[00:00:11] Speaker 01:
I want to make sure that before we get started, I want to make sure that we're squared away with the that we've consolidated the arguments this morning.

[00:00:23] Speaker 01:
And you're aware that I extended argument time to 20 minutes.

[00:00:30] Speaker 01:
So I need to know from you how much time you're going to reserve, 10 minutes for rebuttal?

[00:00:35] Speaker 04:
So they're consolidated 20 minutes.

[00:00:37] Speaker 01:
The arguments in both cases are now consolidated.

[00:00:41] Speaker 01:
And instead of 15 minutes, you're going to have 20 minutes to address the issues.

[00:00:48] Speaker 04:
My assumption when I was asked, when I checked in, was that I would argue the appeal 1-4, 4-6 in my opening time.

[00:00:59] Speaker 04:
And then both have my rebuttal on 1-4.

[00:01:03] Speaker 04:
I'm happy to do it however

[00:01:05] Speaker 01:
Whatever why don't you address the the issues in both cases during your your direct and save time for rebuttal?

[00:01:11] Speaker 01:
Okay, if you need additional time, I'll grant it to to all the parties if we get to that point Okay, so you're you want to reserve 10 minutes rebuttal I'll address both both issues in the first 13 13 and I'll reserve some okay Thank you, thank you

[00:01:34] Speaker 01:
You may begin, please.

[00:01:37] Speaker 04:
Your honor, may it please the court?

[00:01:38] Speaker 04:
Thank you.

[00:01:40] Speaker 02:
Just housekeeping, do you agree with claims 1, 8, and 10 are illustrative?

[00:01:45] Speaker 04:
For the 1, 4, 4, 6 appeal, yes.

[00:01:50] Speaker 04:
We have claim 9, which is the where claim, which is allegory that's illustrative for the 1, 4, 5, 1 appeal.

[00:01:56] Speaker 04:
So claim 1 with the primarily transmitted issues, claims 8 and 10.

[00:02:01] Speaker 02:
Primarily with respect to another housekeeping question if we affirm on obviousness does that move your your other appeal?

[00:02:10] Speaker 04:
if I think if yeah, if you if there's an affirmation on Petitioners appeal in the one four four six.

[00:02:19] Speaker 04:
I think that does move the other appeal

[00:02:21] Speaker 03:
But that's their appeal.

[00:02:23] Speaker 02:
Yeah, that's right.

[00:02:25] Speaker 03:
I think that's what I understood.

[00:02:27] Speaker 03:
You can answer that when you get up.

[00:02:29] Speaker 03:
I assume the answer is yes.

[00:02:32] Speaker 01:
OK.

[00:02:33] Speaker 01:
Thank you.

[00:02:34] Speaker 04:
With respect to the 1446 appeal, and with respect to claims 8 and 10 primarily, and the combination of the

[00:02:43] Speaker 04:
reference and the Bergauer reference, our position is that it should be reversed because the board's finding regarding the motivation to combine is simply not supported by substantial evidence.

[00:02:57] Speaker 01:
On that point, I'd like to hear your comments on the issue of commercial viability and the reliance on that.

[00:03:08] Speaker 04:
Our position was that the motivation to combine

[00:03:12] Speaker 04:
which was laid out in Mr. Parker's declaration, paragraph 141, said you're going to have this desire to increase use cases for commercial viability.

[00:03:24] Speaker 04:
We inquired with their expert as to what investigation he had made into commercial viability with respect to the references in particular.

[00:03:33] Speaker 02:
Yeah, and he said he didn't.

[00:03:35] Speaker 02:
Right.

[00:03:35] Speaker 02:
And I think that's a- But why is that relevant?

[00:03:37] Speaker 02:
Isn't a reference prior for all it discloses?

[00:03:41] Speaker 02:
Absolutely.

[00:03:42] Speaker 04:
And we agreed with this at the- just to make it crystal clear, we are not disputing in any way that Gestesi qualifies as prior.

[00:03:53] Speaker 04:
and that Berghower qualifies.

[00:03:55] Speaker 02:
And for everything they disclose.

[00:03:56] Speaker 04:
That's right.

[00:03:56] Speaker 04:
And for everything that they disclose.

[00:03:59] Speaker 04:
Under the SAS case, the petitioner controls their petition, and they control the basis on which they're going to have a motivation to combine.

[00:04:11] Speaker 04:
Our position was that when they said that a person of ordinary skill in the art would be motivated to make the combination based on

[00:04:20] Speaker 04:
a desire to increase the commercial viability of the first reference that that put it in play, but exclusively for the issue of motivation to combine, not for anything else, but only for the issue of motivation to combine.

