[00:00:05] Speaker 03:
The first case for argument this morning is 191063, grit energy versus Orrin Technologies.

[00:00:12] Speaker 03:
Mr. Siegel, whenever you're ready.

[00:00:18] Speaker 00:
Good morning and may it please the court.

[00:00:20] Speaker 00:
Peter Siegel for the appellant, grit energy solutions.

[00:00:23] Speaker 02:
Mr. Siegel, do you agree that independent claim one of the 341 patent is illustrative?

[00:00:31] Speaker 00:
I think we do, Your Honor.

[00:00:37] Speaker 02:
Sorry, a housekeeping question.

[00:00:39] Speaker 02:
Let me ask your point.

[00:00:39] Speaker 02:
Yes, we do.

[00:00:41] Speaker 02:
Sorry.

[00:00:42] Speaker 02:
OK.

[00:00:42] Speaker 02:
At pages 32, 33 of the blue brief, Grid says, quote, Constantine and the governing law say, quote, that the reference numerals in claim five of Constantine are not limiting, but you provide no supporting sites.

[00:01:02] Speaker 02:
What support is there in Constantine and the governing law for this proposition?

[00:01:07] Speaker 00:
So Constantine says at appendix 175 that the figures it contains are non-limiting.

[00:01:20] Speaker 00:
I'm sorry, that's appendix 173, not 175.

[00:01:24] Speaker 00:
And the invention is illustrated by way of non-limiting example in the accompanying drawings in which, and then it refers to each of the figures.

[00:01:33] Speaker 00:
So that's it, appendix 173 and 174.

[00:01:37] Speaker 00:
Before the board, we also cited governing law from the United States and from France.

[00:01:45] Speaker 00:
The French law actually requires

[00:01:48] Speaker 00:
illustrative images and references to them.

[00:01:51] Speaker 00:
So that's in the record, but we haven't relied on it on appeal.

[00:01:55] Speaker 00:
What we rely on principally is appendix 1.

[00:01:58] Speaker 02:
What are you relying on?

[00:01:59] Speaker 02:
Because you say the governing law in the blue brief.

[00:02:02] Speaker 00:
Don't tell me what you don't.

[00:02:04] Speaker 00:
So the governing law requires the court to read Constantine as a skilled artisan would, and Constantine contains this

[00:02:12] Speaker 00:
explicit instruction that the figures it contains are non-limiting.

[00:02:16] Speaker 00:
So I think when we refer to the governing law, what we're referring to is the law that requires the court to heed Constantine's instruction that figure three is not limiting.

[00:02:27] Speaker 03:
Is that there's something, but I don't know if this is in the record.

[00:02:30] Speaker 03:
In the European Patent Convention, there's a rule that says that.

[00:02:33] Speaker 03:
I mean, the citation, I don't know if you included that in your briefing or if it was included.

[00:02:39] Speaker 00:
Again, we haven't relied on it on appeal.

[00:02:41] Speaker 00:
We do refer to French law in the record, but I don't have the citation for that handy for you.

[00:02:48] Speaker 00:
We principally rely on Constantine's, what we view as an express instruction,

[00:02:53] Speaker 00:
that figure three is not a limiting example.

[00:02:56] Speaker 00:
That's at the very bottom, 173 of the appendix.

[00:03:02] Speaker 00:
The invention is illustrated by way of non-limiting example in the accompanying drawings in which

[00:03:09] Speaker 00:
And then it refers to each of the jobs.

[00:03:10] Speaker 03:
So just to follow up on Judge Walz's question, so when you get to claim five of Constantine, which is what's in play here, your view is that the parenthetical eight, therefore going back to figure three, is a non-limiting reference.

[00:03:26] Speaker 00:
Yes, Your Honor, precisely.

[00:03:30] Speaker 00:
So on that issue, at 177, claim five

[00:03:36] Speaker 00:
if you ignore the parenthetical references to the non-limiting figure 3 reads, a device according to any one of the preceding claims characterized in that the means for mechanical connection of the shutters

[00:03:49] Speaker 00:
are constituted by at least one stud provided on one of the shutter blades that lodges in a corresponding orifice of the blade of the other shutter.

[00:03:59] Speaker 00:
That's at the bottom of 177.

[00:04:00] Speaker 03:
But you agree if it were non-limiting, there could have been other ways that you would have said it that would have made it more clearly non-limiting.

[00:04:08] Speaker 03:
You could have said eight or nine.

