[00:00:00] Speaker 03:
Okay, Mr. Barney, you may begin.

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

[00:00:04] Speaker 00:
May it please the Court?

[00:00:06] Speaker 00:
The Board correctly found most of the claims of the 309 patent obvious over Swisher and Neumeyer, but it erred in allowing the stability pattern claims to survive.

[00:00:15] Speaker 00:
And I'd like to begin with the two central undisputed facts of this case.

[00:00:20] Speaker 00:
First, it's undisputed that Neumeyer discloses a mode having the same hydraulic arrangement shown in Figure 1 of the 309 patent with four-way positive coupling between four identically designed lifting cylinders.

[00:00:32] Speaker 00:
The board found this and work and doesn't dispute it.

[00:00:35] Speaker 00:
It's also undisputed that the hydraulic arrangement of Figure 1, assuming you don't add anything to it or modify it, results in the four-sided stability pattern of Figure 7 with the only possible exception

[00:00:47] Speaker 00:
being minor unavoidable deviations.

[00:00:50] Speaker 00:
Again, Workin admits this in its red brief, and its expert admitted it at his deposition.

[00:00:55] Speaker 00:
Basically, the arrangement of Figure 1 results in the stability pattern of Figure 7.

[00:01:01] Speaker 00:
And if I could ask your honors to please refer to Appendix Page 561.

[00:01:05] Speaker 00:
I want to make sure that this important admission of their expert does not get lost in the shuffle or overlooked.

[00:01:14] Speaker 00:
On the left on appendix page 561 is figure one of the patent.

[00:01:19] Speaker 00:
Workin's expert at his deposition was asked to identify the midpoints between the wheels and then connect them to form a four-sided diamond, and he did so.

[00:01:28] Speaker 00:
He was then asked if figure one will result in that four-sided stability pattern, and he said yes, it would, assuming you don't add any components to it.

[00:01:38] Speaker 00:
He was then asked if figure one could result in any other shape than that, and he said no, again, assuming you don't add any components to it.

[00:01:46] Speaker 00:
So that was Caterpillar's inherency argument in a nutshell.

[00:01:50] Speaker 00:
Neumeyer discloses the hydraulic arrangement of figure one, which necessarily results in the four-sided stability pattern of figure seven, including the widest transverse dimension being located midway between the front and the rear wheels.

[00:02:05] Speaker 00:
Now, contrary to the board's finding, this evidence is highly probative of inherency.

[00:02:11] Speaker 00:
In contrast, there's no substantial evidence supporting the opposite conclusion, that a structure that's identical to Figure 1 in every material respect and operates exactly as the patent describes for Figure 1 can somehow result in a stability pattern substantially different than Figure 7.

[00:02:27] Speaker 01:
Mr. Barney, this is just trying to, can I just ask to keep clear?

[00:02:31] Speaker 01:
So I think you have an argument about,

[00:02:35] Speaker 01:
the stability pattern, but there's also the requirement that the widest point or the widest sort of transverse line has to fall within the footprint of the milling cylinder.

[00:03:00] Speaker 01:
If the board has substantial evidence to find failure of proof on the second,

[00:03:05] Speaker 01:
The first doesn't matter, right?

[00:03:07] Speaker 00:
That's correct, Your Honor.

[00:03:08] Speaker 00:
And I'm happy to jump to that second point.

[00:03:11] Speaker 01:
And just tell me why it is more complicated than the following.

[00:03:16] Speaker 01:
We just don't have the information you did not put on the proof about the actual distances involved and the centrality or off-centrality of the milling cylinder.

[00:03:29] Speaker 01:
And therefore, there's just a failure of proof that this line falls into that footprint.

[00:03:35] Speaker 00:
I'm happy to address that, Your Honor.

[00:03:38] Speaker 00:
The problem on the footprint limitation is it's not simple.

[00:03:41] Speaker 00:
It's not as simple as that.

[00:03:43] Speaker 00:
The problem is that the board applied the wrong legal standard, and I'd like to explain.

[00:03:48] Speaker 00:
So if you would just accept for the, you know, I'm skipping a few things here to address your question, but, you know, we argued that Neumeyer as a single reference establishes the shape of the pattern, including the widest transverse dimension located midway between the wheels or caterpillars.

[00:04:06] Speaker 00:
At that point, this additional requirement that the footprint of the working rotor overlaps that widest dimension, we argued that as a matter of obviousness, not inherency.

[00:04:18] Speaker 00:
Now the board acknowledged, and this is the important part, the board acknowledged that Swisher discloses a rotor located about in the middle between the front and the rear caterpillars.

