[00:00:00] Speaker 02:
Okay, our next case for argument is 21-1168.

[00:00:04] Speaker 02:
Inrey Kirilichin.

[00:00:08] Speaker 02:
Am I saying that right?

[00:00:09] Speaker 02:
Please tell me how to say it.

[00:00:11] Speaker 04:
Uh, Kirilichin.

[00:00:12] Speaker 02:
Kirilichin.

[00:00:13] Speaker 02:
Thank you.

[00:00:13] Speaker 02:
Uh, Inrey Kirilichin.

[00:00:15] Speaker 02:
Mr. Winter, please proceed.

[00:00:19] Speaker 04:
Okay.

[00:00:20] Speaker 04:
Uh, thank you.

[00:00:21] Speaker 04:
Uh, and thank you for the opportunity to almost be there in person.

[00:00:26] Speaker 04:
This involves a metal ceiling insert.

[00:00:31] Speaker 04:
It's capable of withstanding pretty extreme pressures.

[00:00:36] Speaker 04:
It's used in manufacturing internal passive waves in hydraulic manifolds.

[00:00:41] Speaker 04:
One of the claims involves the ability to withstand 40,000 psi, which, for reference, a normal air compressor that you use for tools goes up to about 120 psi.

[00:00:54] Speaker 04:
And if one of those tanks ruptured, it would be like a bomb going off.

[00:00:59] Speaker 04:
So this is 40,000 PSI.

[00:01:00] Speaker 04:
So these are pretty high-pressure situations in applications.

[00:01:09] Speaker 04:
And I think what's unique about this case compared to others that you probably often see from patent offices is that when you have people arguing that the patent office didn't consider

[00:01:21] Speaker 04:
the reference as a whole, I think you normally have to infer that from what happened.

[00:01:25] Speaker 04:
We actually have an express statement that the examiner says, to be clear, the only teaching the examiner has gleaned from the disclosure of leave is that it is known to be advocated to press similarly assembled two components of a ceiling insert.

[00:01:44] Speaker 04:
And so that raises two issues.

[00:01:46] Speaker 04:
Number one, because that's the only thing I've considered.

[00:01:51] Speaker 01:
This is Judge Probs.

[00:01:53] Speaker 01:
Let me just clarify this and see if we're on the same wavelength as the point.

[00:01:57] Speaker 01:
We disclosed the tapering to aid in pre-assembling the plug and sleeve.

[00:02:02] Speaker 01:
Is that correct?

[00:02:04] Speaker 01:
Correct.

[00:02:05] Speaker 01:
And you're claiming the plug is also tapered, right?

[00:02:11] Speaker 04:
No.

[00:02:13] Speaker 04:
So we have a cylindrical metallic sleeve.

[00:02:17] Speaker ?:
And so it's the core.

[00:02:21] Speaker ?:
The core itself is tapered.

[00:02:23] Speaker 04:
And so that core has to be tapered to make a forcible extension.

[00:02:30] Speaker 04:
However, the cylindrical metallic sleeve is what is the difference between basically our plug and leaf.

[00:02:36] Speaker 04:
So if you look at the leaf plug, the outside wall is tapered, and it goes in a tapered hole.

[00:02:44] Speaker 04:
And so the tapered are the two match.

[00:02:46] Speaker 04:
And then you press the internal pin

[00:02:51] Speaker 04:
in Lee to force that already tapered insert, that already tapered outer wall, against the tapered hole.

[00:02:59] Speaker 04:
And so what Lee talks about is in column one, starting at, this is Appendix 611, column one of the Lee reference, both said prior assumption about the control expansion

[00:03:19] Speaker 04:
of a cylindrical plug network.

[00:03:21] Speaker 04:
So that's referring to earlier in column one, he cites two pattern numbers.

[00:03:28] Speaker 04:
And those involve cylindrical plugs with a cylindrical outer wall.

