[00:00:02] Speaker 03:
The United States court of appeals for the federal circuit is now open and in session.

[00:00:06] Speaker 03:
God save the United States and this honorable court.

[00:00:12] Speaker 04:
The first case for argument this morning is 19 two, four, two, three, water blasting versus Yonko.

[00:00:18] Speaker 04:
Mr. Lockton, whenever you're ready to begin.

[00:00:23] Speaker 00:
Thank you, your honor.

[00:00:24] Speaker 00:
And may it please the court.

[00:00:25] Speaker 00:
This is Andrew Lockton appearing on behalf of the appellant water blasting LLC.

[00:00:30] Speaker 00:
Your Honor, the final written decision should be reversed and remanded for at least three reasons.

[00:00:35] Speaker 00:
First, it fails substantial evidence review because its findings are based only on conclusory statements untethered from the references provided by a biased expert, the petitioner's owner, Mr. Booth.

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Second, even with the conclusory assertions from Mr. Booth, the final written decision fails substantial evidence review because there are certain limitations which lack any evidence in the record.

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And finally,

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the board legally erred in its teaching away analysis.

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And under the correct analysis, the only record evidence is that the primary reference teaches away from the invention claimed in the 116 patent.

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As addressed in the briefing, claim one is illustrative for the issues presented here today.

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Critical limitations to that claim are that the 116 patent claims a two-vehicle ultra-high water pressure cleaning system for removing roadway markings.

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The components of the claim and invention are distributed between the two vehicle systems.

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The secondary vehicle, the tractor as it's sometimes referred to in the record, contains an articulating link which positions a mobile blast head which allows the system to be precise for removing roadway markings.

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And the primary vehicle, sometimes referred to as the truck, contains a liquid reservoir

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the sump, which collects the liquid and debris from the road.

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Mr. Lofton, this is Judge Gross.

[00:01:54] Speaker 04:
Let me just interrupt you for a moment.

[00:01:56] Speaker 04:
Starting at your final point, which was the teaching away point, where is the teaching?

[00:02:03] Speaker 04:
I assume you're talking about Clements.

[00:02:05] Speaker 04:
And my understanding of the record is Clemens doesn't discuss removing pavement markings, but I don't understand how you get from a failure to discuss something to a teaching away under our case law.

[00:02:19] Speaker 04:
So can you explain that to me?

[00:02:20] Speaker 00:
Absolutely, Chief Judge.

[00:02:25] Speaker 00:
The board looks only to Clemens, which it sounds like is the discussion that we're having right now.

[00:02:30] Speaker 00:
And I agree, Clemens is silenced in itself.

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But under the court's case law, that's only one of two possible tests, and it's the inappropriate test given the record before us.

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Under the Moutet case, which is also repeated recently in the telephonic Theoboliget-L.M.

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Erickson v. TCL case, the correct analysis for teaching away is when either a person of ordinary skill in the art reading the reference would be discouraged from following a path that is actually set out in the reference

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or the alternative test is that a skilled artisan reading the reference would be led in a divergent direction from the path that was taken by the applicant.

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Clemens doesn't set out the path that it's being used for.

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And so looking for a discrediting of that path is the inappropriate test.

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That's the Fulton test that the board applied.

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Under the correct test, we would actually look to what the petitioner's expert, Mr. Booth, testified

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about how a skilled artisan reading Clemens would view it.

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And in his testimony, the skilled artisan reading Clemens would not be motivated to create a road marking removal device.

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The board didn't look to that.

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They didn't consider the evidence of what a skilled artisan reading Clemens would understand and the direction.

[00:03:50] Speaker 04:
Well, is there any language in, excuse me, is there any language in Clemens that you rely on for that point or is it exclusively the testimony you just referred to?

[00:04:01] Speaker 04:
Can you point to anything in Clemens that gets you to a teaching UA?

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I don't rely on any of the language in Clemens.

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I rely on the testimony of the petitioner's expert.