[00:04:10] Speaker 03:
You could have said EG8.

[00:04:16] Speaker 00:
I suppose that's possible, Your Honor, but Constantine plainly says that figure three is non-limiting.

[00:04:21] Speaker 00:
So we think that's sufficiently clear to establish that any parenthetical reference to it is similarly non-limiting.

[00:04:28] Speaker 03:
And one of your friend's responses to that argument, as I recall, is the claim four, where it talks about shutter blades.

[00:04:38] Speaker 03:
It refers to both eight and nine.

[00:04:40] Speaker 03:
So I think their argument is that that suggests that if you were talking about both or either, you could have used both references.

[00:04:50] Speaker 00:
Right.

[00:04:50] Speaker 00:
And as we point out in our reply brief, claim four, where it refers to both of the shutter blades, is in fact referring to both of the shutter blades, not one or the other shutter blade.

[00:05:00] Speaker 00:
And in claim five, our position is

[00:05:03] Speaker 00:
You wouldn't put the stud on both shutter blades.

[00:05:06] Speaker 00:
You would put the stud or the orifice on one or the other of the shutter blades.

[00:05:10] Speaker 00:
So it makes perfect sense that Constantine refers to them one at a time.

[00:05:14] Speaker 03:
So just let me ask you, this suggestion that it's non-limiting, I think we all understand that to be the same thing.

[00:05:22] Speaker 03:
But is that precisely the same thing as disclosing something?

[00:05:27] Speaker 03:
I mean, just because something is non-limiting,

[00:05:30] Speaker 03:
I mean, what you have to do here is have a disclosure.

[00:05:33] Speaker 03:
That's your argument, that Constantine 5 actually discloses it.

[00:05:37] Speaker 03:
And isn't there a little bit of a daylight between something that's non-limiting versus something where there's an actual disclosure?

[00:05:45] Speaker 00:
There may be, Your Honor, and we discuss this by reference to the board's tricycle example, where they say that perhaps disclosing a cycle comprising a wheel would not necessarily disclose a tricycle or a quadricycle or every possible permutation of a cycle comprising a wheel.

[00:06:04] Speaker 00:
What we're talking about in this case is a very simple mechanical mechanism for attaching two shutter blades to one another by sticking a protrusion from one

[00:06:15] Speaker 00:
into some sort of orifice in the other.

[00:06:17] Speaker 00:
That's a basic mechanical connection, and any skilled artisan would have understood, based not only on claim five, but also on Constantine's disclosure at appendix 173, that the purpose of its invention is simply to pair the movement of these two shutter blades, that this is the simplest mechanism for doing so, and by

[00:06:41] Speaker 00:
drawing and elucidating one of them and saying that the purpose is

[00:06:47] Speaker 00:
a purpose that could easily be accomplished, as any skilled artist would know immediately by the other configuration, we think that's disclosure.

[00:06:54] Speaker 03:
Was there any expert testimony here to say what you're saying here as an attorney argument, which is I would have read claim five as being the narrative and not necessarily being limited by the reference to eight?

[00:07:10] Speaker 03:
How well a person skilled in the art would have read claim five?

[00:07:15] Speaker 00:
Our expert Dr. Woolley testified, and I believe said in his report as well, that the two configurations would accomplish the same thing, and that would have been immediately apparent to a person of skill in the art.

[00:07:30] Speaker 00:
And in fact, Orin's own expert conceded at his deposition that the two configurations would equally accomplish Constantine's objective.

[00:07:44] Speaker 00:
So we think that on that issue of whether Constantine discloses the claimed configuration, Constantine both includes an express disclosure and the board erred by requiring a verbatim express disclosure and not considering what would have been apparent to a skilled artisan.

[00:08:03] Speaker 00:
But we would note that even if the court is not convinced that Constantine makes the disclosure, we also have two arguments that do not depend on Constantine making the disclosure, and the board

[00:08:14] Speaker 00:
failed to address those arguments entirely.

[00:08:17] Speaker 00:
It appears that the board did not understand us by the time that it issued its final decision to have made either of the arguments because they certainly didn't say

[00:08:32] Speaker 00:
Grid Energy has made these arguments, and we declined to address them.

[00:08:35] Speaker 00:
They simply.

[00:08:35] Speaker 03:
So your view is that we have to, one, my first question is what the standard of review is for the boards having concluded that you waived it.

[00:08:46] Speaker 03:
And what do we review that under?

[00:08:47] Speaker 03:
And two, wanting to show us in the appendix where you think you've preserved it adequately.