[00:04:41] Speaker 04:
The board, I think, struggled with respect to the issue of Mr. Parker's

[00:04:49] Speaker 04:
generality with respect to it, that he didn't support.

[00:04:54] Speaker 02:
You say he only provided a, quote, generic reason.

[00:04:57] Speaker 04:
That's the language we used, yes, your honor.

[00:04:59] Speaker 04:
I think generic reason, general reason.

[00:05:02] Speaker 04:
I think we had cited to the court in our briefing the active video case, which indicated that.

[00:05:10] Speaker 02:
And Polaris.

[00:05:11] Speaker 04:
And Polaris.

[00:05:12] Speaker 04:
And the court on November 22 of this past year in the TQ Delta versus Cisco

[00:05:18] Speaker 04:
942 F1352 again indicated that conclusory and unsupported motivations to combine were inadequate.

[00:05:29] Speaker 04:
And I think that's just part and parcel with that same logic.

[00:05:34] Speaker 02:
Why is it relevant that they're commercially viable or unviable?

[00:05:40] Speaker 04:
I think it's relevant

[00:05:44] Speaker 04:
that an expert, if they're going to proffer a motivation to combine along the lines of make it better, make it safer, make it more commercially appealing, our reading of the case law is they need to orient that to the references at issue.

[00:06:04] Speaker 04:
So I think of a person of ordinary skill in the art says, I look at reference A, Gestesi, a race car.

[00:06:10] Speaker 04:
And Gestesi says,

[00:06:12] Speaker 04:
that it's important for cornering and handling that you have good tire traction.

[00:06:18] Speaker 04:
And I've got reference B that says I've got tires with great traction.

[00:06:28] Speaker 04:
I think an expert could opine and create the combination of new tires

[00:06:33] Speaker 01:
Because that confidential would increase more sales or attract?

[00:06:37] Speaker 04:
No, no, no.

[00:06:38] Speaker 04:
Simply because it would provide better handling.

[00:06:40] Speaker 04:
And maybe my analogy didn't take super well.

[00:06:45] Speaker 04:
But I think from our side, if you're going to come in and offer commercial viability as a foundation for a motivation to combine, it needs to be oriented to the references.

[00:06:58] Speaker 04:
If you're going to come in with the idea of increasing use cases,

[00:07:02] Speaker 01:
You don't challenge just the use of commercial viability as an element that could be used to show a motivation to combine?

[00:07:16] Speaker 04:
No, and I don't think we're not citing active video or the other cases from this court to say that that's per se rejected.

[00:07:24] Speaker 04:
What we're saying is like an active video where they wanted to make it better, where they wanted to sell more units.

[00:07:31] Speaker 04:
inactive video, I think, and like here, you're obligated then to develop that argument more and present more record evidence to explain why.

[00:07:40] Speaker 04:
That's all we're saying.

[00:07:41] Speaker 04:
We're not saying that it's per se bad or per se off limits.

[00:07:46] Speaker 04:
What we're saying is if you're going to go down that road, it has to be more than conclusory and unsupported.

[00:07:55] Speaker 04:
The board

[00:07:59] Speaker 04:
then went and used the background of the invention.

[00:08:04] Speaker 04:
And our expert, Mr. Councilman's, agreement with the background of the invention to find that he agreed with the concept of making the combination based on commercial viability.

[00:08:18] Speaker 04:
And there, I think, the board, we characterize this as a potential reversal

[00:08:26] Speaker 04:
the burden of proof under Magnum Oil, I think it also could be characterized as a failure to look at the record as a whole.

[00:08:33] Speaker 04:
We argued that the board sort of completely didn't look at our experts' expressed disagreement there.

[00:08:39] Speaker 03:
But this is what you always argue.

[00:08:41] Speaker 03:
All of you argue this every single time when you present your experts and the board disagrees with you.

[00:08:48] Speaker 03:
You come in here and say either they didn't look at it improperly, even though we presume they did,

[00:08:54] Speaker 03:
Or you argue that they've shifted the burden to you under magnum when all they're doing is looking at your evidence and rejecting it.

[00:09:01] Speaker 03:
That's not a reversal of the burden.

[00:09:04] Speaker 03:
It's just they don't agree with you.

[00:09:08] Speaker 04:
I certainly agree there's room for that, absolutely.

[00:09:11] Speaker 04:
I think here.

[00:09:12] Speaker 03:
Can you point to any place in the board's decision where they say, you didn't carry your burden of proof?

[00:09:21] Speaker 03:
No.

[00:09:23] Speaker 03:
or then they didn't shift the burden improperly.

[00:09:27] Speaker 03:
This argument that they have somehow implicitly shifted the burden under magnum oil makes no sense when they've cited the right burden, and all they're doing is addressing your arguments or finding them insufficient.

