[00:00:00] Speaker 04:
at the next case before us is 192206, Caterpillar v. Wordgen.

[00:00:05] Speaker 04:
Mr. Maraz, are you prepared to begin?

[00:00:07] Speaker 01:
I am, thank you, Your Honor.

[00:00:11] Speaker 04:
Okay, you may.

[00:00:13] Speaker 01:
May it please the Court.

[00:00:15] Speaker 01:
There is a clear legal standard that governs this appeal.

[00:00:18] Speaker 01:
It originated with Ariosta.

[00:00:20] Speaker 01:
It was applied in Genzyme, Anacor, and Apple V. Andrea.

[00:00:24] Speaker 01:
And in the Infinium case, the just issued a few days ago, and that's appeal number 2020,

[00:00:29] Speaker 01:
And under this legal standard, the board must consider new evidence presented at the reply brief stage in an IPR if that evidence is either one, responsive to the patent owner's arguments, or two, state-of-the-art evidence showing how a skilled artisan would view the prior art combination presented in the petition.

[00:00:49] Speaker 01:
A failure to consider evidence that satisfies either of these two requirements warrants a remand, and here Caterpillar satisfies both requirements.

[00:00:58] Speaker 01:
And to be clear, Your Honors, Caterpillar does not present a substantial evidence-type argument in this appeal.

[00:01:04] Speaker 01:
The Board expressly refused to consider Caterpillar's manual mode argument and the related ROTEC manual mode evidence, and this is what invokes the ANACORE and Apple legal standard and the need for a remand.

[00:01:18] Speaker 01:
Regarding the prong of the legal standard that permits rebuttal evidence, the ROTEC evidence rebuts Workin's argument that no skilled artisan would use a lake sensor-only design

[00:01:28] Speaker 01:
in the manual mode feature.

[00:01:31] Speaker 01:
And for the second prong, the state-of-the-art prong, the road tech evidence is state-of-the-art evidence that proves a skilled artist then would have combined the Swisher and Glassen references just as Caterpillar proposes.

[00:01:43] Speaker 01:
So this court's precedent requires a remand so the road tech manual mode evidence can be considered.

[00:01:50] Speaker 04:
It is... But we would have to find that the board abused its discretion in concluding.

[00:01:57] Speaker 04:
that that was new evidence and not evidence that was responsive to something that you couldn't have anticipated, right?

[00:02:07] Speaker 01:
Yes, Your Honor, the abuse of discretion standard applies, although here this is really driven by the law.

[00:02:14] Speaker 01:
The law is clear in defining when the parties are allowed to submit new evidence at the reply brief stage.

[00:02:20] Speaker 01:
If that legal standard is met, then the result necessarily follows.

[00:02:24] Speaker 01:
And what I mean by that is if the board properly considered

[00:02:27] Speaker 01:
newly submitted evidence that it was required to consider under precedent, then an affirmance will follow on appeal.

[00:02:33] Speaker 01:
And conversely, if the board does not consider newly submitted evidence that it was required to consider under precedent, then a remand will follow on appeal because that's an automatic abuse of discretion.

[00:02:44] Speaker 01:
And here, the board did not consider evidence it was required to consider under precedent under the ANACORE and Apple Line of Cases.

[00:02:49] Speaker 01:
So a remand is necessary because an abuse of discretion occurred.

[00:02:55] Speaker 01:
So really, the analysis turns on whether the legal standard is met, is the sum and substance of my point, your honor.

[00:03:02] Speaker 01:
And it is met, twice.

[00:03:04] Speaker 01:
It's met under prong one of the ANACOR test because the evidence is responsive.

[00:03:09] Speaker 01:
There's no question that the ROTEC manual mode evidence is responsive to the arguments in Werken's patent owner response, and that's the key.

[00:03:17] Speaker 01:
These arguments were made in Werken's patent owner response.

[00:03:20] Speaker 01:
In its petition, Catechryl presented a swishering-blasting combination

[00:03:24] Speaker 01:
And one of the prepared modifications involved using glass and sensors on Swisher's legs alone to perform milling operations.

[00:03:31] Speaker 01:
And this is the leg sensor only modification in our brief.

