:45] Speaker 00:
But I'm challenging the assumption.

[00:20:47] Speaker 03:
I don't think the assumption's proper.

[00:20:49] Speaker 03:
That's fair.

[00:20:49] Speaker 00:
That's what I'm trying to articulate.

[00:20:51] Speaker 00:
I think the assumption is wrong that Chen does not teach claim one.

[00:20:56] Speaker 02:
OK.

[00:20:56] Speaker 02:
OK, so now you're on to your cross appeal.

[00:20:58] Speaker 00:
I'll move on to the cross appeal.

[00:21:00] Speaker 00:
Yes, Your Honor.

[00:21:01] Speaker 00:
So the cross appeal is relatively narrow.

[00:21:05] Speaker 00:
We don't believe the board relied on substantial evidence with respect to its determination that claims one and four were patentable based on the combination of provisional and the cliche, largely because there just is no motivation to combine.

[00:21:18] Speaker 00:
It's articulated anywhere in the petition.

[00:21:21] Speaker 00:
In fact, the entirety of Willis's argument on this is from page 83 and 84 of the appendix.

[00:21:27] Speaker 00:
And the entirety is, POSAs would find it obvious to employ spring-activated contact sections in the contact device and recognize how such connections function, i.e., the spring-activated contact presses against the central prong to maintain electrical contact between the central prong and the contact device.

[00:21:44] Speaker 00:
It's a generic argument that's directed at spring-activated contacts generally.

[00:21:48] Speaker 00:
It does not address McLeish.

[00:21:49] Speaker 00:
And what's telling, Your Honor, is that nowhere in there was what a POSA would do.

[00:21:54] Speaker 00:
That was what a POSA could do, which this court held in Belden v. Berktek is insufficient.

[00:22:00] Speaker 00:
Moreover, there's not any articulation of how you would make that combination of the 751 provisional with the Figure 13 provisional connector with McLeish.

[00:22:12] Speaker 00:
because as I described earlier, the figure 13 connector is a uniquely structured connector, and it has one of its electrical contacts is a flat pad-like connection point in the very bottom of the connector.

[00:22:26] Speaker 00:
There's no explanation of how or why you would put a string-activated contact on that, and in fact, the board gets it wrong, because there isn't any evidence in the record on this.

[00:22:37] Speaker 00:
Page 23 says that the spring-activated contact would be added to void 452.

[00:22:44] Speaker 00:
We can't add a contact to a void.

[00:22:46] Speaker 00:
A void is empty space.

[00:22:49] Speaker 00:
So the board got it wrong.

[00:22:51] Speaker 00:
It did not assess that properly.

[00:22:54] Speaker 00:
So on that basis, we believe that the board should be reversed as to claims one and four.

[00:23:00] Speaker 00:
I was going to address Otto briefly, although I'm not sure you're interested.

[00:23:07] Speaker 00:
With respect to the Otto and McLeish combination, the board found- Your friend never raised it.

[00:23:14] Speaker 02:
Is that relevant to your cross appeal?

[00:23:16] Speaker 00:
It is not relevant to my cross appeal.

[00:23:19] Speaker 00:
Unless you have any other questions about the merits of the appeal, I'll sit down.

[00:23:24] Speaker 00:
Thank you.

[00:23:25] Speaker 00:
Thank you, Alex.

[00:23:35] Speaker 01:
In the course of the PTAB proceeding, the patent owner in this case never opposed the substance of the dependent claims.

[00:23:45] Speaker 01:
They didn't say that there was some lack of disclosure in the Chen material that was deficient in some regard.

[00:23:53] Speaker 01:
Or with respect to claim five, they didn't oppose that

[00:23:56] Speaker 01:
for example, McLeish discloses a shutter.

[00:23:58] Speaker 01:
So just returning to the issue of whether or not there's anything to remand for, you know, they've not stated, for example, the power cord's not a power cord or that the connector wouldn't be able to connect in multiple rotational alignments.

[00:24:12] Speaker 01:
I also wanted to note in commentary of his argument that the provisional application itself was also incorporated by reference to each of the dependent claims.

[00:24:21] Speaker 01:
as the beginning of each argument and to just briefly address the claim that these are separate embodiments in a single reference.

[00:24:28] Speaker 01:
These are between the provisional and the 186 patent face modular lighted artificial trees.

[00:24:37] Speaker 01:
They have a coaxial connector in the trunk

[00:24:39] Speaker 01:
and they all have lights on them.

[00:24:42] Speaker 01:
So the case law by the Federal Circuit doesn't demand exact identity between the various disclosures in reference in order for them to be considered the same embodiment and I think that's demonstrably the case here.

[00:24:55] Speaker 01:
I also just wanted to point to the fact that the PTAB agreed with us on our position that spring contacts are well known in the art

[00:25:03] Speaker 01:
Aside from the citations that were provided by my friend here, there were citations in the factual record at Appendix 76, for example, and the McLeish spring finger showing that a post would generally know how to put a spring-based contact within the central void, as is required to invalidate these claims.

[00:25:22] Speaker 01:
Unless you have any other questions?

[00:25:24] Speaker 01:
Thank you.

[00:25:25] Speaker 02:
May you reserve some time for your questions.

[00:25:28] Speaker 02:
I think I've covered everything, unless you have any questions.

[00:25:30] Speaker 02:
I appreciate that.

[00:25:31] Speaker 02:
Thank you.

[00:25:31] Speaker 02:
We thank both sides and the case is submitted.