[00:09:44] Speaker 03:
That's not a burden shifting.

[00:09:46] Speaker 04:
But Judge Hughes, I think that in the manner we argued it, with respect to

[00:09:52] Speaker 04:
The motivation to combine, I think the board was obligated to look at the fact that Mr. Councilman expressly disagreed with the motivation to combine based on commercial viability.

[00:10:04] Speaker 03:
How do we know they didn't?

[00:10:06] Speaker 04:
They didn't say it under new base.

[00:10:08] Speaker 03:
They didn't say it at all.

[00:10:09] Speaker 03:
Again, this is it.

[00:10:09] Speaker 03:
The board isn't obligated to provide

[00:10:13] Speaker 03:
detailed point-by-point rebuttal of your case.

[00:10:16] Speaker 03:
They're required to look at the record and make a decision.

[00:10:18] Speaker 03:
And even then, on review, we can't fault them for that unless they clearly have not done something, if they've clearly ignored something.

[00:10:27] Speaker 03:
The fact that they didn't specifically address it doesn't mean they somehow shifted the burden or ignored the evidence.

[00:10:33] Speaker 03:
They've reached a reasoned conclusion on the record, and we're going to review it for substantial evidence.

[00:10:39] Speaker 04:
And our position with respect to the

[00:10:43] Speaker 04:
Motivation to combine is simply that they were obligated to at least comment and we have no at least look at the record is especially where it's so dramatic.

[00:10:52] Speaker 04:
He disagreed point blank with the commercial viability reason and the board used his agreement with the background.

[00:11:00] Speaker 04:
as a basis to say that he, in fact, agreed with commercial viability.

[00:11:03] Speaker 04:
And maybe that doesn't answer your question directly.

[00:11:05] Speaker 04:
But it is a substantial evidence.

[00:11:07] Speaker 03:
It suggests to me that the board did indeed look at your expert's declaration and disagreed with it.

[00:11:15] Speaker 03:
The fact that they are not the other side in this case.

[00:11:18] Speaker 03:
They are not obligated to rebut your arguments point by point.

[00:11:21] Speaker 03:
They're obligated to look at the record and to reach a decision.

[00:11:27] Speaker 04:
That is the process.

[00:11:28] Speaker 04:
I would like to move on.

[00:11:30] Speaker 04:
You're going to talk about unmet need?

[00:11:32] Speaker 04:
Well, what I'd like to talk about is this idea of, under personal web, I can happily talk about unmet need.

[00:11:39] Speaker 04:
And I'll make it quickly.

[00:11:40] Speaker 04:
The board did go through, point by point, the seven reasons why Mr. Councilman did not or was unpersuasive with respect to why you'd use Berghauer's radio motors into this.

[00:11:56] Speaker 04:
They went through that.

[00:11:57] Speaker 04:
I think our problem there is under personal web, because the petition and Mr. Parker in their opening declaration said that a person would put those exact motors to, which is the radio motor, and 3A, on to

[00:12:15] Speaker 04:
that it was BMW's burden of proof to explain how to do that and why it would be successful.

[00:12:22] Speaker 04:
So for the analysis by the board to focus on why we couldn't rebut that when BMW never put that out in the first instance demonstrates either a failure to look at the record as whole or with respect to unmet need, our view there is simply that when the board used

[00:12:45] Speaker 04:
our general engineering statement from the background of our invention as a basis to say that there's a desire to increase use cases for a universal or modular chassis, that they needed to look at the fact that BMW filed an application on solving the same problem two years later.

[00:13:06] Speaker 04:
Simply that, just that it needed to be done consistently.

[00:13:12] Speaker 02:
How is GRIL relevant to claim 10 of the 163 pen?

[00:13:15] Speaker 04:
Claim 10 is directed towards a hybrid vehicle with an electrical motor and an internal combustion engine in the combination with the universal frame as is Grille.

[00:13:27] Speaker 04:
So they're both directed to hybrid platforms.

[00:13:32] Speaker 04:
In my last five minutes, I can shift to the other appeal for a few minutes so I can reserve.

[00:13:39] Speaker 04:
I think our positions are fairly simple with respect to the claim construction of primarily transmitted, which follows as such that we offered a claim construction in patent owner's response.

[00:13:57] Speaker 04:
BMW had an opportunity to offer a claim construction

[00:14:01] Speaker 04:
In the petitioners' reply, they did not.

[00:14:04] Speaker 04:
That issue is now being raised here for the first time.

[00:14:07] Speaker 04:
We believe it's a waiver.

[00:14:08] Speaker 04:
Notwithstanding, we believe our claim of construction is correct, that such that clause signals an indication of the function of the chassis and the environment in which it's found.