[00:03:36] Speaker 01:
Working in response said that a skilled artisan wouldn't do this.

[00:03:39] Speaker 01:
Specifically, it said the only way to use a leg sensor only design would be to have a machine with a manual mode where the operator is manually controlling the legs.

[00:03:48] Speaker 01:
Working then called this design, quote, exceedingly difficult.

[00:03:52] Speaker 01:
It said this in its patented responsive page

[00:03:54] Speaker 01:
Appendix Page 1320, and it made this argument when challenging Caterpillar, Swisher, Glass in combination.

[00:04:01] Speaker 01:
The high materiality of the RoadTech manual mode evidence lies in the fact that it proves Workin's argument wrong.

[00:04:08] Speaker 01:
It shows that RoadTech successfully marketed and sold a road milling machine that had a manual mode where only lake sensors were used to perform milling operations.

[00:04:19] Speaker 01:
that the Rotech evidence proves that a design working says no skilled artisan would do is commercially viable in the road milling machine industry.

[00:04:27] Speaker 01:
So because the Rotech evidence is rebuttal evidence, it had to be considered under this court's precedent.

[00:04:33] Speaker 01:
And the board's failure to do so means the remand is necessary.

[00:04:35] Speaker 02:
It's also important.

[00:04:37] Speaker 02:
Would you mind just giving me the JA site to the working assertion that no skilled artisan would do

[00:04:47] Speaker 02:
Where do I find that?

[00:04:48] Speaker 01:
Sure.

[00:04:49] Speaker 01:
It's APPX1320.

[00:04:51] Speaker 01:
That's where they talked about the failure of a skilled artisan to want to combine, or the lack of a desire of a skilled artisan to want to combine the swisher and glass in combination in a lake sensor only manner, because doing so would be, quote, exceedingly difficult.

[00:05:11] Speaker 01:
Workin also made this argument in its preliminary patent owner response.

[00:05:18] Speaker 01:
And that was at, one second here, APPX 1138 and 1139.

[00:05:40] Speaker 01:
And it's not just that they said the manual mode where they expressively referred to the concept of manual milling was exceedingly difficult.

[00:05:46] Speaker 01:
It's that they made this argument in response to the Swisher-Glasson combination.

[00:05:51] Speaker 01:
So they linked it to the main theory that Caterpillar asserted in its position.

[00:05:58] Speaker 02:
Just to be clear, and I apologize if I'm being dunderheaded, the statement that Wirtgen makes at the two places, I think it's identical.

[00:06:06] Speaker 02:
After Caterpillar's proposed modification,

[00:06:09] Speaker 02:
Unless the operator manually adjusts the height of the lifting columns during travel, an exceedingly difficult task, the milling operation will be defective.

[00:06:21] Speaker 02:
So what that sentence says, just by terms, as I understand it, is that raising the thing during travel manually is exceedingly difficult.

[00:06:33] Speaker 02:
Is that the same point that you think

[00:06:36] Speaker 02:
RX 500 response to?

[00:06:41] Speaker 01:
That's exactly right, Your Honor.

[00:06:42] Speaker 01:
I think the point that they're trying to make there is that a skilled artisan would not opt for a design where you rely only on leg sensors to mill because to do that you would have to have this manual mode of operation where the user or the operator is standing on top of the milling machine in the console and moving the legs as you mill to keep them where you want in the desired position.

[00:07:05] Speaker 01:
They said

[00:07:05] Speaker 01:
Workin said in his patent on a response that this is exceedingly difficult, suggesting that no skilled artisan would do this.

[00:07:13] Speaker 01:
But what Rotech proves is that someone would do this, and not just hypothetically, it proves that it was actually done before.

[00:07:20] Speaker 01:
That's why the evidence is so compelling, because it takes the evidence that Workin provides, which is hypothetical evidence from an expert, and it shows that this was actually done in reality, in real world, not just

[00:07:34] Speaker 01:
anywhere but in a real-world milling machine, the exact type of machine that the patent covers.

[00:07:38] Speaker 01:
So, a workings argument, well, whether they're right or they're wrong, at a minimum, the road tech evidence rebuffs this workings argument squarely, your honor.