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And the reason is because under the Fulton test, Clemens would have had to set out a path of roadway marking removal and then discredit it for that test to be the appropriate analysis.

[00:04:30] Speaker 00:
Clemens is silent, it doesn't set out a test.

[00:04:32] Speaker 00:
We look for discrediting when the reference itself actually teaches something and counsel or the patent applicant is attempting to argue that even reading what's taught in a reference, a skilled artisan would be led in a different direction because of a discrediting.

[00:04:49] Speaker 00:
Here we simply have silence in Clemens and the expert testified that a skilled artisan reading it would be led in a different direction.

[00:04:57] Speaker 02:
This is Judge Bryson.

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When you say led in a different direction, do you mean simply that the person of skill in the art reading the reference would not be motivated to implement that reference either alone or in combination in a way that achieves the invention?

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Yes.

[00:05:21] Speaker 00:
If I could clarify, I guess, a little bit of the way I understood the question.

[00:05:26] Speaker 00:
I mean it in the sense, Judge Bryson, that what we have in the record is that the expert testified that a skilled artisan reading Clemens would not be motivated to create a roadway removal, a roadway marking removal system.

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They would look at Clemens and look for something else.

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This also dovetails into a lot of our motivation to combine arguments where it addresses the point that

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the expert testified that only after a skilled artisan had the motivation to perform the function of the 116 patent would they then look to Clemens and combine it with the other prior art.

[00:06:05] Speaker 02:
So it sounds like to me you're saying that if a reference does not motivate a combination or the achievement of the invention, then it teaches a way.

[00:06:18] Speaker 00:
What I'm saying is that in most cases,

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The issue is going to be that we won't have a record of the petitioner or patent challenger admitting that a skilled artisan would go in a different direction reading a reference.

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But I do agree with the basic premise of your question that the test is if a skilled artisan is reading a reference and upon reading that reference they would go in a direction divergent from what is taken in the challenged patent, in this case the 116 patent,

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then it is teaching away.

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The specific language out of MUTET is that the test is, would the skilled artisan be led in a direction divergent from the path that was taken by the applicant?

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So there has to be something in the original reference, in this case, Clemens, that would lead the skilled artisan towards the path taken in the 116 patent.

[00:07:17] Speaker 00:
We don't have that.

[00:07:18] Speaker 03:
Council?

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

[00:07:19] Speaker 03:
This is Judge Stolz.

[00:07:21] Speaker 03:
I hear what you're saying.

[00:07:23] Speaker 03:
The test, regardless, the question you're asking us to review is a factual issue, right?

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And the board found differently in its factual conclusion.

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So why isn't there substantial evidence to support that finding?

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I believe that the board erred in its analysis because it only looked to the discrediting aspect of

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a teaching away analysis, and it didn't look to the appropriate prong of that test.

[00:07:55] Speaker 00:
Because Clemens doesn't set forth any path to follow, which leads to the direction of the 116 patent, it was inappropriate to look for discrediting of a path that's not laid out in the reference.

[00:08:08] Speaker 00:
They didn't apply the correct test, which was to look at the record evidence to find what a person of skill in the art reading Clemens would be, what path they would be leading.

[00:08:19] Speaker 00:
So the problem for the remand?

[00:08:24] Speaker 03:
Can I ask you another question?

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In the board's analysis of the motivation to combine, did it not consider whether Clemens would lead somebody down this path?

[00:08:40] Speaker 03:
I thought that it did.

[00:08:42] Speaker 03:
Just in its analysis of the motivation to combine.

[00:08:47] Speaker 00:
Well, in the board's analysis of the motivation to combine, it's flawed for a number of reasons and in every aspect fails substantial evidence review.

[00:08:57] Speaker 00:
I don't know that it actually addressed this issue.

[00:09:03] Speaker 00:
The main reason that the board cites for finding a motivation to combine is that it incorrectly relies on the petitioner's expert stating that Clemens is a large truck.

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There's no record evidence to support that.

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It's untethered from the evidence.