[00:14:21] Speaker 04:
With respect to the wire issue, it too is substantial evidence.

[00:14:27] Speaker 04:
The board indicated that there was a stalemate on the issues between

[00:14:31] Speaker 04:
our evidence and their evidence with respect to the experts.

[00:14:35] Speaker 04:
To me, that's 50-50.

[00:14:37] Speaker 04:
And so the board looked at other evidence.

[00:14:40] Speaker 04:
And we believe substantial evidence supports that other evidence tipping the scale at 1% more.

[00:14:46] Speaker 04:
And for that reason, we believe that that should be affirmed.

[00:14:52] Speaker 01:
OK.

[00:14:52] Speaker 01:
Thank you, Sean.

[00:15:06] Speaker 01:
So if you have 20 minutes should you need that that amount of time?

[00:15:10] Speaker 00:
Let's do that in 15 and 5, please, okay?

[00:15:16] Speaker 00:
May it please the court Jeff sannach on behalf of BMW I want to address first of all the 1441 appeal with respect to the motivation to combine

[00:15:29] Speaker 00:
believe the evidence supported that there was a known desirability in the automotive arts to design a chassis to be made available for multiple use cases.

[00:15:48] Speaker 00:
That design incentive is motivation, but it wasn't the only motivation.

[00:15:55] Speaker 00:
There was also the interrelated teachings of the patents that Mr. Parker

[00:15:59] Speaker 00:
explained in detail with respect to the Gestassi and Bergauer references.

[00:16:05] Speaker 00:
Together, you had substantial evidence of a motivation to combine.

[00:16:12] Speaker 00:
What the board did here is very simple.

[00:16:14] Speaker 00:
They looked at Mr. Parker's testimony on this known desire to increase the use cases.

[00:16:22] Speaker 00:
They then saw that Mr. Kunselman, the patent owner's expert, agreed.

[00:16:29] Speaker 00:
And they saw that the background of the 163 patent even confirmed that known desirability.

[00:16:34] Speaker 00:
With that, they had no question to look for any other evidence with respect to whether there was sufficient motivation to combine.

[00:16:43] Speaker 00:
But there actually was.

[00:16:44] Speaker 00:
As we said, Mr. Parker pointed out the interrelated teachings of these patents.

[00:16:49] Speaker 00:
You have the Gastessi and Bergauer references, which were both directed toward modular backbone types of structures.

[00:16:58] Speaker 00:
You had in the Berghauer reference an express object of trying to optimize the use of space because batteries and fuel tanks could take up a lot of space.

[00:17:10] Speaker 00:
So Berghauer looked to put it into this backbone support pipe.

[00:17:15] Speaker 00:
You had the Gestesse reference, which also used the backbone support pipe for its energy source for its combustion engine.

[00:17:24] Speaker 00:
You had Gestesse with a modular chassis design that

[00:17:28] Speaker 00:
not only stored the fuel there, but had two different embodiments where you could switch out the engines on the front module.

[00:17:35] Speaker 01:
So Mr. Parker also opined on commercial viability, right?

[00:17:40] Speaker 00:
What he said was to increase the commercial viability.

[00:17:43] Speaker 00:
What his statement was that it was a known desire in the automotive arts with respect to chassis designers to design a chassis to make it

[00:17:54] Speaker 00:
available for use across multiple use cases in order to increase the commercial viability of a chassis.

[00:18:02] Speaker 00:
So yes, he did make that statement.

[00:18:04] Speaker 00:
What happened is, in his deposition, he was asked essentially a wrong question.

[00:18:11] Speaker 00:
He was asked whether the Gestesi reference was commercialized or whether the Bergauer reference was commercialized.

[00:18:18] Speaker 00:
That became the whole linchpin for this commercial viability, commercial success, commercial

[00:18:23] Speaker 00:
realization types of arguments that the patent owner has now been making but the board examined that so help me understand what what mr. Parker was trying to say was he trying to say that there's a motivation to combine because if you do so you'll Result in greater sales down the road not exactly your honor what he was saying is that when you have a Desire to make a chassis more viable by making available for more use cases

[00:18:53] Speaker 00:
you're going to increase its marketability.

[00:18:56] Speaker 01:
So it is a possible increase in marketability.

[00:19:00] Speaker 01:
Is that an element for motivation to combine legally?

[00:19:04] Speaker 00:
A market force is an element, as is design incentive, which is what we've talked about, as is the interrelated teachings of the patents.

[00:19:13] Speaker 00:
And all of that was set forth in several paragraphs of Mr. Parker's declaration.