[00:07:55] Speaker 01:
So, the sum and substance of the argument is because alone, because of this rebuttal position, because the road tech evidence is rebuttal evidence,

[00:08:03] Speaker 01:
It had to be considered under ANACOR.

[00:08:05] Speaker 01:
And the board's failure to do so means a remand is necessary.

[00:08:09] Speaker 01:
But this isn't a case where only one of the two prongs is satisfied.

[00:08:12] Speaker 01:
The other prong is satisfied as well because the evidence is not simply, well, we're not using the ROTEC evidence to rehash or redo the original combination in the petition.

[00:08:25] Speaker 01:
The ROTEC evidence is supplemental.

[00:08:27] Speaker 01:
It's supplemental state-of-the-art evidence.

[00:08:29] Speaker 01:
It does not replace or change the swisher and glassing grounds.

[00:08:32] Speaker 01:
And this distinction is important because this is why we're like Anacor and Apple and not like the case's work-in-sites.

[00:08:39] Speaker 01:
More specifically, Caterpillar argued in its petition that a skilled artisan would have used glass and sensors on Swisher's legs.

[00:08:46] Speaker 01:
So the question becomes, would a skilled artisan ever make this modification?

[00:08:49] Speaker 01:
In patent cases, as we just discussed, this usually boils down to a hypothetical analysis.

[00:08:55] Speaker 04:
But here we have... What is your response to the work-in-position that the Rovetech RX500

[00:09:01] Speaker 04:
reference was not publicly available.

[00:09:04] Speaker 01:
Well, that's a red herring, Your Honor.

[00:09:06] Speaker 01:
So first, there were multiple layers of the ROTEC evidence that were presented.

[00:09:10] Speaker 01:
There were the manuals and there was the testimony from the ROTEC witness.

[00:09:17] Speaker 01:
The testimony from the ROTEC witness alone is state-of-the-art evidence from a person of skill in the art.

[00:09:23] Speaker 01:
That's sufficient alone to warrant a remand here, the inclusion of that.

[00:09:29] Speaker 01:
That evidence was considered by the ALJ in the ITC case.

[00:09:32] Speaker 01:
It came in there.

[00:09:33] Speaker 01:
And Workin was at the deposition and had a chance to cross-examine this witness.

[00:09:40] Speaker 01:
So there's really no dispute that this evidence would be admitted.

[00:09:44] Speaker 01:
I know Workin filed a motion to exclude this transcript, but there's really not much of a dispute left after that point, after knowing that Workin was there to cross-examine the witness, because Workin simply argued that we didn't serve a trial subpoena.

[00:09:55] Speaker 01:
Caterpillar didn't serve a trial subpoena in the IPR,

[00:09:59] Speaker 01:
that doesn't have to happen.

[00:10:01] Speaker 01:
The caption call case, for example, says that's not necessary.

[00:10:05] Speaker 01:
So that evidence alone warrants a remand, but in addition to that, we also have the manuals.

[00:10:11] Speaker 01:
The manuals were, had to disclose features that were embodied in the machine that the witness testified about, the road tech witness.

[00:10:20] Speaker 01:
Whether these, first of all, these manuals were publicly available, the evidence shows that.

[00:10:23] Speaker 01:
The testimony from the road tech witness shows that.

[00:10:25] Speaker 01:
But even if they weren't publicly available,

[00:10:28] Speaker 01:
These were features that were in the actual machine that was sold.

[00:10:31] Speaker 01:
So we have other evidence that we put in that shows that there was a sale of the Rotec RX500 machine before 2003.

[00:10:39] Speaker 01:
And that evidence showed that people were using the machine that viewed in combination with the testimony from the Rotec expert as additional evidence about what the features in that machine were.

[00:10:51] Speaker 01:
This all really boils down to there are multiple layers of evidence that work and we'll have to

[00:10:58] Speaker 01:
eliminate from the case to make a remand unnecessary.

[00:11:02] Speaker 01:
There's no suggestion that it can do that.

[00:11:05] Speaker 01:
The evidence is so squarely within this case.

[00:11:08] Speaker 01:
It was admitted in the ITC case for the same reasons I'm giving you here.