[00:08:51] Speaker 00:
Sure.

[00:08:52] Speaker 00:
So in order to demonstrate that it fairly addressed the arguments that we made, the board would have to provide reasoning sufficient for the court

[00:09:01] Speaker 00:
be able to discern what the board's rationale was.

[00:09:03] Speaker 00:
We don't have an express finding from the board that we waived these arguments.

[00:09:07] Speaker 00:
What we have is a failure by the board to address the arguments.

[00:09:10] Speaker 00:
And so on the second argument that's in our brief, we said to the board, forget about Constanton.

[00:09:17] Speaker 00:
Disregard Constanton entirely.

[00:09:19] Speaker 00:
A skilled artisan would simply have flipped the configuration within Aung Sun.

[00:09:24] Speaker 00:
And we said that the motivation for that change was that the catch is a more complicated and expensive part than the projection.

[00:09:31] Speaker 00:
We presented unrebutted evidence on that point.

[00:09:33] Speaker 00:
That's at page 41 of our brief.

[00:09:36] Speaker 00:
And critically, the board actually acknowledged in its institution to say.

[00:09:39] Speaker 03:
No, no, OK.

[00:09:39] Speaker 03:
Maybe I'm a little confused.

[00:09:41] Speaker 03:
But just on the play with regard to those arguments, I thought the board reached that.

[00:09:46] Speaker 03:
But that was in the context of your saying, well, we reject the Constantine claim five, expressly discloses it.

[00:09:54] Speaker 03:
But even if Constantine did,

[00:09:57] Speaker 03:
we think there wouldn't have been an adequate motivation to combine that with the other reference because of the expense.

[00:10:04] Speaker 03:
That's what I understood the board to be saying.

[00:10:08] Speaker 00:
Your Honor, they said that, but in finding that there wasn't an adequate motivation because of the expense, what the board relied on was the expense of Constanton's parts, not the expense of Engsoon's parts.

[00:10:20] Speaker 00:
And we presented unrebutted evidence that, with respect to Eng Soon's part, that finding was wrong.

[00:10:26] Speaker 00:
So the board imported its findings about Constantine to an argument as to which the findings about Constantine were entirely irrelevant.

[00:10:37] Speaker 03:
You want to go back to the second part, I think, of my question, which is show us in the appendix where you think you preserve the argument.

[00:10:46] Speaker 00:
Sure.

[00:10:47] Speaker 00:
So at appendix 1747, that's our reply before the board, we repeated that this argument was, quote, independent of Constantine, and that Orrin's evidence about Constantine was therefore, quote, irrelevant.

[00:11:03] Speaker 00:
And I point out that at appendix 668 in its institution decision, the board actually said, this is when they instituted review, the board said that this exact argument was independent of Constantine.

[00:11:17] Speaker 03:
Give me a chance.

[00:11:18] Speaker 03:
Let's look at 668, even if Constantine does not teach.

[00:11:27] Speaker 00:
even if Constantin does not teach Stud 15 on Shredder Blade 9.

[00:11:32] Speaker 00:
Petitioner also reasons that.

[00:11:34] Speaker 00:
And then it goes from there.

[00:11:35] Speaker 00:
That's at the top of the page.

[00:11:36] Speaker 00:
And then at the end of that paragraph, the board says this argument, quote, appears independent of Constantin's teachings.

[00:11:48] Speaker 00:
And if the court has questions about standing, I'd like to address them.

[00:11:51] Speaker 00:
But otherwise, I'll reserve the rest of my time for rebuttal.

[00:11:56] Speaker ?:
Thank you.

[00:11:56] Speaker ?:
Thank you.

[00:12:22] Speaker 01:
Chief Judge Prost, and may it please the court, Jason Wilcox on behalf of Warren Technologies.

[00:12:27] Speaker 01:
I'll address the merits of the board's decision in a second.

[00:12:30] Speaker 01:
But the court ultimately does not need to reach the merits, because grit does not have Article III standing to challenge the board's decision, and this appeal should be dismissed.

[00:12:38] Speaker 01:
By the certain of the claim.

[00:12:41] Speaker 02:
Before you get going, I pose a question which I ask both of you to answer.

[00:12:45] Speaker 02:
Do you agree independent claim one of three, four, one is illustrative?

[00:12:49] Speaker 01:
I do agree, Judge Wall.

[00:12:50] Speaker 01:
The claim one is illustrative.