[00:19:18] Speaker 00:
And again, the known desirability to do this

[00:19:21] Speaker 00:
Which is the motivation if you are a chassis designer was agreed to by the patent owner's expert You know our case follows essentially the the logic of the board in several cases the pgs Geophysical case and the sup LLC versus Nash case where the board did examine the motivation of

[00:19:48] Speaker 00:
They also noted that there was no dispute that all the elements were met in the combination of the references.

[00:19:55] Speaker 00:
And then they went forth and laid out the arguments against the secondary considerations evidence for which the patent owner does have a burden of production.

[00:20:04] Speaker 00:
And they did that quite clearly in the final written decision over several paragraphs and pages.

[00:20:20] Speaker 00:
I want to turn to next, unless there's any questions on 1446.

[00:20:26] Speaker 00:
Well, just the one you answered already.

[00:20:29] Speaker 00:
So I'd like to go to the written description issues with respect to 1451.

[00:20:36] Speaker 00:
And there, we believe the board erred.

[00:20:43] Speaker 00:
And I'd like to start with primarily transmitted

[00:20:47] Speaker 00:
Limitation because I think that one's a little again.

[00:20:49] Speaker 03:
This is the one we don't need to reach the correct yes on the other one.

[00:20:53] Speaker 00:
Yes, this is correct Once their options for exhausting appeals of course are over With respect to the primarily transmitted limitation You know one of the positions that we've taken is the claim claim one of the 163 patent states that the ride handling and impact crash loads are

[00:21:17] Speaker 00:
are transmitted between the front and rear structures through the backbone.

[00:21:24] Speaker 00:
The ride and handling loads are agreed, those are chassis loads.

[00:21:28] Speaker 00:
They're defined in the patent as being the chassis loads.

[00:21:32] Speaker 00:
And consistently throughout the entire family, those chassis loads are described as being transmitted solely or entirely through the backbone.

[00:21:41] Speaker 00:
And that makes sense.

[00:21:42] Speaker 00:
You have a front structure, rear structure, and then you have a central backbone.

[00:21:47] Speaker 00:
There's no frame surrounding that central backbone.

[00:21:50] Speaker 00:
Therefore, the chassis loads are solely through the backbone.

[00:21:55] Speaker 00:
The 163 patent explicitly states that because there is no frame, the unit chassis, or because the unit chassis doesn't have a frame, the chassis loads are solely through the backbone.

[00:22:08] Speaker 00:
But let's take a look at the impact crash loads, because the patent owner has made an argument that the structures haven't changed or the function hasn't changed.

[00:22:17] Speaker 00:
But let's look at the impact crash loads and how those changed.

[00:22:20] Speaker 00:
I'd cite you to Appendix 1923, which is the red line version between the 490 application, for which they claim priority in 2008, and the 2012 CIP, for which we claim they're not entitled to any earlier of a date.

[00:22:45] Speaker 00:
And if you look at Appendix Site 1923, you'll see it's in color.

[00:22:50] Speaker 00:
The blue changes are what has been added in the 2012 CIP.

[00:22:56] Speaker 00:
So if you could read that passage in paragraph 6, which is up at the top and it's right about in the middle of it, it states that the object is to take the chassis loads and decouple them from body loads and impact crash loads.

[00:23:15] Speaker 00:
So in 2008, in the 490 application, the chassis loads are decoupled from body loads and impact crash loads.

[00:23:26] Speaker 00:
Now, read the blue in in 2012 in their further disclosure, where they had added a lot of disclosure about crash boxes throughout the spec.

[00:23:35] Speaker 00:
It now says that those chassis loads are still decoupled from body loads, but also the impact crash loads are now absorbed

[00:23:45] Speaker 00:
to the backbone, absorbed through the crash boxes to the backbone.

[00:23:49] Speaker 00:
So the structure did change.

[00:23:51] Speaker 00:
You had impact crash loads in the 490 application.

[00:23:55] Speaker 00:
And that passage is the only one where impact crash loads are discussed anywhere in the 490 application.

[00:24:03] Speaker 00:
They are decoupled from the chassis loads.

[00:24:06] Speaker 00:
And in 2012, they are now absorbed to the backbone.

[00:24:11] Speaker 00:
That's a contradiction that can't be resolved and therefore

[00:24:15] Speaker 00:
For that reason alone, the impact crash loads can't find support even primarily through the backbone from the 490 application.

[00:24:26] Speaker 00:
And then further, when you have the 163 filing patent, you'll see that they changed the term solely to primarily.

[00:24:36] Speaker 00:
And for support, because they had none and this only showed up within the claim, they went to look at it

[00:24:43] Speaker 00:
Passage in the 163 application is unrelated to how the loads are handled in the chassis.

[00:24:50] Speaker 00:
That passage has to do with isolating the body from the backbone using body mounts.