[00:11:13] Speaker 01:
And in addition to that, the ITC found that this RhoTech machine anticipated claim one of the 530 patent, the same claim that's at issue here.

[00:11:24] Speaker 01:
Another point I think that's important

[00:11:29] Speaker 01:
to understand, Your Honor, is that this Rotech evidence stands on its own.

[00:11:35] Speaker 01:
The evidence is contemporary, contemporaneous documentary evidence.

[00:11:40] Speaker 01:
It shows what the Rotech features are.

[00:11:42] Speaker 01:
We have the testimony I just described.

[00:11:44] Speaker 01:
This Rotech witness is a long tenure, highly experienced employee who actually installed the lake sensors on the machine.

[00:11:53] Speaker 01:
The standalone Rotech evidence is part of the administrative record.

[00:11:56] Speaker 01:
It is independent third party evidence

[00:11:58] Speaker 01:
showing that the Swisher and Glassman-based Lake Center-only design described in Mr. Labus' declaration would have been obvious.

[00:12:04] Speaker 01:
It shows a skilled artisan would have made the modification Mr. Labus proposes.

[00:12:09] Speaker 01:
So this court's precedent doesn't allow the board to ignore this type of evidence, and a remand is necessary to make sure that it is at least considered.

[00:12:18] Speaker 01:
And just to clarify one point about Your Honor's question,

[00:12:24] Speaker 01:
Whether the evidence is admissible or not hasn't been decided yet.

[00:12:27] Speaker 01:
That's not here on this appeal to be decided.

[00:12:30] Speaker 01:
The court denied that motion as moot because it declined to consider the evidence, the Road Tech evidence in the first place.

[00:12:36] Speaker 01:
So a remand would be necessary to first have the court rule on that motion if it gets re-raised by working.

[00:12:43] Speaker 01:
But it certainly isn't appropriate here to make any findings based on whether the evidence is admissible because it's not before the court.

[00:12:54] Speaker 01:
there is no dispute that, and working can't dispute this, that state of the art evidence doesn't have to be publicly available.

[00:13:02] Speaker 01:
And this goes back to your honor's question as well.

[00:13:04] Speaker 01:
It can be evidence that a company had inside its own premises that no one ever saw.

[00:13:11] Speaker 01:
If it's been doing, if it's been practicing the invention, limitation by limitation in the claim before the priority date of the patent, that is highly material state of the art evidence, regardless of whether

[00:13:24] Speaker 01:
It was publicly available or not.

[00:13:26] Speaker 04:
I'll reserve the- Okay.

[00:13:27] Speaker 04:
We'll give you the rest of it.

[00:13:30] Speaker 04:
Thank you, Your Honor.

[00:13:30] Speaker 04:
Mr. Levy.

[00:13:33] Speaker 03:
Yes, Your Honor.

[00:13:36] Speaker 04:
Okay.

[00:13:36] Speaker 04:
You may begin.

[00:13:38] Speaker 03:
Thank you.

[00:13:38] Speaker 03:
Good morning.

[00:13:39] Speaker 03:
May it please the court, Ryan Levy on behalf of Work in America.

[00:13:43] Speaker 03:
The board rejected its unpersuasive caterpillar's reason for modifying Swisher on glass on in view of the expert shifting reasoning and conflicting testimony.

[00:13:54] Speaker 03:
And the board did credit the substantial evidence of Werken's expert that there was no reason a posta would replace Swisher's external reference sensors with Glasson's in-leg sensors to shield them from a harsh environment.

[00:14:11] Speaker 03:
The board gave little weight to Caterpillar's shift to a second adding sensor argument because this argument was driven by hindsight and lacked evidentiary support.

[00:14:22] Speaker 04:
But the board did specifically say it wasn't considering this Rotech evidence, right?

[00:14:30] Speaker 03:
No, Your Honor.

[00:14:32] Speaker 03:
I believe the board did consider the Rotech evidence, at least for the arguments it did present.

[00:14:39] Speaker 04:
So specifically, Your Honor, if we do look to... So you're saying the board didn't refuse to consider the evidence, it just refused to consider the manual milling rationale?