[00:12:51] Speaker 03:
Now, in the earlier proceeding, there were claims that were dismissed.

[00:12:55] Speaker 03:
And prior to that, there were claims that were dismissed without prejudice.

[00:12:59] Speaker 03:
So let's focus on the claims that were dismissed without prejudice.

[00:13:03] Speaker 03:
Why wouldn't that necessarily have given your colleagues standing here?

[00:13:09] Speaker 03:
There are claims that you initially pursued as being infringing.

[00:13:15] Speaker 03:
Currently, if they came back, if you came back and sued them, which you could do because the claims were dismissed without prejudice, there are damages that you could still incur even with the passage of time.

[00:13:29] Speaker 03:
So where is the problem with standards?

[00:13:32] Speaker 01:
So I think the problem with standing Chief Judge Prost is that there's been a 20-month gap between the time we filed our notice of appeal and the time of the dismissal.

[00:13:40] Speaker 01:
And in those 20 months, my client took no affirmative acts to assert its patents against Grit.

[00:13:47] Speaker 01:
It made no threats that it was going to reassert those claims.

[00:13:50] Speaker 01:
And it did nothing that would put them at any risk.

[00:13:53] Speaker 01:
of being sued.

[00:13:54] Speaker 01:
And so I agree that there's a possibility that they could be sued, Chief Judge Prost.

[00:13:58] Speaker 01:
That's certainly possible.

[00:13:59] Speaker 01:
But as this court said in momenta, a possibility is not enough.

[00:14:03] Speaker 01:
There needs to be a certainty.

[00:14:04] Speaker 02:
So is this a stipulation in open court that they'll never sue on that?

[00:14:07] Speaker 01:
Well, as I think you can probably appreciate, Judge Walk, I don't have authority for my client to make that stipulation.

[00:14:12] Speaker 01:
But for the standing.

[00:14:13] Speaker 02:
Well, maybe you tell me that they already have made such a stipulation.

[00:14:16] Speaker 01:
So my client hasn't made that stipulation.

[00:14:18] Speaker 01:
The other side also has never asked for that stipulation.

[00:14:21] Speaker 01:
And ultimately for the standing inquiry, whether I gave that stipulation up here today or not would be irrelevant since standing is assessed at the time they file their notice of appeal.

[00:14:30] Speaker 03:
And by the time they filed their notice of appeal, you would already allege that once.

[00:14:37] Speaker 03:
You dismissed it without prejudice, not with prejudice.

[00:14:41] Speaker 03:
And so the fact that you haven't re-initiated the suit within 20 months, that's sufficient to say that there's no standing here.

[00:14:48] Speaker 01:
Well, I think two responses, Chief Judge Brooks.

[00:14:50] Speaker 01:
The first response is, we stipulated to a dismissal without prejudice, because that's what they suggested.

[00:14:56] Speaker 01:
You can see that at supplemental appendix three.

[00:14:59] Speaker 01:
And they're the ones who actually drafted that dismissal without prejudice, because they were also dismissing one of their patents and wanted to keep that flexibility.

[00:15:07] Speaker 01:
So what?

[00:15:07] Speaker 01:
So we didn't propose it.

[00:15:08] Speaker 03:
What do we do with that?

[00:15:09] Speaker 03:
They weren't contemplating.

[00:15:11] Speaker 03:
We weren't arguing the standing case 25 months ago or whatever it is that they did that.

[00:15:16] Speaker 03:
So what?

[00:15:17] Speaker 03:
That means they dismissed it without prejudice.

[00:15:20] Speaker 03:
Maybe that's what they wanted to do.

[00:15:21] Speaker 03:
But that doesn't resolve the issue of whether or not they currently have standing or are at risk for future infringement.

[00:15:28] Speaker 01:
Well, I think it does show that we weren't playing games when we dismissed without prejudice.

[00:15:32] Speaker 03:
No one's suggesting you were playing games, but that doesn't mean that you foreclosed as you responded to Judge Wallach.

[00:15:39] Speaker 03:
You can't say with any certainty or any basis at all that you're saying that you're not going to refile the case.

[00:15:46] Speaker 01:
So I can tell you that we don't have any plans presently to do that.

[00:15:50] Speaker 01:
And what I can also tell you is that what this court's precedents require is that

[00:15:54] Speaker 01:
there be a certainly impending risk.

[00:15:56] Speaker 01:
As this court recently said in Fisher and Paykel, it must be an immediate threat of suit.