[00:24:56] Speaker 00:
And it simply says that if you can isolate the chassis or the body from the backbone using the body mounts, you've substantially decoupled the loads.

[00:25:06] Speaker 00:
And only substantially because there's weight.

[00:25:08] Speaker 00:
And weight obviously would affect still the backbone.

[00:25:13] Speaker 00:
But what they never show is, and I should say the board in their findings said that, well, that's evidence of sharing of loads, and therefore we find written description.

[00:25:26] Speaker 00:
But that, first of all, doesn't track the claim language, which isn't just sharing of loads.

[00:25:29] Speaker 00:
It is primarily transmitting them from the front structure to the rear structure through the backbone.

[00:25:35] Speaker 00:
And that's what gave rise to what we anticipated, they would argue, which is that there's some

[00:25:40] Speaker 00:
some alternate load path from the front structure to the rear structure that goes through a body when the body is on the chassis.

[00:25:49] Speaker 00:
Two problems with that.

[00:25:52] Speaker 00:
The first problem is the 490 application.

[00:25:57] Speaker 00:
And if you look at appendix site,

[00:26:10] Speaker 00:
Let's see.

[00:26:14] Speaker 00:
1532.

[00:26:17] Speaker 00:
You'll see on appendix site 1532, this is the published 490 application.

[00:26:23] Speaker 00:
And if you look at claim 15, this is also on page 54 of our blue brief.

[00:26:29] Speaker 00:
They had a claim, which is part of the original disclosure of the 490, their priority, which says, you have a body.

[00:26:37] Speaker 00:
It is mounted to the backbone, but it still says the chassis loads are solely through the backbone.

[00:26:46] Speaker 00:
So even when they try to rely on this passage of a body being mounted to a backbone, their earlier disclosure is still consistent with what the intent was, which is the chassis loads are still solely through the backbone.

[00:27:01] Speaker 00:
And a similar claim like that even exists in the 2012 CIP.

[00:27:06] Speaker 00:
at appendix site 1761, claim 11, where again, now they have a claim with the body on it, which is what they've been arguing.

[00:27:14] Speaker 00:
You have to read their claim 1 of the 163 patent is having a body.

[00:27:18] Speaker 00:
But now you have a claim that they wrote with a body, and it still says the chassis loads are solely through the backbone.

[00:27:25] Speaker 00:
So we believe there's no substantial evidence to support the board's findings with respect to the primarily transmitted limitation.

[00:27:34] Speaker 00:
Secondly, with respect to the alternate load path,

[00:27:37] Speaker 00:
It's a claim construction issue only because, impliedly, they had to reach that view.

[00:27:42] Speaker 00:
Otherwise, the loads would still be going through the backbone, because nothing else connects the front structure to the rear structure.

[00:27:49] Speaker 00:
And even their own drawing figures make it clear that the body is just mounted to the backbone.

[00:27:57] Speaker 00:
And with that, let me address the wire limitation, unless there's any questions.

[00:28:07] Speaker 00:
On the wire limitation, this is essentially a case where the board applied an obvious-to-try or obvious-to-use analysis.

[00:28:15] Speaker 00:
There is no express disclosure of a wire in the 490 application.

[00:28:21] Speaker 00:
The only language that is being relied upon by the patent owner is a discussion of how you assemble their chassis where they say you suitably couple components together.

[00:28:32] Speaker 00:
That's not a structure of suitable coupling.

[00:28:36] Speaker 00:
essentially a method act.

[00:28:37] Speaker 00:
So there's no actual structure of anything that is a electrical conductor within the 490 application.

[00:28:45] Speaker 01:
If you have a power source on the front of the rear frame, then on the front frame, and then on the back, and there's a hollow, that hollow tube between them, wouldn't that imply that there's a wire

[00:29:05] Speaker 00:
connecting the two?

[00:29:07] Speaker 00:
It would likely imply that there may be a conductor of some sort, but not necessarily a wire.

[00:29:12] Speaker 00:
Mr. Parker testified that there are numerous other conductors available to couple batteries.

[00:29:18] Speaker 00:
Bus bars are used extensively in battery packs.

[00:29:22] Speaker 00:
That's part of the record.

[00:29:24] Speaker 01:
But if the point is to put batteries inside the hollow tube that's connecting everything, then there must be a wire there to connect everything.

[00:29:36] Speaker 00:
That's not necessarily, as Mr. Parker has.

[00:29:39] Speaker 00:
You can connect it with other conductor structures, such as bus bars.

[00:29:43] Speaker 00:
A bus bar is effectively a metal conducting rod.

[00:29:47] Speaker 00:
Correct.

[00:29:49] Speaker 00:
And to take it to another level, though, further, you have to look and say, what is their actual claim language?