[00:04:27] Speaker 00:
But more importantly, it found dependent claims 21 and 33

[00:04:33] Speaker 00:
obvious over Swisher and Neumeyer.

[00:04:35] Speaker 00:
Those claims specifically require a rotor located, and I'm quoting now from those claims, located centrally between the front and the rear wheels or caterpillars.

[00:04:46] Speaker 00:
So the board found that it was obvious to center the rotor and Swisher centrally between the front and the rear wheels or caterpillars.

[00:04:54] Speaker 00:
Workin doesn't dispute that finding on appeal.

[00:04:56] Speaker 00:
That finding is law of the case.

[00:04:58] Speaker 00:
But for the footprint limitation,

[00:05:00] Speaker 00:
the board applied a different standard, and that's where we believe there's a legal error.

[00:05:04] Speaker 00:
The board applied inherency principles and found that the drawings and swishers don't establish the rotor in sufficient detail for caterpillar to carry its burden.

[00:05:14] Speaker 00:
But remember, the board had already found that it was obvious to locate the rotor centrally between the front and the rear caterpillars.

[00:05:20] Speaker 00:
That's claims 21 and 33, undisputed finding of the board.

[00:05:24] Speaker 00:
So it's clear that the board applied a different standard up to this footprint requirement.

[00:05:29] Speaker 00:
The board said that our burden was to show that Swisher necessarily overlaps the widest transverse dimension.

[00:05:36] Speaker 00:
And it repeatedly emphasized that mere possibilities and approximations aren't enough.

[00:05:41] Speaker 00:
Those are inherently.

[00:05:42] Speaker 01:
I'm sorry, did you argue some kind of obviousness theory not dependent on some sort of inherency notion for the claims that are now at issue?

[00:05:54] Speaker 00:
Yes, Your Honor, we presented our argument as a single reference inherency for a Neumeyer, for the shape.

[00:06:03] Speaker 00:
And then for the footprint, we argued that it would be obvious.

[00:06:06] Speaker 00:
I would point, for instance, I mean, you can look at our oral argument, appendix page 113.

[00:06:18] Speaker 00:
we explained that the middle of the machine is the most obvious place to put the rotor.

[00:06:25] Speaker 00:
And so even if there were some quibble about exactly where it is, the most obvious place to put it is in the center.

[00:06:32] Speaker 01:
And was that in your petition?

[00:06:36] Speaker 00:
In the petition, we argued at

[00:06:53] Speaker 00:
In the petition at appendix page 494, we argue that the combination of Swisher and Neumeier teaches or suggests this feature of claim 17.

[00:07:05] Speaker 00:
So we raised the obvious and standard.

[00:07:07] Speaker 00:
Our specific argument on page 498, appendix page 498, was that because Swisher's drum is located about midway between his track assemblies and because the widest transverse dimension using Neumeier's positive coupling is located about halfway,

[00:07:22] Speaker 00:
A person of ordinary skill in the art would recognize that the widest transverse dimension would overlap the footprint.

[00:07:29] Speaker 03:
But you relied on essentially figure one and the expert testimony, right?

[00:07:36] Speaker 00:
That's correct, Your Honor.

[00:07:37] Speaker 03:
And that's all that was there.

[00:07:38] Speaker 03:
And the board specifically found that figure one wasn't persuasive because it wasn't drawn to scale and found that it did not credit the testimony from your experts.

[00:07:50] Speaker 03:
So, I mean, how is that a legal error?

[00:07:54] Speaker 00:
Because the board, when they said, we don't think there's enough precision and figure, well, no, actually, we relied on all the figures of Swisher, Your Honor.

[00:08:03] Speaker 00:
But the board, you know, said there's not enough precision in these figures for us to know exactly where the rotor is located.

[00:08:10] Speaker 00:
And yet, at the same time, it found that it was obvious to put it in the middle.

[00:08:13] Speaker 00:
That's a specific finding the board made to claims 21 and 33.

[00:08:18] Speaker 00:
So that shows you that it was applying a different standard to the footprint requirement.

[00:08:23] Speaker 00:
It was requiring us to show the footprint requirement with more precision than mere obviousness.

[00:08:28] Speaker 00:
And we believe that's where the error is.

[00:08:30] Speaker 00:
We don't, we shouldn't be required to show that the footprint requirement is inherent.

[00:08:35] Speaker 00:
It only needs to be obvious.

[00:08:37] Speaker 00:
If Swisher, excuse me, if Neumeyer discloses every single aspect of figure one of the 309 patent,

[00:08:45] Speaker 00:
and operates exactly the same way as figure one of the 309 patent, which the board found and working doesn't dispute.

[00:08:51] Speaker 00:
And we showed testimony that figure one of the 309 patent yields figure seven, which has the widest transverse dimension midway between the wheels.