[00:14:50] Speaker 03:
Right, Your Honor.

[00:14:51] Speaker 03:
If we look to the final written decision, all that we see the board states that it did not consider was the manual milling rationale itself.

[00:15:00] Speaker 03:
And it deemed the manual milling rationale non-responsive, lacking both foundation and expert testimony.

[00:15:06] Speaker 03:
It was well within its discretion to not to consider that argument along with the evidence associated with it.

[00:15:13] Speaker 03:
But we do see elsewhere, Your Honor, in the final written decision,

[00:15:16] Speaker 03:
that the board reviewed the petitioner's analysis, evidence, and citation, for example, in Appendix 16.

[00:15:25] Speaker 03:
Also on the same page, Your Honor, the board states, based on the entire record, that it agreed with the patent owner and determined that the petitioner had failed to meet its burden.

[00:15:37] Speaker 04:
So we also have a discussion.

[00:15:38] Speaker 04:
What is your response to your friend on the other side saying that actually the manual milling rationale

[00:15:46] Speaker 04:
was directly responsive to your argument that it wouldn't be done or that one of Skill in the Art would not do the combination?

[00:16:00] Speaker 03:
Your Honor, I do not believe it's responsive.

[00:16:01] Speaker 03:
And this comes down to what Workin actually argued in its patent owner's reply.

[00:16:08] Speaker 03:
So as an initial matter, Workin never stated that a machine cannot mill

[00:16:14] Speaker 03:
with a lake sensor only configuration.

[00:16:18] Speaker 03:
And this is key because what the PTAB did, it made a critical determination that Swisher was directed towards precision planning and cannot operate for its intended purpose if its external elevation sensor is removed.

[00:16:32] Speaker 03:
And this was based on substantial evidence.

[00:16:34] Speaker 03:
Both experts agreed on this point.

[00:16:37] Speaker 03:
When Caterpillar's expert was asked in the combination that he's proposed,

[00:16:43] Speaker 03:
Would he remove any of Swisher's sensors from a harsh environment?

[00:16:48] Speaker 03:
He said, correct, he would not.

[00:16:50] Speaker 03:
So what Workin argued in its pattern response with an understanding of the intended purpose of Swisher was that removing the external elevation sensors of Swisher would both change a principal operation of Swisher and render it inoperable for its intended purpose.

[00:17:09] Speaker 03:
And this was based on what the board found the intended purpose of Swisher was.

[00:17:13] Speaker 03:
Swisher, as the board found, required certain precision as well as an external sensor.

[00:17:20] Speaker 03:
And the board also did state that APOSA would not remove the external sensor because it was necessary for Swisher and internal lake sensors could not accomplish the same.

[00:17:32] Speaker 03:
So as work illustrates in its POR, one could still know

[00:17:36] Speaker 03:
but not achieve the precision of Swisher with its external sensors.

[00:17:41] Speaker 03:
So the manual milling rationale or the lake sensor only argument, it does not rebutt Workin's POR argument that the intended purpose of Swisher would be lost.

[00:17:52] Speaker 03:
If you look throughout Workin's POR arguments, it repeatedly explains how removing Swisher's externally mounted sensors would destroy a key feature as the machine could not refer to an external reference.

[00:18:06] Speaker 03:
And working even includes an illustration pointing out the differences between a road surface with four milling, that road surface milled without an external elevation control system having external sensors, and that road surface milled with an elevation control system like that of Swisher.

[00:18:25] Speaker 03:
That's at Appendix 1303.

[00:18:27] Speaker 03:
And with this, what you see here is the road surface with the external elevation system

[00:18:35] Speaker 03:
it has this predetermined grade and slope, this smooth flat approach result at the end.

[00:18:42] Speaker 03:
And this is because Swisher has this external sensor.

[00:18:46] Speaker 03:
Now, additionally, when you look at Caterpillar's petitioner's reply, it states that manual milling was a tangible benefit and that leg sensors exist.

[00:18:57] Speaker 03:
But that's not responsive to why a POSA would remove Swisher's external reference sensors

[00:19:03] Speaker 03:
and render it unable to provide precision planning.