[00:03:33] Speaker 04:
And so the lead reference goes on to discuss these cylindrical plugs with a basically straight up and down outer wall.

[00:03:40] Speaker 04:
It goes on for much of column one through column two to discuss some of the challenges with those inserts.

[00:03:48] Speaker 04:
And on column two, line 20, it says, pre-assembly of the feeding plug members has not been found to be practical in part because of the large-diameter and unradial distortion.

[00:04:02] Speaker 04:
So effectively, Lee is saying, look, we have all of these problems with the cylindrical plugs, and they don't work for pre-insertion or pre-assembly.

[00:04:16] Speaker 04:
And so the solution we have is paper is on the wall.

[00:04:20] Speaker 02:
Well, counsel, counsel, this is Judge Moore.

[00:04:23] Speaker 02:
You're kind of blending two arguments, which is fine, but I want to tease them out for a second.

[00:04:29] Speaker 02:
Your two blended arguments are, one, there isn't a motivation to combine these two things in part because of these statements in Lee, and I understand that argument.

[00:04:38] Speaker 02:
But I want to pull away from that argument just for a second because one of the things you argued to the examiner,

[00:04:45] Speaker 02:
You then argued as your very first point in your brief to the board and you argued in your first point in your brief to us was that at no point did the PTO address what you believe to be a teaching away in column two.

[00:04:59] Speaker 02:
Is that accurate?

[00:05:01] Speaker 02:
Have I understood your facts as argued?

[00:05:06] Speaker 04:
That's correct.

[00:05:07] Speaker 02:
They never... You argued it to the examiner, and the examiner never made mention of it, in fact said the only thing he was relying on Lee for was this other thing, right?

[00:05:17] Speaker 04:
He had directed by saying it's preposterous.

[00:05:22] Speaker 04:
And he didn't really... He sort of just had directed by saying it's preposterous to believe it.

[00:05:27] Speaker 02:
But he didn't really... What's preposterous?

[00:05:31] Speaker 04:
The idea that you wouldn't use practice.

[00:05:35] Speaker 04:
So the examiner, there's somewhere in the examiner's answer, I believe, because the idea that you wouldn't press the examiner.

[00:05:45] Speaker 02:
Okay, so that's a different question.

[00:05:48] Speaker 02:
I'm saying you made this argument to the examiner about Lee.

[00:05:54] Speaker 02:
The examiner in his rejection didn't mention it, right?

[00:05:59] Speaker 02:
His final rejection was not appealed to the board, right?

[00:06:02] Speaker 01:
Right, correct.

[00:06:03] Speaker 02:
Then you make the argument again to the board.

[00:06:06] Speaker 02:
The argument is, by the way, the examiner never addressed, in an APA violation sense, never addressed our teaching away argument.

[00:06:17] Speaker 04:
There's no question he didn't address it in his final rejection.

[00:06:22] Speaker 02:
Now, all of a sudden, the examiner says in his responsive brief to the board, well, that's just preposterous, okay?

[00:06:32] Speaker 02:
then likewise doesn't address it at any point in the opinion.

[00:06:35] Speaker 02:
Is that accurate?

[00:06:36] Speaker 02:
The board never addresses head on at all this teaching away argument.

[00:06:41] Speaker 02:
Is that correct?

[00:06:42] Speaker 04:
That's exactly correct.

[00:06:43] Speaker 02:
And then you make the argument to us on appeal and the very first point is your first argument in your brief is we've made this argument throughout and I'm not sure why but the PTO is still not ever has never addressed it.

[00:06:56] Speaker 02:
Is that correct?

[00:06:58] Speaker 04:
Yes.

[00:06:59] Speaker 02:
Okay, so the red tape comes in and rather than offer any explanation for why it was never addressed below, they instead tell us we should just decide it as a matter of first impression on appeal.

[00:07:10] Speaker 02:
Does that feel right to you?

[00:07:11] Speaker 02:
Yes.