[00:29:56] Speaker 00:
For example, one of their claims talks about a wire spanning the entire length.

[00:30:04] Speaker 00:
If you have batteries in that you're connecting to, that wire isn't spanning the entire length.

[00:30:09] Speaker 00:
They may be referring there to a different type of wire, such as a wiring harness in the vehicle that goes from one end to the other, doesn't connect to the batteries at all.

[00:30:18] Speaker 00:
And in fact, I think that's maybe what they were aiming at.

[00:30:22] Speaker 00:
But there's no disclosure of that until they filed the 2012 CIP, where at that point they put in ample disclosure

[00:30:30] Speaker 00:
of not only fluid lines, electrical lines, how they're located, the purpose, why.

[00:30:36] Speaker 00:
But as of the 490 priority date that they're claiming or want to claim, it may be obvious to use one.

[00:30:43] Speaker 00:
Your Honor, I'll be the first one to agree with that.

[00:30:46] Speaker 00:
But that's not what the law is.

[00:30:48] Speaker 00:
There's no actual disclosure.

[00:30:50] Speaker 00:
There's no express disclosure.

[00:30:52] Speaker 00:
There's not even an actual structure, as we said.

[00:30:54] Speaker 00:
It's just suitable coupling something.

[00:30:56] Speaker 00:
You're into rebuttal time.

[00:30:57] Speaker 00:
Oh, I'm sorry.

[00:30:58] Speaker 00:
With that, actually, I will stop.

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

[00:31:09] Speaker 01:
He's got 10 minutes?

[00:31:10] Speaker 01:
Seven minutes.

[00:31:12] Speaker 01:
Seven minutes.

[00:31:15] Speaker 01:
OK.

[00:31:15] Speaker 01:
Correct.

[00:31:16] Speaker 04:
Thank you, Your Honor.

[00:31:18] Speaker 04:
Turning to the motivation to combine on the 1446 appeal, petitioner argued that

[00:31:28] Speaker 04:
There was a lot of record evidence pointing to specific things in the patents themselves that supported that combination.

[00:31:37] Speaker 04:
I would direct the court to appendix page 1277, which is the opening declaration of petitioner's expert Mr. Parker, who is talking about combining drive motors 2 and 3A

[00:31:58] Speaker 04:
of the hybrid vehicle.

[00:32:00] Speaker 04:
And this argument was repeated in the petition itself.

[00:32:04] Speaker 04:
Under personal web, Mr. Parker needed to explain how we're going to take drive motor 2, which is a radial engine like would be found on a World War II aircraft, and motor 3A, which is a electric motor, which are both cantilevered off to the sides, and explain

[00:32:28] Speaker 04:
how those would be integrated into the race car of Ghastassi and why that would be successful.

[00:32:35] Speaker 04:
Mr. Parker did not do that.

[00:32:38] Speaker 04:
Mr. Konsolman explained why that would not be done, could not be done, wouldn't work.

[00:32:44] Speaker 04:
And so therefore, under personal web, to the extent that that's used as a motivation to combine, our position is it's equally conclusory, it's equally unsupportive.

[00:32:59] Speaker 04:
With respect to commercial success, commercial viability ever commercialized, our questions to Mr. Parker were very clear in the deposition and set forth in our brief.

[00:33:16] Speaker 04:
We didn't ask him about commercial success.

[00:33:19] Speaker 04:
We didn't ask him whether those references qualified or did not qualify.

[00:33:23] Speaker 04:
We asked him if it was commercially viable, point-blank.

[00:33:28] Speaker 04:
Commercial viability doesn't necessarily mean it has to be sold.

[00:33:32] Speaker 04:
Just would anybody be interested, even in your opinion?

[00:33:36] Speaker 04:
And he did not have any investigation.

[00:33:39] Speaker 04:
So I think that this commercial issue has come into the case and exited the case and come back into the case and exited the case.

[00:33:54] Speaker 04:
as a basis for motivation to combine, utterly conclusory, utterly unsupported.

[00:33:59] Speaker 04:
When we criticize it, there's a step back and saying, wait a second, commercial success is not relevant.

[00:34:06] Speaker 04:
And then the board says, your expert agreed that it would be commercially viable.

[00:34:11] Speaker 04:
So from our side, someone had said, it looks like a rat, it smells like a rat, or something's up here.

[00:34:20] Speaker 04:
To us, we feel like we've been whipsawed by this whole, you know, it's either relevant or not, I agree.

[00:34:25] Speaker 04:
But if you're going to put it into play, you've got to support it.

[00:34:28] Speaker 04:
It's got to be more than simply conclusory.

[00:34:31] Speaker 01:
Well, it's in play.