[00:16:01] Speaker 01:
There is no immediate threat of suit here, Your Honor.

[00:16:04] Speaker 01:
There's the possibility, which Momenta said is not enough.

[00:16:07] Speaker 01:
And they are the second evidentiary problem, which is they haven't put in any declaration showing that anyone at grit is actually concerned about a suit or that it's affecting their business in any way.

[00:16:17] Speaker 01:
In this case,

[00:16:18] Speaker 02:
Silence appears to be an affirmative statement.

[00:16:20] Speaker 02:
And your silence as to it's never going to happen is an affirmative statement.

[00:16:25] Speaker 02:
So why don't you go on to your other issues?

[00:16:26] Speaker 01:
Yeah.

[00:16:27] Speaker 01:
I'm happy to, Judge Wallach.

[00:16:28] Speaker 01:
And I think that on the merits, the board's decision is also correct and should be affirmed.

[00:16:33] Speaker 03:
OK, so let's talk about Constantine, claim five.

[00:16:37] Speaker 03:
If there was no parenthetical reference to 8 in the Constantine claim, and you can look at it.

[00:16:43] Speaker 03:
Where is it?

[00:16:44] Speaker 03:
On page 177.

[00:16:50] Speaker 03:
So we look at this and pretend that 8 doesn't appear after shutter blades.

[00:16:56] Speaker 03:
Where would that leave us?

[00:16:57] Speaker 03:
If that were removed, doesn't this language clearly disclose the stud and the orifice can each be on either shutter?

[00:17:07] Speaker 01:
Well, I still think it would necessarily disclose that, Chief Judge Prost, but I also think that that's doesn't... I'm sorry, I didn't hear.

[00:17:14] Speaker 03:
You agree that it would necessarily, if you took out the eight, at least in your view, it would necessarily disclose it.

[00:17:22] Speaker 01:
Well, I still don't think it would necessarily disclose it, because it says that there is one shutter that would have a stud that lodges into the corresponding orifice of the other shutter, but it doesn't say where the actuator fits into that.

[00:17:35] Speaker 01:
And what's required is an actuator having a receptacle.

[00:17:38] Speaker 01:
So it would still be missing that even if you took those numbers out.

[00:17:42] Speaker 01:
But here we do have the numbers there.

[00:17:44] Speaker 01:
And the board found in its decision at appendix 18 through 21 that given those numbers there and given what you see in figure three on appendix 181 and given the description that you see on appendix 175, which discusses the same arrangement where the shutter eight is attached to the actuator

[00:18:03] Speaker 01:
and has a stud on it, that it does not explicitly disclose the arrangement that's required by the claims of the 341 patent.

[00:18:10] Speaker 03:
So what is the relevance of the fact that under Figure 3, they say it's non-limiting?

[00:18:17] Speaker 03:
What does non-limiting mean, in your view?

[00:18:19] Speaker 01:
Well, I think that non-limiting means that there could be other ways of doing the arrangement, just as it says.

[00:18:23] Speaker 01:
There's actually specific examples on 175 of, for example, flipping it so that the mobile containers on the bottom

[00:18:30] Speaker 01:
and the other containers on the top.

[00:18:32] Speaker 01:
And there's examples on 175 of the opening means that's actually disclosed is you have a shutter that slides.

[00:18:39] Speaker 01:
They say, well, you could have other versions.

[00:18:41] Speaker 01:
What that non-limiting is saying is there's other ways to do this device, but it doesn't.

[00:18:45] Speaker 03:
OK, go back to claim five, Constantine.

[00:18:48] Speaker 03:
What if it said provided on one of the shutter blades parenthetically

[00:18:53] Speaker 03:
eight or nine, would that be a sufficient disclosure?

[00:18:58] Speaker 01:
I think that that could be a sufficient disclosure, Chief Judge Prost.

[00:19:01] Speaker 03:
But how could it not be?

[00:19:03] Speaker 03:
Could be?

[00:19:04] Speaker 03:
Would it be a sufficient disclosure?

[00:19:06] Speaker 03:
I mean, this is a hypothetical, but I'd like an answer to the question.

[00:19:10] Speaker 01:
Well, once again, claim five doesn't say where the actuator is.

[00:19:13] Speaker 01:
So when you don't know where the actuator is at, I can't give you a definite answer about whether the stud is attached to the actuator or whether it's attached to the other shutter.

[00:19:22] Speaker 01:
And so claim five is going to be a problem no matter what you do with the numbers.