[00:09:01] Speaker 00:
At that point, combining Swisher and Neumeyer, all you have to show is that it was obvious to put the rotor midway between the rear and the front wheels.

[00:09:10] Speaker 00:
which we showed.

[00:09:11] Speaker 00:
And by the way, that's exactly what the patent teaches.

[00:09:13] Speaker 00:
So we showed that it was obvious in Swisher to do exactly what the 309 patent teaches, which is to position the rotor midway between the front and the rear caterpillars so that it overlaps that widest transverse dimension.

[00:09:25] Speaker 00:
So we believe the error here is that the board applied inherency principles.

[00:09:30] Speaker 00:
It essentially treated the footprint limitation like the limitation in par pharmaceuticals.

[00:09:38] Speaker 00:
where it needed to be proven by inherent obviousness, because in PAR pharmaceuticals, that particular limitation didn't exist in any single reference, either expressly or inherently.

[00:09:48] Speaker 00:
But the correct standard here is the one set forth in in-ray NAPIA, where one limitation is shown through single reference

[00:09:55] Speaker 00:
And the remaining limitations are taught or reasonably suggested by a second reference.

[00:10:00] Speaker 00:
We believe that's the situation here.

[00:10:02] Speaker 00:
Neumeyer inherently discloses the shape, which is figure seven, including the widest transverse dimension midway between the wheels.

[00:10:09] Speaker 00:
But the positioning of the rotor relative to that pattern is expressly taught or fairly suggested by Swisher.

[00:10:16] Speaker 00:
It's also an undisputed finding now that Neumeyer, excuse me, that Workin hasn't disputed in this appeal.

[00:10:23] Speaker 00:
And we believe, as a matter of obviousness, that shows the footprint limitation.

[00:10:29] Speaker 00:
That's all I have, Your Honors, unless you have other questions.

[00:10:34] Speaker 03:
No, we'll hear from Mr. Powers.

[00:10:37] Speaker 02:
Thank you.

[00:10:38] Speaker 02:
Thank you, Your Honor, and may it please the court.

[00:10:42] Speaker 02:
Substantial evidence supports the board's opinion that Caterpillar failed to prove claim 1729 and their dependent claims would have been obvious.

[00:10:50] Speaker 02:
On the facts, the board found

[00:10:52] Speaker 02:
that Caterpillar failed to show that the stability pattern in the Swisher-Newmire combination was inherently four-sided.

[00:11:00] Speaker 02:
On the facts, Caterpillar failed to show the inherent location of the widest transverse dimension of the stability pattern in the Swisher-Newmire combination, and Caterpillar failed to show that the widest transverse dimension of the stability pattern at that inherent location falls within a footprint of the working roller in the combined machine.

[00:11:20] Speaker 02:
Caterpillar needed all three to prevail, and it failed on all three.

[00:11:24] Speaker 03:
But what's your response to the argument that as it relates to the footprint, it was talking about obviousness and not inherency?

[00:11:37] Speaker 02:
Well, Your Honor, Caterpillar, first of all, the board did not hold Caterpillar to an inherency standard when it addressed the footprint of Swisher's rotor.

[00:11:49] Speaker 02:
In fact, Caterpillar's evidence relying on figures one and three from Swisher, as you pointed out, Judge, there's nothing in those figures that shows where the rotor actually is.

[00:12:04] Speaker 02:
Nothing in the record supports Caterpillar's allegation that the board appeared to apply a heightened inherency standard for the location of Swisher's rotor.

[00:12:13] Speaker 02:
The rotor itself isn't even visible in any of figures one through three.

[00:12:18] Speaker 03:
Well, where can you point to me where the board addressed Swisher in the context of an obviousness type analysis?

[00:12:27] Speaker 02:
Yes, Your Honor.

[00:12:28] Speaker 02:
That's in the appendix on pages 53 to 55.

[00:12:33] Speaker 02:
If we go there, we see that the board used inherency when it was applying an inherency standard to Caterpillar's arguments.

[00:12:46] Speaker 02:
It did not use inherently when it evaluate the word inherently or inherently principles when it evaluated Caterpillar's arguments regarding Swisher's rotor.

[00:12:58] Speaker 02:
So the board knew how to say inherently when it applied inherently and it just simply didn't hear.

[00:13:03] Speaker 03:
But it didn't actually say obviousness, did it?

[00:13:08] Speaker 02:
It certainly reached the conclusion that Caterpillar hadn't kept its burden, or met its burden.

[00:13:13] Speaker 02:
I'm not sure that it used the term obviousness.