[00:19:07] Speaker 03:
And the board realizes, and they characterize the manual million rationale as both improper and having no foundation.

[00:19:17] Speaker 03:
To put it plainly, Caterpillar never laid out in its petitioners' reply why one of skill and the art would not only combine glass on a Swisher, but also modify Swisher to arrive at a lake sensor-only machine.

[00:19:32] Speaker 03:
So at one point,

[00:19:34] Speaker 03:
your honor, Caterpillar also argues that you could add leg sensors whether a machine already had grade and slope system or not, completely ignoring the purpose of Swisher.

[00:19:48] Speaker 03:
So to go even further, what Caterpillar does to legitimize their argument about manual milling, they repeatedly cut off quotes of work as expert to try to give credence to this argument.

[00:20:01] Speaker 03:
For example, they do quote Workin's expert where he says, you can begin milling with a manual setup if you wanted to.

[00:20:09] Speaker 03:
That's in the blue brief at 27 and also 44.

[00:20:13] Speaker 03:
But what Workin's expert actually state is you can begin milling with manual setup if you want to.

[00:20:21] Speaker 03:
But for precision control, you'd have to have some indication of the ground relative to the drum.

[00:20:30] Speaker 03:
Working never argued billing could not occur without external sensors, you just would not have precision control as required by swisher.

[00:20:40] Speaker 03:
So moving back to the petition caterpillar just asserted.

[00:20:45] Speaker 02:
Mr. Levy, this is Jeff Serrato.

[00:20:49] Speaker 02:
The only argument we heard this morning from the other side is about RX 500.

[00:20:55] Speaker 02:
So I guess I'd like you to return to RX 500 and explain, just focused on RX 500, why the board did not commit an error in

[00:21:13] Speaker 02:
with respect to whatever it did on the RX500.

[00:21:17] Speaker 02:
And I say it in those terms because I guess it's part of what needs clarification, at least for me, is exactly what it did with the RX500.

[00:21:31] Speaker 03:
Yes, Your Honor.

[00:21:31] Speaker 03:
And so as an outset, one thing to consider with the RX500 is there was no declaration from an expert accompanying that evidence.

[00:21:42] Speaker 02:
Right.

[00:21:43] Speaker 02:
Right.

[00:21:45] Speaker 02:
Right.

[00:21:45] Speaker 02:
So that evidence kind of came without explanation or the board could find without explanation as to its significance for particular points at issue.

[00:21:58] Speaker 02:
But first of all, what do you think exactly the board did with the RX 500?

[00:22:03] Speaker 02:
Is it like in footnote eight or elsewhere?

[00:22:05] Speaker 03:
Well, Your Honor,

[00:22:08] Speaker 03:
The board did look to the RX500 evidence, for example, with the second rationale that it permitted Caterpillar to advance based on the questions in the deposition.

[00:22:20] Speaker 03:
So, for example, in reference to the adding sensor rationale, one of the statements that Caterpillar made was the RX500 had an automated grade and slope control system named MoMA.

[00:22:34] Speaker 03:
They did not use the lake sensors.

[00:22:36] Speaker 03:
So with that statement, Caterpillar never explained how the RX500, if it had an automated elevation control system, why one would use additional data from the lake sensors if that machine never incorporated such at the same time.

[00:22:54] Speaker 03:
Otherwise stated, not only did the alleged RX500 fail to provide any indication as to why one would take the data from the lake sensors to improve

[00:23:04] Speaker 03:
the control algorithms or increase the quality of precision million.

[00:23:08] Speaker 03:
It went the other way.

[00:23:09] Speaker 03:
The RX500 evidence, all it did was provide an example of a machine with an elevation control system and lake sensors that did not use any data from those lake sensors.

[00:23:21] Speaker 03:
And when you look at that rationale, there is no reason legitimacy to their expert statement that you would use this additional data from the lake sensors with the RX500 had a control system and also

[00:23:35] Speaker 03:
in lake sensors which do not communicate at all.

[00:23:38] Speaker 03:
No data from those lake sensors was used to improve the precision milling.

[00:23:44] Speaker 03:
And with respect to the lake sensor only rationale.