[00:19:26] Speaker 03:
So even if claim five had said on one of the shutter blades either eight or nine, you still don't think it would be a sufficient disclosure?

[00:19:33] Speaker 01:
I still think it wouldn't be a sufficient disclosure.

[00:19:35] Speaker 01:
But ultimately here, we do have the numbers that are here.

[00:19:38] Speaker 01:
And the board made findings at appendix 18 through 21 that given what's actually disclosed in Constantine, that doesn't make the actual express disclosure that they argued.

[00:19:49] Speaker 01:
And that's reviewed for substantial evidence.

[00:19:51] Speaker 01:
And I think that it's supported by what the record shows.

[00:19:54] Speaker 03:
There's this other issue out there, which is whether they preserved or waived this other question.

[00:20:00] Speaker 03:
But on the point that your friend raised about the motivation to combine, don't we have cases that suggest that the expense merely because something costs more than something else is not a sufficient basis for saying there was no motivation?

[00:20:15] Speaker 03:
It seems to me what the board said here is analysis.

[00:20:19] Speaker 03:
They said, even if Constantine claimed phi is a sufficient disclosure, there'd still be a problem.

[00:20:26] Speaker 03:
And they also, as your friend pointed out, related it to the expense of Constantine and not to the other reference.

[00:20:31] Speaker 03:
But tell me about the extent to which we use as a matter of law the fact that something would have been more expensive to be a sufficient basis for rejecting a motivation to combine.

[00:20:43] Speaker 01:
So a couple responses to that, Chief Judge Prost.

[00:20:46] Speaker 01:
I agree with you that the cases do say that.

[00:20:49] Speaker 01:
But what the board was doing was responding to the actual motivation to have a combined argument that they made at Appendix 104.

[00:20:54] Speaker 01:
And the argument that they made was a person would be motivated to swap Eng Soon's catch and projection because a receptacle is more expensive to make than a pin.

[00:21:09] Speaker 01:
And so you would want to put the receptacle on

[00:21:12] Speaker 01:
the support rather than on the mobile container, because you have more mobile containers, so you'd want the cheaper part on that.

[00:21:18] Speaker 01:
And so what the board did is it looked at that, and it said, we think that's wrong.

[00:21:22] Speaker 01:
So if that's the argument that they're presenting, there's nothing wrong with the board then looking at that argument and saying it's wrong.

[00:21:27] Speaker 01:
And they also have the point that it's about Constantine rather than EngSoon.

[00:21:31] Speaker 01:
But if you look at what their expert actually argued at appendix 541.

[00:21:34] Speaker 03:
Well, why don't we look at the board

[00:21:39] Speaker 03:
I have a quote from the board.

[00:21:51] Speaker 03:
In other words, even if we found that Constantine discloses an orifice, a receptacle attached to its actuator, which we do not, we also found that transposing Aung San Suu Kyi's pen and receptacle, as proposed by the petitioner, would result in a more expensive system.

[00:22:09] Speaker 01:
Correct and that's in response to their argument that would have been it would have resulted that the motivation would have been that it Resulted in a less expensive system and the board is saying I understand that's your argument But the evidence that we actually see in the record from grit sex are sorry from orange expert is it would be a more expensive system To do the swap that you're proposing so it's responding to their argument about it be less expensive saying no actually you're wrong It'd be more expensive

[00:22:33] Speaker 01:
So that can't be the motivation to combine, despite the fact that that's what you are telling us.

[00:22:37] Speaker 03:
So give me the site for where they said that their argument on motivation involves that it's less expensive.

[00:22:43] Speaker 01:
Yes, so that would be appendix 104 is where they made it in the petition, and appendix 541 is where their expert made it in his declaration.

[00:22:56] Speaker 01:
And if you look at,

[00:22:58] Speaker 01:
appendix 541 in particular, what he says is a receptacle in general is less expensive than a pin.

[00:23:07] Speaker 01:
And so then our expert comes back and gives a specific example of a pin and a receptacle what Constantine teaches and shows that they're more expensive.

[00:23:15] Speaker 01:
So their expert offered a generic argument, one that wasn't tied specifically to Eng Soon's components, and said, as a general matter, receptacles are cheaper than pins.

[00:23:24] Speaker 01:
And our expert came back with a specific example of a receptacle and bin and said, I've shown they're more expensive.

[00:23:28] Speaker 01:
And the board credited that.

[00:23:30] Speaker 01:
And that's what the board is doing at Appendix 22 of its decision.