[00:07:12] Speaker 02:
And wouldn't this be a question of fact, this whole teaching away and what a reference discloses?

[00:07:17] Speaker 04:
Yes.

[00:07:18] Speaker 02:
Do you think we, the Federal Circuit, should be deciding such questions of fact on appeal in the first instance?

[00:07:23] Speaker 04:
No, I don't think that's what you do.

[00:07:26] Speaker 02:
Okay, so you're arguing motivation combined and you're trying to use this statement as part of your analysis.

[00:07:32] Speaker 02:
But my problem with being able to go with you all the way where you'd like to go to a reversal is that I have the PTO never on record as having actually decided this part of that question.

[00:07:45] Speaker 02:
And that's where my hesitance lies in being willing to think about whether or not you're right about the motivation to make this combination.

[00:07:53] Speaker 02:
The PTO never addressed your teaching away argument.

[00:07:56] Speaker 02:
And so that's where I'm a little stuck, because it's a question of fact.

[00:08:00] Speaker 04:
Well, they addressed it in a very lucrative fashion.

[00:08:04] Speaker 04:
So they didn't use substantial reasoning or evidence.

[00:08:08] Speaker 04:
They didn't explain.

[00:08:10] Speaker 04:
They just said, no, it's not credible.

[00:08:13] Speaker 04:
No.

[00:08:13] Speaker 04:
we think want to scale the art would just understand.

[00:08:16] Speaker 02:
When you say they, you mean the PTO in its red grape on appeal, right?

[00:08:22] Speaker 02:
Because I didn't see the board address it at all, even in a cursory fashion.

[00:08:25] Speaker 00:
So the board, let me... Isn't part of the confusion here that your position is not just that they didn't address your teaching away, but they didn't understand it?

[00:08:39] Speaker 04:
Yeah, they did address it so, so, well, let me.

[00:08:43] Speaker 00:
It's not as simplistic as the red brief would make it out to be, in other words.

[00:08:47] Speaker 04:
Right, yeah, it will, yeah, to be able to withstand 40,000 TSI blowout pressure is an incredibly challenging deal.

[00:08:55] Speaker 04:
It looks simple, but, you know, that's, I don't know what the forces of a bullet being shot at with a gun, but I imagine 40,000 TSI is somewhat close to it.

[00:09:07] Speaker 04:
But if you look at it, and they,

[00:09:09] Speaker 04:
That's page six of the board's decision, conceiving of and executing pre-insertion friction potato broth team's plug to sweep apart more than ordinary scale leads like KSR and for the obvious known method combination.

[00:09:28] Speaker 04:
So that's sort of the second half of the first full paragraph there.

[00:09:34] Speaker 04:
So they do it, tend to do it.

[00:09:37] Speaker 04:
Again, on Appendix 9... Wait, wait.

[00:09:38] Speaker 02:
Time out.

[00:09:39] Speaker 02:
Time out.

[00:09:40] Speaker 02:
You're talking about page 6 of the board's opinion?

[00:09:43] Speaker 04:
Appendix 7.

[00:09:44] Speaker 04:
Yes.

[00:09:44] Speaker 04:
Okay.

[00:09:45] Speaker 04:
Yes.

[00:09:45] Speaker 02:
And you're reading from the... We also agree that Lee provides the requisite motivation to modify Rothstein as proposed in the rejection.

[00:09:55] Speaker 04:
So, I'm looking at page 6 of Appendix 7.

[00:09:58] Speaker 02:
Right.

[00:09:58] Speaker 02:
But which sentence?

[00:10:00] Speaker 04:
Please tell me which sentence.

[00:10:02] Speaker 04:
Conceding of... So, you look at... 1, 2, 3, 4, 5, 6, 7.

[00:10:05] Speaker 04:
So that's sort of them saying, oh, well, someone would just understand it.

[00:10:20] Speaker 04:
It's obvious.

[00:10:20] Speaker 02:
It's sort of a... Yes, but that sort of goes to whether a skilled artisan would be able to do that with Rothstein's club.