[00:13:17] Speaker 02:
But it evaluated Caterpillar's evidence and its lack thereof through the lens of a traditional obviousness analysis and reached the finding that Caterpillar simply didn't carry its burden because it relied on figures that were A, not drawn to scale, and B, don't even show the working rotor.

[00:13:37] Speaker 02:
Another problem with Caterpillar's evidence that Verkan pointed out was that Caterpillar's petition didn't even mention the diameter

[00:13:46] Speaker 02:
of Swisher's rotor.

[00:13:48] Speaker 02:
And of course the diameter of Swisher's rotor is central to understanding what the footprint of that rotor is.

[00:13:57] Speaker 02:
Another thing, Your Honor, just about the claims in general, Caterpillar likes to focus on the term footprint and call it the footprint limitation.

[00:14:05] Speaker 02:
But really that limitation is, the whole claim says, has a four-sided stability pattern having a widest transverse dimension

[00:14:14] Speaker 02:
transverse to the forward direction of the chassis, which widest transverse dimension falls within a footprint of the working roller or rotor?

[00:14:22] Speaker 02:
So you need two things for that second part of the limitation.

[00:14:26] Speaker 02:
You need the widest transverse dimension falling within a footprint of the working roller or rotor.

[00:14:32] Speaker 02:
And if we could just go to appendix 561, where Caterpillar took you earlier, and a drawing that was made by Virkin's expert, Dr. Lumpkes,

[00:14:44] Speaker 02:
there, that is not proof of the widest transverse dimension.

[00:14:48] Speaker 02:
In that deposition, Dr. Lumpkes was asked to draw midpoints between the wheels and to draw a line intersecting the widest transverse points there.

[00:15:01] Speaker 02:
That is not evidence of the widest transverse dimension as an inherent principle.

[00:15:05] Speaker 02:
He was simply just connecting dots in that exercise there.

[00:15:11] Speaker 02:
And Caterpillar simply reprises evidence that the board considered and rejected on the facts.

[00:15:18] Speaker 02:
Also, the board noted that Mr. Labis' opinion testimony was simply unsupported.

[00:15:24] Speaker 02:
At Appendix 55, the board said petitioner's evidence, essentially the opinion testimony of Mr. Labis, is unsupported by probative facts or data.

[00:15:34] Speaker 02:
And indeed, Mr. Labis, Caterpillar's expert in his declaration, did little more than just parrot

[00:15:41] Speaker 02:
Caterpillar's petition and offered no underlying evidence of the claimed shape or location of the stability pattern that was known or understood in the art.

[00:15:49] Speaker 02:
Prior or otherwise, all he did was attempt to use the 309 patent against itself, which this court has cautioned is inappropriate, especially in an obviousness analysis.

[00:16:00] Speaker 02:
And as I mentioned, the board, again, at Appendix 50 concluded this opinion testimony is unsupported by any facts or data.

[00:16:08] Speaker 02:
It provides no analysis as to why it is linked to vehicle design.

[00:16:15] Speaker 01:
Can you address the points that Mr. Barney made about the boards explicitly adopting the petitions factual assertions about the obviousness of central arrangement

[00:16:38] Speaker 01:
for purposes of claim 21?

[00:16:42] Speaker 02:
Yes, Your Honor.

[00:16:43] Speaker 02:
I think it was claim 22.

[00:16:44] Speaker 02:
Was it 22?

[00:16:45] Speaker 01:
Okay.

[00:16:47] Speaker 02:
I could be wrong.

[00:16:48] Speaker 02:
But regardless, I think there the board under the broadest reasonable interpretation standard that was in play at the time simply thought that that limitation meant that the rotor was arranged between the front and rear legs.

[00:17:06] Speaker 02:
And that isn't enough to get us here

[00:17:08] Speaker 02:
to the limitations at issue in claims 17 and 29 and their dependent claims.

[00:17:14] Speaker 02:
So Caterpillar had to show the widest transverse dimension and even the alleged admission that was alluded to by Virkin's expert Dr. Lumpkes where he said under certain circumstances there's a four-sided stability pattern present in Neumeyer, that says nothing about where the widest transverse dimension would be.

[00:17:32] Speaker 02:
So Caterpillar simply fails there.

[00:17:38] Speaker 02:
Your Honor, if I could move on to simply going back to Verkan Swisher's footprint, it essentially came down to a battle of the experts.

[00:17:51] Speaker 02:
And at appendix 1035 to 1041, Dr. Lumpke's testimony there showed that there were several problems with making the kind of assumptions that Caterpillar's evidence required based on simply the figures in

[00:18:08] Speaker 02:
Swisher, figures one through three that it pointed to, and the statement that's in Swisher that only says at best that the planing assembly is positioned to be more closely in line with the center of gravity.