[00:23:37] Speaker 01:
Now, they now try and recast this as an argument that has nothing to do with Constantine.

[00:23:42] Speaker 01:
But that's not what they said in their petition.

[00:23:44] Speaker 01:
If you look at page 104 where they make it in their petition,

[00:23:47] Speaker 01:
It's part of a series of arguments they make starting at appendix 102 under the heading of obvious modifications to EngSoon in view of Constantine.

[00:23:56] Speaker 01:
So this argument was always linked to Constantine.

[00:23:59] Speaker 01:
And then the other argument that they've tried to raise on appeal about whether it would have been obvious to swap Constantine's components, the board actually found waived at appendix 2695 to 2696.

[00:24:14] Speaker 01:
And given that waiver, to answer your question earlier, Chief Judge Prost, about the standard of review, this court has said in Intelligent Biosystems and in Ericsson that that is reviewed for an abuse of discretion.

[00:24:24] Speaker 03:
What about the citation they gave us earlier, which I can't remember off the top of my head to demonstrate that they did not waive that argument?

[00:24:31] Speaker 01:
So number one, that's an argument that they would have made in their reply.

[00:24:34] Speaker 01:
And it's very clear on the case of Intelligent Biosystems, the argument has to be made in the petition.

[00:24:39] Speaker 01:
But number two, that was just a generic argument about whether it would have made sense to swap EngSoon's components.

[00:24:49] Speaker 01:
It was not made under a specific heading telling the board, we are making the express argument that this has nothing to do with EngSoon.

[00:24:55] Speaker 03:
Sorry, nothing to do with Constantine.

[00:24:57] Speaker 03:
I have a little trouble figuring out what the difference is between a generic argument that someone makes and another kind of argument.

[00:25:05] Speaker 03:
What do you mean by a generic argument?

[00:25:07] Speaker 01:
What I mean is it was just responding to the arguments that our expert made.

[00:25:11] Speaker 01:
It wasn't under a separate heading or anything signaling for the board that they were making an express argument that Engsoom discloses to set Constantine aside.

[00:25:19] Speaker 01:
And I think we know they weren't making that argument, and the board was allowed to rely on it.

[00:25:23] Speaker 01:
Because if you look at Appendix 71, where they tee up for the board what their arguments are in their petition, what they say is Engsoom discloses everything except for the location of the pin and the receptacle.

[00:25:34] Speaker 01:
but that a person of ordinary skill in the art would use Constantine to fill that gap.

[00:25:39] Speaker 01:
I'm sorry, you're telling me appendix 71.

[00:25:42] Speaker 01:
On the top there?

[00:25:44] Speaker 01:
So if you look at 70 to 71 on appendix.

[00:25:49] Speaker 01:
And what they say on those pages is, they say, Engsoon and Constantine render claims 1 through 3 and 5 obvious for multiple reasons.

[00:25:58] Speaker 01:
For example,

[00:25:59] Speaker 01:
Engsoon's discharge system includes all the limitations of 1 through 3 and 5, except for the position of the catch and projection for moving the game.

[00:26:06] Speaker 01:
And then say, but Constantine discloses such means can be reversed once disclosed in Engsoon, just as recited in claims 1 through 3 and 5.

[00:26:13] Speaker 01:
So that was the argument they were making there.

[00:26:14] Speaker 01:
They weren't making a separate argument.

[00:26:16] Speaker 01:
If you look what the board instituted on at Appendix 7, it instituted on the combination of Engsoon and Constantine.

[00:26:21] Speaker 01:
It didn't institute on the combination of Engsoon alone.

[00:26:25] Speaker 01:
And the only thing they're using Constantine for

[00:26:27] Speaker 01:
is to disclose the location of the pin in the receptacle.

[00:26:31] Speaker 01:
So there was nothing that the board wouldn't have had any reason to think that they were making this argument that they're now trying to resurrect in front of the court.

[00:26:44] Speaker 01:
And so ultimately, Your Honor, I think that the board looked at this.

[00:26:49] Speaker 01:
And if you look at Appendix 20, they considered it from the understanding of a person of ordinary skill in the art.

[00:26:54] Speaker 01:
And that's exactly what the board's supposed to do.

[00:26:56] Speaker 01:
and its decision is entitled to is reviewed for substantial evidence.

[00:27:00] Speaker 01:
And under that deferential standard of review, I think the board's decision should be affirmed if there are no further questions.

[00:27:07] Speaker 03:
Thank you.