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In fact, it's even contradicted by what Clemens says.

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And the board jumps from Clemens being large to then having the NLB stripe jet added as a secondary vehicle.

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Again, when NLB doesn't teach that it's a secondary vehicle and doesn't teach that you could combine it with anything, it's relied solely on the assertions of the petitioner's expert.

[00:09:45] Speaker 00:
And then from there, it says, well, looking at NLB, then you have a motivation to remove roadway markings.

[00:09:53] Speaker 03:
They say an ordinary scaled artisan would combine NLB with Clemens to increase Clemens's capabilities so that it could remove such coatings.

[00:10:04] Speaker 03:
Right?

[00:10:06] Speaker 03:
I think that's the rationale that was provided.

[00:10:10] Speaker 00:
I think that's the last portion of what they say.

[00:10:13] Speaker 00:
And that's actually directed to changing the parts of the Clemens reference, the pump of Clemens, with one of the pumps of the NLB strike jet or star jet references.

[00:10:27] Speaker 00:
However, by the time the board has already gotten there, that rationale makes no sense either, because if we've already gotten to that point, and we contend that we should not have even gotten there, but if we've already gotten to the point of combining Clemens and NLB

[00:10:43] Speaker 00:
to create the two-vehicle system, then the NLB stripe jet already has the ultra-high pressure water pump.

[00:10:50] Speaker 00:
There would be no motivation to then also change Clemens.

[00:10:56] Speaker 00:
But I think that also in a general principle, this court has said in many occasions that the general idea to make something better or to increase capabilities is not a motivation that survives substantial evidence review.

[00:11:20] Speaker 00:
So if we go back to the motivation, I think that the board's analysis failed substantial evidence review on this point for several reasons.

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But most critically, because it incorrectly observed that the NLB stripe jet is disclosed as a secondary non-self-contained vehicle when the reference itself specifically says that it's a self-contained vehicle.

[00:11:47] Speaker 00:
And that critical finding,

[00:11:50] Speaker 00:
as well as the adoption of Mr. Booze's testimony that the strike jet lacks certain components, such as a water tank and its own pump, make the combination illogical and unsupported.

[00:12:05] Speaker 00:
I see that I'm about to hit my 12 minutes, so if there are no more questions, I'll reserve the rest of my time.

[00:12:12] Speaker 04:
That's fine.

[00:12:13] Speaker 04:
Let's hear from the Patent Office.

[00:12:16] Speaker 04:
Council?

[00:12:18] Speaker 01:
Good morning, Your Honor, and may it please the court.

[00:12:21] Speaker 01:
Water blasting is not entitled to a patent for reordering non-components.

[00:12:27] Speaker 04:
The claim is to say... This is Judge Crouse.

[00:12:30] Speaker 04:
Can I sort of pick just where your friend left off, which is the fact that the truck and the tractor systems in the prior art were complete and independent systems.

[00:12:45] Speaker 04:
So one solution is to just have the two types of systems for two types of jobs.

[00:12:53] Speaker 04:
So where is there the inherent motivation to combine the two where they operate and function independently in the prior art?

[00:13:05] Speaker 01:
Thank you, Your Honor.

[00:13:07] Speaker 01:
My answer would be that the two systems are complete systems.

[00:13:12] Speaker 01:
That is true.

[00:13:13] Speaker 01:
But the Clemens system doesn't have the ability to remove road coatings.

[00:13:20] Speaker 01:
And so what the board said, crediting Mr. Booze for this particular aspect of the combination is that a person of skill in the art looking at Clemens and NLB would notice that NLB could add the ability to remove

[00:13:42] Speaker 01:
road coatings to the cleaning system of Clemens.

[00:13:45] Speaker 01:
So it's true that they are both complete systems, but they are different.

[00:13:50] Speaker 01:
Does that answer your question?

[00:13:52] Speaker 04:
Well, I guess so.

[00:13:53] Speaker 04:
But if you have two completely separate things, and they each operate and perform a separate function, I guess you could say that about anything.