[00:10:28] Speaker 02:
Do you think it goes

[00:10:29] Speaker 02:
and decides your argument, which I understood to be that Lee teaches away from it.

[00:10:34] Speaker 02:
I mean, you made a very specific argument pointing to a sentence in Lee, and I just don't see it cited or addressed.

[00:10:41] Speaker 04:
Right, so the way the examiner addresses it is he takes Lee's teaching and distracts him, right?

[00:10:50] Speaker 04:
So he takes Lee's teaching of, yes, Lee does teach press fit and create sentence.

[00:10:57] Speaker 04:
But Lee teaches that the only way you're able to accomplish that is by tapering the outer wall and tapering the hole.

[00:11:03] Speaker 04:
So the examiner takes that statement and abstracts it to say, look, in general, press fitting is effective.

[00:11:12] Speaker 04:
So the examiner is conflating the teachings of Lee to extend beyond what Lee itself would agree with, just to say, just in general, it teaches preemptively when it says, no, cylindrical doesn't work.

[00:11:26] Speaker 04:
And we need to taper.

[00:11:28] Speaker 04:
So that's really what's going on.

[00:11:30] Speaker 00:
And then there's another... So, but the board then is basically just saying tapering is tapering is tapering.

[00:11:35] Speaker 00:
And since they all refer to tapering, that's the end of the inquiry.

[00:11:39] Speaker 04:
Right.

[00:11:40] Speaker 04:
Which, again, we've got the cylindrical metallic sleeve.

[00:11:44] Speaker 04:
And when Lee is not a cylindrical metallic sleeve, there's a tapered metallic sleeve.

[00:11:49] Speaker 04:
We had arguments about the proper construction of cylindrical, which I

[00:11:53] Speaker 04:
don't think of that issue as effectively vertical or straight parallel walls.

[00:12:00] Speaker 04:
And so, you know, we have the examiner, I think what's going on is he's acknowledging that we made this argument, but he's trying to address it by saying, no, Lee teaches press fitting in general, right?

[00:12:18] Speaker 04:
I, you know, he's looking at the argument, he thinks it's preposterous, and I just think in general, Lee teaches pre-assembly, which is an improper abstraction of the record.

[00:12:30] Speaker 04:
So I think the examiner has really seen the argument and has considered it, but he doesn't, he abstracts the teaching in a way that, um, Lee just doesn't agree with.

[00:12:43] Speaker 04:
And so I think you have,

[00:12:45] Speaker 04:
You know, through getting back to teaching away, we have a lot in our brief about this teaching against statement we've put in there.

[00:12:52] Speaker 04:
And, you know, when you look at your case law on teaching away, there's sort of a sliding scale of it teaches away a little bit to it that no, it won't work.

[00:13:00] Speaker 04:
And we've cited the deplete case in our... No, Mr. Winger, you're using up your rebuttal time.

[00:13:06] Speaker 02:
If you want to keep going, you can, but if you'd like... Yeah, no, I realize that.

[00:13:11] Speaker 04:
So I'll just say this is a case basically that when you have a situation where the proposed modification is disclosed to create a failure or make it not work, that is a situation where it clearly changes the way.

[00:13:27] Speaker 04:
I think we've got, you know, we've talked about this teaching again.

[00:13:31] Speaker 04:
And the other problem with the board's reasoning is that they say,

[00:13:37] Speaker 04:
Well, you just understand that the press fitting would happen the way we do because, and the problem with that is that Rothstein teaches in column nine, line 22, that the cylindrical threaded member is always engaged with the core before it gets assembled anyway.

[00:13:58] Speaker 04:
So we've got the reverse configuration and the board just says, oh, well, one of the skill in the arm would understand.

[00:14:05] Speaker 04:
So I'll reserve the rest for rebuttal.

[00:14:07] Speaker 02:
Okay.