[00:27:25] Speaker 00:
So I'd like to address Constantine's claim five, then the cost argument, and then the third argument that you just discussed with Mr. Wilcox.

[00:27:33] Speaker 00:
On claim five, I think my friend's argument reveals that their approach is entirely divorced from the skilled artisan standard.

[00:27:40] Speaker 00:
They now won't concede that even if the parentheticals included both the top shutter blades and the bottom shutter blades, this would be a disclosure.

[00:27:50] Speaker 00:
On the cost argument, I point the court to Appendix 24, and that's where the board issued its finding that related to Constantine and the relative costs of Constantine's components.

[00:28:03] Speaker 00:
There is no finding that ties the costs of Constantine's components to the relevant question, which is the cost of Aeng-sun's components.

[00:28:14] Speaker 00:
At 88, we relied on a separate prior art reference, which is McCarthy, which showed a very complicated catch.

[00:28:24] Speaker 00:
and demonstrated that the catch was a more complicated part than the projection.

[00:28:28] Speaker 00:
There's no finding that rebuts that.

[00:28:30] Speaker 00:
There was no evidence that rebutted that.

[00:28:32] Speaker 00:
There was only the inquiry into the relative costs of constantance parts.

[00:28:37] Speaker 02:
Why was there no mention of Mr. Smith's testimony about the expenses of the various pieces, steel, aluminum, and so on, in the blue brief?

[00:28:47] Speaker 00:
because it relates to Konstantin's parts, not to Engsoen's parts.

[00:28:52] Speaker 00:
And I don't believe they've tied those costs to Engsoen's parts.

[00:28:57] Speaker 00:
So we view that testimony as essentially irrelevant to the inquiry into the relative costs of Engsoen's parts.

[00:29:04] Speaker 00:
And then the third argument about the mere mechanical fix, Mr. Wilcox says that there was no separate heading in our brief.

[00:29:12] Speaker 00:
So in our opening brief,

[00:29:13] Speaker 00:
At appendix 105, we made this argument.

[00:29:16] Speaker 00:
It's a full page, three paragraphs under a separate heading.

[00:29:19] Speaker 00:
Then they failed to respond to it before the board.

[00:29:22] Speaker 00:
And at appendix 1748, in our reply before the board, we have a point heading that says, unaddressed, the obviousness of replacing Aeng-soon's catch and projection with Constantine's stud and orifice.

[00:29:37] Speaker 00:
And that's exactly the argument that they say we did not make.

[00:29:41] Speaker 00:
So we'd submit that on the latter two issues, the board simply failed to address arguments that we fairly presented to it, one of which it understood we had fairly presented to it at the time it instituted, and that with respect to Constantine, there was a disclosure.

[00:29:55] Speaker 03:
Can you just take the last 55 seconds, since your friend did raise the standing issue, do you want to respond to that very briefly?

[00:30:02] Speaker 00:
Sure.

[00:30:04] Speaker 00:
So we think Arrowhead.

[00:30:05] Speaker 00:
conclusively demonstrates that we have standing here.

[00:30:08] Speaker 00:
Arrowhead says that where there is a, as the court now knows, a current activity that's been expressly charged

[00:30:16] Speaker 00:
there is a per se rule that there is standing.

[00:30:19] Speaker 03:
Yeah, but your friend relies on the fact that one, as you heard, you were the one that prompted the dismissal without prejudice.

[00:30:27] Speaker 03:
And he relied also on, he emphasized also the fact that you waited 22 months and nothing has happened, no suggestion that you're going to be subject to suit in the future in this 22 month period that's elapsed.

[00:30:39] Speaker 00:
Sure, but as Judge Wallach has pointed out,

[00:30:41] Speaker 00:
they refuse to affirm that they won't sue us.

[00:30:44] Speaker 00:
So they've accused us of infringement.

[00:30:45] Speaker 00:
They've never retracted the accusation of infringement.

[00:30:48] Speaker 00:
They've only retracted, essentially, their lawsuit.

[00:30:52] Speaker 00:
But they believe and they've told the federal district court that we infringed their patent.

[00:30:57] Speaker 00:
And now they refuse to tell this court that they won't sue on that basis.

[00:31:01] Speaker 00:
So we're squarely within arrowhead.

[00:31:03] Speaker 00:
And as we point out in our briefs, the court has repeatedly rejected this past versus present distinction that is what their argument now boils down to.

[00:31:12] Speaker 03:
If there are no further questions, thank you.