[00:34:32] Speaker 01:
The board relied on Mr. Parker's testimony, right?

[00:34:37] Speaker 04:
And it had to be supported more than conclusory.

[00:34:40] Speaker 04:
Turning to the primarily transmitted.

[00:34:47] Speaker 03:
I don't understand what you mean by more than conclusory.

[00:34:50] Speaker 03:
Are we talking about?

[00:34:52] Speaker 03:
The statement on 1275 and paragraph 151 where it says this would increase the commercial viability of the design?

[00:35:00] Speaker 04:
Yes.

[00:35:02] Speaker 04:
So all of paragraph one.

[00:35:04] Speaker 04:
Paragraph 151 is the basis for motivation combined.

[00:35:07] Speaker 04:
Our position is that it is conclusory and it's unsupported.

[00:35:11] Speaker 03:
What do you mean it's conclusory?

[00:35:12] Speaker 03:
Conclusory would be a skilled artisan would have the motivation to combine without giving any reason.

[00:35:18] Speaker 03:
He gives reasons here.

[00:35:21] Speaker 03:
Does he have to prove that it would have been commercially viable?

[00:35:26] Speaker 03:
Or can't he just say, as an expert, I think this would increase commercial viability?

[00:35:30] Speaker 04:
I think you have to... Our position is that it's got to be oriented to the references.

[00:35:36] Speaker 04:
You can't... Why?

[00:35:39] Speaker 04:
Why?

[00:35:40] Speaker 04:
I think because... He's the skilled artisan.

[00:35:43] Speaker 04:
We're not.

[00:35:44] Speaker 04:
I think if it wasn't tied to the references, Activision would have gone the other way.

[00:35:49] Speaker 04:
Polaris would have gone the other way.

[00:35:51] Speaker 03:
Well, but it is tied to the references.

[00:35:53] Speaker 03:
The first two sentences talks about what these references disclose.

[00:35:58] Speaker 03:
It said one of skill and art would have been motivated to use Berghauer's motors with something in gestacy, and then the ultimate conclusion that this would have increased commercial viability.

[00:36:12] Speaker 04:
If that's the case, I'll accept your hypothetical.

[00:36:17] Speaker 04:
BMW argued

[00:36:19] Speaker 04:
that it's irrelevant, that commercial viability.

[00:36:21] Speaker 03:
Well, because there's other parts in here that they talk about other reasons for why you would combine them.

[00:36:28] Speaker 04:
Sure.

[00:36:29] Speaker 04:
And we go to page 1277.

[00:36:31] Speaker 04:
The other reasons is because both drive motors 2A and 3A.

[00:36:35] Speaker 04:
And we're now talking about specific motors that you put these specific motors in, except there's no explanation of how you would put a radial engine that's cantilevered off to the side, like your ear, on one side.

[00:36:48] Speaker 04:
electric motors like your ear on the other side and how that would go in.

[00:36:51] Speaker 04:
So I'm not disagreeing that you couldn't use the references, the subject matter of the references themselves.

[00:36:57] Speaker 04:
All I'm saying is you have to explain why on a personal web for there to be substantial access.

[00:37:03] Speaker 04:
With respect to the claim construction issue, primarily transmitted

[00:37:10] Speaker 04:
The board, appendix 160, agreed that both experts agreed on the issue.

[00:37:15] Speaker 04:
They didn't argue the claim construction issue with respect to the wire substantial evidence.

[00:37:20] Speaker 04:
And with that, I guess you have any other questions?

[00:37:27] Speaker ?:
No.

[00:37:28] Speaker ?:
Thank you.

[00:37:28] Speaker 02:
Thank you.

[00:37:28] Speaker 02:
I want to compliment everybody on the nice illustrations.

[00:37:39] Speaker 00:
You have five minutes.

[00:37:41] Speaker 00:
Yeah, I just like to address one point made with respect to personal web What's missing in that analysis of personal web is it's not only are you having to show the combination, but you're in the way claimed and Here this is going to be obvious this question right?

[00:37:59] Speaker 03:
Yes I mean we didn't really treat these as cross appeals, but this is his appeal shouldn't he get the last word on that?

[00:38:05] Speaker 00:
That's correct.

[00:38:06] Speaker 03:
I mean, if you have something on... I mean, if they want to hear it, if my colleagues want to hear it, it's fine.

[00:38:11] Speaker 00:
It seems to me... I think I was just thrown off by the consolidation this way, but I apologize.

[00:38:18] Speaker 00:
So I have nothing further on, unless there's anything you'd like to hear on the fire and primarily transmitted.

[00:38:24] Speaker 01:
Okay, we thank the party for the arguments.

[00:38:26] Speaker 01:
This court is now in recess.