[00:14:03] Speaker 04:
Well, just combining, you know, you could combine any two different things that do separate functions into one.

[00:14:13] Speaker 04:
Is there anything more that drives the combination?

[00:14:18] Speaker 01:
They are both cleaning systems.

[00:14:20] Speaker 01:
So they are related systems.

[00:14:22] Speaker 01:
And the water blasting doesn't argue that they're in different fields of endeavor.

[00:14:27] Speaker 01:
So it is the board's finding that somebody, a person of skill in the art looking at both systems could see adding one

[00:14:39] Speaker 01:
one aspect to the other, the aspect of the NLB removing road coatings to Clements to increase its ability.

[00:14:49] Speaker 01:
Why?

[00:14:49] Speaker 01:
Why would someone want to remove road coatings?

[00:14:55] Speaker 01:
Is that what you're asking?

[00:14:58] Speaker 04:
Yeah, well, why would they want to combine it?

[00:15:00] Speaker 04:
I mean, they can perform the function with another device.

[00:15:08] Speaker 04:
So why, where's the motivation to combine the two into one?

[00:15:13] Speaker 01:
Well, somebody looking at, a person in skill in the art looking at Clemens, we know from Mr. Booth and the boards crediting Mr. Booth, would see from NLB, the NLB reference, that a small tractor could access more areas.

[00:15:32] Speaker 01:
So that's sort of another reason to combine

[00:15:36] Speaker 01:
The two is that the small tractor could get into areas that require a tight turning radius.

[00:15:44] Speaker 01:
So there are sort of two reasons why one would want to combine those systems.

[00:15:49] Speaker 01:
And one is to add a tractor to this big cleaning system so that you could get into smaller areas and also to add this ability to do one more thing, which is remove the stripes.

[00:16:09] Speaker 02:
Where do you, this is Judge Bryson, where do you find though, and I'm really coming back to Chief Judge Prost's question, where do you find in either of those references, setting aside the difference between cleaning and blasting to remove the stripes, where do you find the indication that a two-vehicle device can be used?

[00:16:41] Speaker 01:
Well, I have two answers to that.

[00:16:44] Speaker 01:
First, the NLB reference talks about two different vehicles, the truck and the tractor.

[00:16:53] Speaker 01:
It doesn't talk about connecting the two.

[00:16:56] Speaker 02:
But actually, in the patent... When you say the truck and the tractor, you mean the stripe jet and the star jet?

[00:17:01] Speaker 01:
Correct, yes.

[00:17:03] Speaker 02:
Right.

[00:17:03] Speaker 01:
So they're just the two.

[00:17:06] Speaker 01:
That's correct.

[00:17:07] Speaker 02:
There's no place in which it suggests that you could put them together.

[00:17:14] Speaker 01:
Not in the NLB reference, no.

[00:17:18] Speaker 02:
You had a second answer.

[00:17:20] Speaker 01:
I'm sorry.

[00:17:21] Speaker 01:
Just very quickly, the second answer is that we know from the patent itself, the 116 patent, that both of those things not only existed,

[00:17:32] Speaker 01:
I'm looking at Appendix 79 in Column 2, which was discussed in the record quite a bit, that not only did the water jetting truck and the water jetting tractor, not only were they both commercially available, but in the patent itself it says that the blasters

[00:17:59] Speaker 01:
appears to have a four wheel tractor similar to a grass mower which supports a driver and is connected to a prime mover by high pressure lines for delivery of high pressure water to the blast head.

[00:18:13] Speaker 01:
So the patent itself acknowledges that if there was commercially available a truck and a tractor somewhere.

[00:18:23] Speaker 02:
Where exactly were you reading from?

[00:18:28] Speaker 01:
Appendix 79, Column 2, the second full paragraph in the second sentence.

[00:18:35] Speaker 01:
This is where it talks about the available commercial systems from Blasters and NLB.

[00:18:42] Speaker 01:
And that discussion starts a little bit earlier, but in... Are you saying Column 2, Line 11?