[00:18:22] Speaker 02:
But the center of gravity there doesn't have anything to do necessarily with the middle of the machine, the midpoint of the machine, and Caterpillar made this false equivalence between the center of gravity and the midpoint.

[00:18:35] Speaker 02:
It simply just isn't true that Swisher provides any more detail about its figures than that in what I said on the point of where the rotor is actually located.

[00:18:45] Speaker 02:
If there are no other questions.

[00:18:46] Speaker 03:
Do you want to save time for your cross appeal?

[00:18:48] Speaker 02:
Yes, Your Honor.

[00:18:49] Speaker 02:
I'd like to move on to the cross appeal.

[00:18:52] Speaker 03:
OK.

[00:18:53] Speaker 02:
So first, I'd like to start with the Swisher-Newmeyer combination that Caterpillar alleged.

[00:18:59] Speaker 02:
Caterpillar introduced its proposed combination

[00:19:03] Speaker 02:
in the petition by acknowledging that Swisher, the primary reference, requires individual leg adjustment of its hydraulic cylinders in order to achieve proper cutting orientation of the planing assembly.

[00:19:14] Speaker 02:
And that's at appendix 467.

[00:19:16] Speaker 02:
Next, Caterpillar argued that a POSA would have been motivated to replace Swisher's leg assemblies with those of Neumeyer because Neumeyer allegedly addresses this requirement of individual adjustment head on.

[00:19:31] Speaker 02:
And that's at appendix 467.

[00:19:33] Speaker 01:
And I'm sorry, when you say addresses it, what you mean is that Neumeier provides for single wheel adjustment?

[00:19:41] Speaker 02:
That is what Caterpillar alleged, Geron.

[00:19:43] Speaker 01:
Right, at 467.

[00:19:44] Speaker 01:
Yes, repeated.

[00:19:45] Speaker 02:
That's exactly right.

[00:19:47] Speaker 02:
But during trial, both experts agreed that Neumeier has no ability to individually adjust a single cylinder in isolation.

[00:19:55] Speaker 02:
And we briefed that substantially at red brief at 66 and gray brief at four, citing

[00:20:02] Speaker 02:
underlying evidence where both experts agree that Neumeyer simply has no ability to do that.

[00:20:07] Speaker 02:
What Neumeyer does is it can only adjust its legs in pairs.

[00:20:12] Speaker 02:
Caterpillar even admits this now that Neumeyer doesn't disclose individual adjustment of isolated cylinders and that's at the yellow brief at 42.

[00:20:21] Speaker 03:
The board split its analysis.

[00:20:23] Speaker 03:
I mean there's claims 1 and 26 on the one hand and then there's 11 through 13, 24 and 36 on the other.

[00:20:31] Speaker 03:
With respect to 1 and 26, didn't the board reject your incompatibility argument because it found that there was nothing in the 309, at least as to those claims, that required proper grade and cross slope?

[00:20:49] Speaker 02:
Well, Your Honor, the problem with that is that the board relied on simply the language of the claims, but didn't hold Caterpillar to the rationale it put forth in the petition.

[00:21:01] Speaker 02:
The motivation to combine was certainly undergirded, pinned to Neumeier's alleged ability to individually, in isolation, adjust a wheel to meet a need of the primary reference swisher.

[00:21:15] Speaker 02:
It did not.

[00:21:17] Speaker 02:
It was shown throughout trial that Neumeier does not meet that need, and therefore Caterpillar's reason to combine was flawed, and the board erred legally by only looking at the claimed limitation

[00:21:30] Speaker 02:
and not the reason to combine as articulated.

[00:21:33] Speaker 01:
What, what, what, what, what precedent says that, um, if a factual assumption of the asserted motivation turns out to be false, that that matters even for purposes of a claim that doesn't require that fact.

[00:21:58] Speaker 02:
Well, Your Honor, I'd point to intelligent biosystems, where there, the secondary reference could not meet the requirement of a primary reference.

[00:22:05] Speaker 02:
And the court said, this is central to a finding of no motivation to combine.

[00:22:11] Speaker 02:
And that's exactly Birkin's argument.

[00:22:13] Speaker 02:
And that's at intelligent biosystems at 821 F 3rd at 1368.

[00:22:18] Speaker 02:
So intelligent biosystem seems to be right on point here.

[00:22:22] Speaker 02:
And third, Your Honor, the board erred by relying on Swisher's

[00:22:27] Speaker 02:
pre-combination features to conclude, to the extent that some grade and cross-flow control is required, Swisher clearly discloses it.

[00:22:35] Speaker 02:
The board said that at Appendix 34, but the problem is that when you replace Swisher's hydraulic arrangement with Zappos-Neumeyer, you destroy Swisher's ability to control individual legs.