[00:23:47] Speaker 02:
Can I just ask if there's a, would it be fair to say or not fair to say that the board did not decline to consider the RX 500 but instead examined the RX 500 evidence

[00:24:04] Speaker 02:
Um, and the lack of explanatory material in the context of the particular combinations and motivations for those combinations and concluded that as to the motivations and combinations being asserted that were timely, um, the RX 500 did not help Caterpillar enough to make its case.

[00:24:32] Speaker 03:
I think that's correct, your honor.

[00:24:33] Speaker 03:
And, you know, speaking hypothetically, maybe if there had been an expert declaration from Caterpillar with the reply, or maybe if Caterpillar did not state that the MOBA system didn't use the lake sensors, the board might have had to have cited to the RX500 evidence.

[00:24:49] Speaker 03:
But based on the record before it, it did not have to.

[00:24:53] Speaker 03:
So that was the key to it.

[00:24:56] Speaker 03:
The RX500, looking at it, all it provided was that manual milling with the tangible benefits.

[00:25:03] Speaker 03:
which again was a separate motivation to combine, it was originally advanced in the petition.

[00:25:09] Speaker 03:
The petition only, and there's no point in the petition or the expert declaration mentioning manual milling, the petition only discussed shielding the sensors, the external sensors of Swisher by moving them into the lake cylinders, protecting them from a harsh environment.

[00:25:28] Speaker 03:
So you have two distinct differences there.

[00:25:31] Speaker 03:
Again, the motivation to combine

[00:25:32] Speaker 03:
for the petition was based on a combination to protect the sensors.

[00:25:36] Speaker 03:
The reply, the motivation combined for the obviousness case, was to provide an operator the option of manual milling.

[00:25:45] Speaker 03:
And even if we did get to the testimony or exactly what the RX500 evidence was, as my colleague mentioned, there are evidentiary issues with it that were timely raised in front of the board.

[00:26:00] Speaker 03:
So again, those were other issues.

[00:26:02] Speaker 04:
But we could rule on those in the first instance, right?

[00:26:05] Speaker 03:
Yeah, exactly.

[00:26:06] Speaker 03:
I agree with my colleague as well.

[00:26:08] Speaker 03:
But that's not an issue.

[00:26:09] Speaker 03:
But it goes to show how far off and why the board did not have to consider the RX 500 evidence based upon the record before.

[00:26:17] Speaker 03:
And again, with no expert declaration and the statements from Caterpillar, it did not need to be considered or need to be relied on.

[00:26:26] Speaker 03:
for the adding sensor rationale.

[00:26:29] Speaker 02:
Those are two separate things.

[00:26:31] Speaker 02:
And I don't think the board said we're not considering it indeed.

[00:26:35] Speaker 02:
I don't know how one could square that with footnote eight, which does actually consider it.

[00:26:41] Speaker 02:
But it did say it wasn't relying on it.

[00:26:45] Speaker 03:
Yeah, exactly, Your Honor.

[00:26:47] Speaker 03:
As far as relying on it, there's not a citation specifically to the RX 500.

[00:26:52] Speaker 03:
And again, that's because

[00:26:55] Speaker 03:
the rationales that were allowed to advance the replacing rationale.

[00:26:59] Speaker 02:
Can I just ask one more question again about the RX 500, which is all the only thing we heard about from the other side.

[00:27:06] Speaker 02:
One of the points that Mr. Moroz made, I think, was that in your patent owner response, you said,

[00:27:20] Speaker 02:
it would be exceedingly difficult to do manual changing of the height of this thing while traveling and that the RX 500, whatever else it was, was responsive to that.

[00:27:37] Speaker 02:
Is your position that it was not actually responsive to that or that it doesn't really matter because that particular assertion and the one that you made about exceedingly difficult ends up not mattering to the board's analysis of the preserved motivations to make different combinations?

[00:28:02] Speaker 03:
I think both, Your Honor.

[00:28:04] Speaker 03:
First, with regards specifically to the RX500, one cannot achieve the ability to coincide to a reference plane and mill a roadway to a predetermined grade and cross slope with just manual sensors.