[00:18:52] Speaker 03:
or 10?

[00:18:53] Speaker 01:
Yes, the paragraph starts at line 8 and starting at line 11-ish, it talks about a tractor that's connected to a truck, which they call a prime mover in the patent.

[00:19:10] Speaker 01:
So to answer your question, Judge Bryson, NLB doesn't specifically say you should connect the two, but we know that the two things are commercially available and

[00:19:22] Speaker 01:
In some way, those two things were connected in some commercial thing.

[00:19:28] Speaker 02:
Let me ask you one other question about NLD.

[00:19:31] Speaker 02:
I noticed that both the stripe jet and the star jet reference an optional vacuum recovery system to contain water and debris.

[00:19:50] Speaker 02:
appendix 188.

[00:19:53] Speaker 02:
And then on page 189 is a picture of the StarJet, which references the truck and appears to have a connected second vehicle that is referred to as the water supply, which is being towed by the truck.

[00:20:12] Speaker 02:
Is it your contention that that is a disclosure of a two-vehicle system?

[00:20:21] Speaker 01:
No, that water supply trailer, what it looks like a trailer, it doesn't look like a tractor, although I guess one is.

[00:20:37] Speaker 02:
No, I guess I'm asking is the general concept of dividing the functions between two separate vehicles to the extent that that's some indication of a motivation.

[00:20:49] Speaker 02:
Is that, do you think, disclosed by Stripejet and Starjet?

[00:20:56] Speaker 01:
Yes, I do think that that's in NLB, pardon me.

[00:21:01] Speaker 01:
And it's in other places in the record, there is some discussion of towing the water tank because the water tanks are quite large.

[00:21:13] Speaker 01:
So I do think that's known in the prior art.

[00:21:20] Speaker 02:
Go ahead.

[00:21:24] Speaker 01:
Okay.

[00:21:26] Speaker 01:
I will just continue with my earlier.

[00:21:30] Speaker 01:
Okay.

[00:21:31] Speaker 01:
So as we were discussing, high pressure water jetting systems were already commercially available at the time of filing, both in the form of large trucks and tractors.

[00:21:41] Speaker 01:
And as I said, the 116 patent does quickly discuss a commercial version of

[00:21:50] Speaker 01:
a tractor connected to a truck.

[00:21:52] Speaker 01:
And the Clemens reference is a water jetting truck that's carrying a large storage tank and the pumps and a blast head connected to the front.

[00:22:02] Speaker 01:
And the Stripe jet is a water jetting tractor that removes road coatings with a blast head and high pressure water and vacuum pumps.

[00:22:12] Speaker 01:
Water blasting does not assert that combining the truck and the tractor are beyond the skill of a person of ordinary skill in the art.

[00:22:19] Speaker 01:
This invention simply rearranges things that are already in the prior art, each component doing the same thing that it did before.

[00:22:28] Speaker 01:
And like the combination of old elements in Anderson's Black Rock, the combination does not add anything to the nature and the quality of the systems that are already known.

[00:22:42] Speaker 01:
So does the court have any further questions?

[00:22:48] Speaker 01:
If not, I will yield the rest of my time.

[00:22:52] Speaker 04:
All right.

[00:22:52] Speaker 04:
Thank you.

[00:22:54] Speaker 04:
Thank you.

[00:22:54] Speaker 04:
Mr. Locke, do you have some rebuttal time available?

[00:22:59] Speaker 00:
Thank you, Chief Judge.

[00:23:00] Speaker 00:
If I could address the last point first, that the contention I hear from my friend is that the invention of the 116 patent is simply reordering known components without adding anything to the nature or quality of what's being invented.

[00:23:15] Speaker 00:
I think that the patent itself specifically addresses that.

[00:23:18] Speaker 00:
The two vehicle system adds to the nature and to the quality because it incorporates aspects of the different systems to create something new.

[00:23:28] Speaker 00:
If we're to speak in this level of generalization of reordering known components, then that would negate pretty much every invention.