[00:22:51] Speaker 02:
And so the board made a mistake there.

[00:22:53] Speaker 02:
They erred legally.

[00:22:55] Speaker 01:
And finally, what's the problem with what the board did on FRY and 11 through 13, 24, and 36?

[00:23:01] Speaker 02:
Yes, Your Honor.

[00:23:03] Speaker 02:
Well, there's two problems.

[00:23:05] Speaker 02:
The first one is that the board did not comply with APA standards.

[00:23:09] Speaker 02:
At appendix 56 to 58, the board merely summarized the party's arguments, and without anything more, makes a conclusion.

[00:23:15] Speaker 02:
That runs afoul of in re nuvation.

[00:23:19] Speaker 01:
What's your substantive point?

[00:23:21] Speaker 02:
The substantive point is that both experts agreed

[00:23:25] Speaker 02:
that the figure included in Mr. Labis' declaration at appendix 353 would not actually work to move one leg.

[00:23:34] Speaker 02:
Mr. Labis admitted on cross-examination that both hydraulic cylinder 1A and hydraulic cylinder 3A are being controlled.

[00:23:41] Speaker 02:
So two are going nowhere and one is going up and one is going down in that arrangement that Mr. Labis put forth in his declaration.

[00:23:50] Speaker 02:
And so Caterpillar never provided an embodiment

[00:23:53] Speaker 02:
anywhere in this case that could control an individual leg.

[00:23:57] Speaker 02:
That's at appendix 636 to 638.

[00:24:07] Speaker 02:
Am I, I believe I'm out of time, Your Honor, so I'll... Yes, I think you are.

[00:24:10] Speaker 02:
Thank you.

[00:24:13] Speaker 03:
Okay, we'll go back to Mr. Barney.

[00:24:16] Speaker 00:
Thank you, Your Honor.

[00:24:18] Speaker 00:
Very quickly on the, uh, inherency point,

[00:24:22] Speaker 00:
One of the arguments that my colleague has made is that the board didn't actually apply inherencies to the footprint limitation.

[00:24:30] Speaker 00:
I believe that is incorrect and I would point your honors to first appendix page 54 in the board's opinion where the board says that petitioner's evidence does not meet the high standard base and preponderance of the evidence applicable to this proceeding.

[00:24:49] Speaker 00:
The proponents of the evidence does not establish that the Swisher-Newmire combination inherently has a four-sided stability pattern with a widest transverse of the forward direction, which widest dimension falls within a footprint.

[00:25:02] Speaker 00:
So it included the footprint within the inherency.

[00:25:05] Speaker 00:
We also saw in appendix page 54 where the board required us to show that the widest transverse dimension necessarily falls within the milling drum's footprint.

[00:25:16] Speaker 00:
Again, that's a clear inherency requirement.

[00:25:18] Speaker 00:
And then, as I also mentioned in my argument, you see the disparity between the board finding that it was obvious to censor the rotor, but then finding that we didn't present enough evidence as to the exact position of the rotor for purposes of a footprint limitation.

[00:25:31] Speaker 00:
So we think it's pretty clear the board did apply inherency principles to the footprint limitation.

[00:25:37] Speaker 00:
In terms of the diameter of the rotor, that's a red herring.

[00:25:40] Speaker 00:
There was no dispute in this case that these rotors are massive.

[00:25:44] Speaker 00:
And so there's no requirement that you figure out what the exact dimension of the rotor is to show overlap, because once it's obvious to center the rotor, and once it's shown that inherently the widest transverse dimension is in the center between front and rear wheels, it doesn't matter what the dimension of the rotor is.

[00:26:02] Speaker 00:
It's some non-zero dimension that is going to overlap that widest transverse dimension.

[00:26:08] Speaker 00:
With respect to the cross appeal,

[00:26:11] Speaker 00:
Workin's motivation to combine argument.

[00:26:14] Speaker 00:
Well, first of all, do your honors have any other questions about the inherency points?

[00:26:20] Speaker 00:
OK.

[00:26:20] Speaker 00:
With respect to Workin's cross-appeal, their motivation to combine argument hinges on two false premises.

[00:26:26] Speaker 00:
First, Workin contends that Squisher's gradient slope control requires the ability to isolate and individually control each leg cylinder by itself.

[00:26:36] Speaker 00:
There is simply no evidence in the record of this.

[00:26:39] Speaker 00:
Even Werken's own experts stopped short of endorsing this theory as we explained at page 49 of our yellow brief.

[00:26:46] Speaker 00:
Swisher, if you read what it says about its control system.

[00:26:50] Speaker 01:
I'm sorry, can you just address this?