[00:28:20] Speaker 03:
Werken's expert testified to these issues, pointing out how internal sensors cannot replace external sensors and how Swisher would be inoperable for its intended purpose

[00:28:32] Speaker 03:
if it only had internal lake sensors.

[00:28:35] Speaker 03:
There's no testimony from, there's no testimony from Cathler's expert to that point.

[00:28:42] Speaker 03:
And second, we do agree also that the RX500 evidence is not responsive because it still has never described or provided an answer to why a person of skill in the art would toss out Swisher's external reference sensors and precision billing.

[00:29:02] Speaker 03:
And Your Honor, I believe I'm out of time.

[00:29:03] Speaker 04:
Yes, you are.

[00:29:05] Speaker 04:
All right, let's go back to Mr. Moroz for his rebuttal.

[00:29:09] Speaker 01:
Thank you, Your Honor.

[00:29:11] Speaker 01:
This is to Judge Toronto's question about footnote eight and the board's consideration of the ROTEC evidence.

[00:29:18] Speaker 01:
So the board did dance around the ROTEC evidence a few times in the final written decision, but it never analyzed or considered the manual mode ROTEC evidence, and it said so.

[00:29:29] Speaker 01:
The board consciously and expressly concluded that it was not considering Caterpillar's manual moat argument first, that's an appendix page 29 to 30, and then it said it did not rely on the road tech evidence at all, and that's on appendix page 32.

[00:29:44] Speaker 01:
The board even denied Workin's motion to exclude the road tech evidence as moot solely because it chose not to rely on this evidence.

[00:29:52] Speaker 01:
That's appendix page 32.

[00:29:54] Speaker 01:
We have to take the board at its word.

[00:29:56] Speaker 01:
It said what it said.

[00:29:58] Speaker 01:
didn't rely on the Rotec evidence or consider Caterpillar's manual mode argument at all in its analysis.

[00:30:04] Speaker 01:
It essentially cut the entire manual mode issue out of the case.

[00:30:09] Speaker 01:
To footnote 8, the board did address Rotec and footnote 8 as Judge Toronto mentioned, but it didn't address the manual mode evidence.

[00:30:18] Speaker 01:
In footnote eight, the board first pointed out the Caterpillar's expert, Mr. Labis, didn't rely on the road tech evidence and his analysis.

[00:30:25] Speaker 02:
Well, the problem was- Can I just ask, I'm sorry, just correct me if this is just an oversimplification, but why isn't it fair to read what the board said about manual milling, that one of the combinations proposed in the petition might well have been asserted

[00:30:47] Speaker 02:
in the petition to be motivated by something having to do with manual milling.

[00:30:53] Speaker 02:
But in fact, that motivation was never presented in the petition and so it's just not available in the case and it doesn't matter what RRX 500 would say about that because the petitioner didn't preserve that motivation.

[00:31:10] Speaker 01:
Sure, Your Honor.

[00:31:11] Speaker 01:
So the lake sensor only design was presented in the petition.

[00:31:15] Speaker 01:
We did not have the ROTEC evidence available at the time we filed the petition because it didn't exist yet.

[00:31:20] Speaker 01:
Mr. Labus submitted his declaration before we obtained that evidence in the ITC case.

[00:31:28] Speaker 01:
And then thirdly, the law doesn't require every bit of evidence to be disclosed in the petition.

[00:31:35] Speaker 01:
We have our initial petition argument, the swisher glass in combination with lake sensors only.

[00:31:40] Speaker 01:
And now we have after arising evidence from Road Tech showing that a person with skill in the art would make that combination.

[00:31:49] Speaker 01:
This is very strong evidence, as I've discussed.

[00:31:51] Speaker 01:
It stands on its own.

[00:31:52] Speaker 01:
It's part of the administrative record.

[00:31:54] Speaker 01:
And there is nothing requiring Caterpillar to funnel every piece of evidence in through its expert.

[00:31:59] Speaker 01:
I see my time is over.

[00:32:01] Speaker 01:
Unless there are any further questions, I will finish up.

[00:32:04] Speaker 01:
Thank you, Your Honors.

[00:32:06] Speaker 04:
Thank you, counsel.

[00:32:07] Speaker 04:
The case will be submitted.