[00:23:37] Speaker 00:
What the prior art had were cleaning systems of various sizes.

[00:23:42] Speaker 00:
One of the critical inventive concepts here is it took distinct systems,

[00:23:46] Speaker 00:
and created something new, a two-vehicle system, which allowed you to have the functionality of the larger system while having the precision of the smaller systems.

[00:23:54] Speaker 02:
Mr. Loxton, what about the point that your opposing counsel makes that the two-vehicle system is effectively disclosed on column two at lines 11 at SET?

[00:24:09] Speaker 00:
Thank you, Judge Bryson.

[00:24:11] Speaker 00:
I think that critical in that statement is that it doesn't actually disclose it.

[00:24:15] Speaker 00:
The statement is that there appears to be something in the prior art, but it's credited as being something that appears to be a product that is by Blasters, who was the petitioner in this action.

[00:24:28] Speaker 00:
If Blasters had such a product, such a product would have been referenced as prior art, and moreover, the petitioner, Mr. Booze, who is the owner of Blasters, testified that the prior art had never been combined in this way before.

[00:24:45] Speaker 02:
So with respect to the two-vehicle idea, looking back at the NLB reference, I notice on the first page of the references, appears to be a brochure, Appendix 187, there is both a large truck, a picture of a large truck with a small vehicle in front of it that's connected to the large truck by hoses and so forth.

[00:25:15] Speaker 02:
And also the strike jet, which has a hose going from the strike jet, seemingly off to some undetermined place.

[00:25:25] Speaker 02:
But it clearly is connected to something else, presumably a water source.

[00:25:30] Speaker 02:
And then on page 189, we have the picture of the star jet, which appears to be a two-vehicle device.

[00:25:40] Speaker 02:
Why doesn't that?

[00:25:41] Speaker 02:
provide some indication that using two vehicles is something that was in the prior art.

[00:25:50] Speaker 00:
Thank you, Judge Bryson.

[00:25:51] Speaker 00:
Now, if we could go back first, I guess, to appendix page 187.

[00:25:56] Speaker 00:
Right.

[00:25:58] Speaker 00:
Your comment was with regard to the StarJet shown there.

[00:26:02] Speaker 00:
Well, that shows both the StarJet and the StrikeJet.

[00:26:08] Speaker 00:
So in the large truck shown, the StarJet,

[00:26:10] Speaker 00:
What you're looking at is an articulating link with a mobile blast head.

[00:26:14] Speaker 00:
All of these products have that mobile blast head, which has its own wheels so that it's not running across the ground itself.

[00:26:23] Speaker 00:
But that's not a separate vehicle on the StarJet.

[00:26:28] Speaker 00:
And with regard to the StripeJet, what we see in the orange line, that's the line for the vacuum recovery, which as the reference itself specifically addresses,

[00:26:37] Speaker 00:
is an optional recovery system.

[00:26:39] Speaker 00:
So we don't dispute that there can be this optional vacuum recovery, but even with that optional recovery, and even with the disclosure on appendix 189 of a trailer for a water tank, we still don't meet the limitations that the 116 patent had.

[00:26:59] Speaker 00:
And we can even look at the 116 patent, and it shows the potential of having

[00:27:05] Speaker 00:
a trailer behind the prime mover truck as well.

[00:27:09] Speaker 00:
The critical aspect here is that those trailers are not independently drivable vehicles, the way that the 116 patent claims the two independent vehicles, the large prime mover and the smaller tractor, where each are powered to drive independent of the other, but they are connected and cooperate together.

[00:27:34] Speaker 00:
Does that answer your question, Judge Reisen?

[00:27:36] Speaker 00:
Thank you.

[00:27:37] Speaker 04:
Yes.

[00:27:40] Speaker 04:
You've exhausted your rebuttal.

[00:27:42] Speaker 04:
Yes, sir.

[00:27:43] Speaker 04:
Thank you.

[00:27:45] Speaker 04:
We thank both sides and the case is submitted.