[00:26:53] Speaker 01:
So your petition and the supporting declaration, and I guess I'm thinking particularly of page appendix 467, but I think there are others too.

[00:27:04] Speaker 01:
I think unmistakably say that a motivation to combine these things is dependent on preserving

[00:27:14] Speaker 01:
single wheel adjustment ability, which Swisher has, which you say, if you put in the thing you're going to get from from Neumeyer, you're still going to have because Neumeyer has it.

[00:27:28] Speaker 01:
And yet it turns out, as the evidence developed, Neumeyer doesn't have it.

[00:27:33] Speaker 01:
And so if you swap that into Swisher, you now no longer have

[00:27:38] Speaker 01:
have single wheel adjustment ability.

[00:27:42] Speaker 01:
You know what I mean by that.

[00:27:43] Speaker 01:
I know there's been a lot of ambiguity, but one wheel height control while not controlling the other three.

[00:27:51] Speaker 01:
And why does that factual failure not simply destroy the only narrative you produced for why APOSA would do this combination?

[00:28:02] Speaker 00:
I think you put your finger on it, Your Honor.

[00:28:04] Speaker 00:
There's ambiguity.

[00:28:05] Speaker 00:
And I think these... I'm sorry.

[00:28:07] Speaker 01:
I don't think that there's ambiguity in what the evidence shows about Neumeyer.

[00:28:13] Speaker 01:
Just this word individual adjustment has ambiguity.

[00:28:17] Speaker 01:
That's why I'd like you to use the term single wheel adjustment, understanding it means move up and down one wheel, don't touch the other three.

[00:28:26] Speaker 00:
Sure.

[00:28:27] Speaker 00:
I'll answer the question as directly as I can.

[00:28:29] Speaker 00:
We never argued that Neumeyer single wheel adjustment

[00:28:34] Speaker 00:
It is necessary.

[00:28:36] Speaker 00:
We never argued that Neumeier has that single wheel adjustment.

[00:28:39] Speaker 00:
We argued that it has individual adjustment because it does.

[00:28:43] Speaker 00:
You go to, you read Neumeier, and on Appendix page 206, it very clearly says that it has individually adjusted hydraulic cylinders.

[00:28:51] Speaker 00:
It absolutely does have that.

[00:28:53] Speaker 00:
It's 100% true and accurate that it has individually adjusted

[00:28:57] Speaker 00:
cylinders.

[00:28:58] Speaker 01:
The problem here is that it has something that it calls individual adjustment, which it turns out not to be single wheel adjustment.

[00:29:06] Speaker 00:
It's not single wheel adjustment, it's individual adjustment in the same sense that Workin has individual wheel adjustment.

[00:29:13] Speaker 00:
It means that each wheel has its own hydraulic cylinder, which can be separately controlled depending on the mode.

[00:29:18] Speaker 00:
You have to remember, Your Honor, there's different modes here.

[00:29:21] Speaker 00:
And so in order to be able to roll the machine left and right and pitch it forward and aft, each cylinder has to be individually adjustable.

[00:29:29] Speaker 00:
That doesn't necessarily mean that you can isolate them and move them each without adjusting the other three.

[00:29:33] Speaker 00:
We never argued that second point.

[00:29:35] Speaker 00:
That's a strong man that working invented.

[00:29:37] Speaker 00:
We were very clear in our petition that for that ability for the ability to isolate.

[00:29:42] Speaker 00:
You had to bring in another reference.

[00:29:44] Speaker 00:
That was our ground to argument or ground one argument never relied on this so called individual adjustment.

[00:29:50] Speaker 00:
It's working is trying to take advantage of that ambiguity in the term individual control.

[00:29:55] Speaker 00:
They did that throughout the case below.

[00:29:57] Speaker 00:
The board admonished Workin on that, specifically admonished them and said that is not what Caterpillar is arguing because it isn't what we argued.

[00:30:05] Speaker 00:
We only argued that it had the same type of individual control that Swisher has.

[00:30:09] Speaker 00:
Because if you read Swisher, Swisher does its great and slow control by adjusting pairs of cylinders.

[00:30:15] Speaker 00:
And even Workin's own attorney admitted that.

[00:30:19] Speaker 00:
in oral argument.

[00:30:20] Speaker 00:
He admitted that when Swisher talks about individual control of cylinders, he's talking about, I think the word was

[00:30:28] Speaker 00:
not rolling, but he talked about it basically tilting left and right.

[00:30:32] Speaker 00:
That's what Swisher is talking about when he talks about individual controlled cylinders.

[00:30:38] Speaker 00:
I just think this whole argument on working part is based on taking advantage of an ambiguity in that particular term.

[00:30:45] Speaker 01:
Swisher does not in fact have the ability to do single wheel adjustment, is that what you're saying?

[00:30:51] Speaker 00:
Well, there is an admission from Workin that it does.

[00:30:54] Speaker 00:
But my point is, if you read what Swisher is saying in terms of its grade and slope control, which is what Workin was capitalizing on, it controls grade and slope by tilting the machine left and right.

[00:31:09] Speaker 00:
And when it does that, it controls pairs of cylinders, not individual cylinders.

[00:31:14] Speaker 00:
There's just no evidence in the record at all that Workin requires the ability to individually isolate

[00:31:20] Speaker 00:
its legs in order to accomplish grade and slope control.

[00:31:23] Speaker 00:
There's just no evidence of that.

[00:31:25] Speaker 00:
That's something we can argue, but they never presented any evidence on.

[00:31:32] Speaker 03:
Okay, I think your time is up.

[00:31:34] Speaker 00:
Okay, thank you, Your Honors.

[00:31:35] Speaker 03:
Okay, Mr. Powers, you have three minutes for rebuttal.

[00:31:38] Speaker 02:
Your Honors, Caterpillar repeatedly argued that Swisher discloses individual leg adjustment, meaning

[00:31:48] Speaker 02:
individual and isolated leg adjustment.

[00:31:51] Speaker 02:
And it's throughout Swisher and Caterpillar concedes it now.

[00:31:55] Speaker 02:
For example, at appendix 164, column 7, line 4, Swisher says, each leg assembly further serves to maintain the mainframe at a selectively variable height above the roadway as is required for proper cutting orientation of the planning assembly.

[00:32:13] Speaker 02:
And that's the very quote that Caterpillar relied on in its petition

[00:32:17] Speaker 02:
to support the motivation to combine Swisher and Neumeyer.

[00:32:22] Speaker 02:
Moving on to column 8 of Swisher, Swisher says at column 8, line 40, extension and retraction of the left forward leg assembly, discussing only one leg assembly, may be required to alter the elevation and orientation of the planing assembly with respect to the roadway surface.

[00:32:38] Speaker 02:
It's accomplished by extension and retraction of a hydraulic cylinder.

[00:32:42] Speaker 02:
And Swisher goes on from there to describe in detail how

[00:32:48] Speaker 02:
how Swisher can use individual isolated leg adjustment, and that is a feature in Swisher.

[00:32:54] Speaker 02:
And indeed, the board relied on that individual isolated leg adjustment in Swisher to conclude in its final written decision that to the extent some individual leg adjustment is required, Swisher teaches it, Swisher discloses it.

[00:33:11] Speaker 02:
And so, Your Honor, it's simply not true that Swisher doesn't require individual leg adjustment

[00:33:18] Speaker 02:
because it does, it says so multiple times.

[00:33:22] Speaker 02:
And Caterpillar used individual consistently to mean single wheel adjustment, for example, at appendix 517.

[00:33:29] Speaker 02:
Although Neumeyer discloses adjustment of individual cylinders, it does not explicitly illustrate the specific circuitry for such adjustment.

[00:33:38] Speaker 02:
A Posita would, however, have been able to design a valve system that would have allowed raising or lowering of an individual hydraulic cylinder as disclosed by Neumeyer and then

[00:33:47] Speaker 02:
they bring in fray at appendix 517 and also appendix 350 to 351 paragraph 259.

[00:33:57] Speaker 02:
That's their expert testimony on that point.

[00:34:00] Speaker 02:
So Caterpillar's evidence simply fails to establish the very motivation to combine.

[00:34:08] Speaker 02:
And I'd also just like to touch on a couple more points, Your Honor.

[00:34:11] Speaker 02:
First, Caterpillar has this new argument for the first time on this appeal that pairs of cylinders

[00:34:17] Speaker 02:
can satisfy the requirement of Swisher adjusting a pair of cylinders.

[00:34:22] Speaker 02:
But they never made that argument throughout the IPR.

[00:34:27] Speaker 02:
And as I mentioned previously, Swisher pretty clearly shows and discloses isolated individual adjustment of an individual cylinder.

[00:34:35] Speaker 02:
And that's how CAT understood Swisher when it put together its petition.

[00:34:45] Speaker 02:
OK, good timing.

[00:34:46] Speaker 02:
No questions.

[00:34:47] Speaker 03:
All right.

[00:34:47] Speaker 03:
Thank you.

[00:34:48] Speaker 02:
Thank you, Your Honor.

[00:34:49] Speaker 03:
No, the cases will all be submitted.

[00:34:53] Speaker 02:
The Honorable Court is adjourned until tomorrow morning at 10 a.m.