[00:14:08] Speaker 02:
Let's hear from Mr. Hickman, please.

[00:14:12] Speaker 03:
It suits the court.

[00:14:15] Speaker 03:
Lee teaches the way only if Lee would have deterred a person of ordinary skill in the art from pursuing the path that the claimant mentions hook.

[00:14:24] Speaker 03:
But Lee teaches that pre-assembly improves user convenience and that any problem with distortion of a pre-assembled plug can be addressed with tapering.

[00:14:35] Speaker 00:
But doesn't Lee expressly say that pre-assembly in the absence of Lee's own configuration actually doesn't work?

[00:14:47] Speaker 03:
That is correct, Your Honor.

[00:14:48] Speaker 03:
But the way I read Lee is that what Lee says is they guess there were problems and impracticalities with slender pull plugs in the past.

[00:15:00] Speaker 03:
When we looked at the entire disclosure of lead, we could see that what we did was that we adjusted the tapering of the walls of the plug, and that solved the problem with the distortion of the plug.

[00:15:14] Speaker 00:
But to me, that's like saying, okay, if you do this upside down, it will never work.

[00:15:19] Speaker 00:
But you do it right side up, my invention can make it work, and you're saying that therefore he discloses the upside down?

[00:15:28] Speaker 00:
That's what doesn't make any sense to me.

[00:15:30] Speaker 03:
What I think Lee is disclosing, and again, as Robstein also disclosed, is that tapering is a very common elementary technique in this field.

[00:15:45] Speaker 03:
And that Lee used tapering to solve the same problem that other people in the field had solved with the same technique.

[00:15:56] Speaker 03:
It is true, as Your Honor pointed out, that the

[00:16:00] Speaker 03:
the direction in which the foot goes into the sleeve and Lee is the reverse of the way that it goes in the search for religion invention.

[00:16:10] Speaker 03:
But what the board's finding was, was that a brain is such an elementary technique that a person of ordinary skill would understand how to use that no matter the direction.

[00:16:20] Speaker 00:
But doesn't Lee go so far as to actually say that if it's not done in the

[00:16:29] Speaker 00:
direction I'm doing it, and with the way that I'm doing it, said it won't work.

[00:16:39] Speaker 03:
I do not believe Lee is saying that.

[00:16:44] Speaker 03:
That concludes us about the direction.

[00:16:46] Speaker 03:
Lee originally chose to hammer the core in from the outside, going inside with a

[00:16:55] Speaker 03:
But I do not read Lee as disparaging, facing the opposite direction.

[00:17:01] Speaker 02:
Mr. Hickman, one problem with your argument in this case to me is you started, the very first sentence out of your mouth was, the way I read Lee.

[00:17:11] Speaker 02:
And now in your response to Jojo Mellie, you twice said, I read Lee as not disparaging.

[00:17:18] Speaker 02:
I read Lee as.

[00:17:20] Speaker 02:
The problem is how you read Lee is not relevant, is it?

[00:17:24] Speaker 02:
You're not the fact finder, are you?

[00:17:28] Speaker 02:
And I don't see the board as having said these things.

[00:17:32] Speaker 02:
So Mr. Hickman's read of Lee is awesome, but sort of not relevant to our decision in the case.

[00:17:38] Speaker 02:
What's relevant to our decision in the case is did the board make fact findings about this argument?

[00:17:45] Speaker 02:
So what would you point me to in the board's decision that isn't how you read Lee, but what the board in particular said about this?

[00:17:55] Speaker 03:
Let's go back to page seven of the appendix, which is page six of the board's decision.

[00:18:00] Speaker 03:
And when Mr. Winter was arguing in the court on three days.

[00:18:06] Speaker 03:
And I will readily acknowledge that the board did not use the term teaching away.

[00:18:11] Speaker 03:
But this is what we're talking about.

[00:18:14] Speaker 03:
And specifically, in paragraph, the second full paragraph on appendix page seven, the board talks about tapering.

[00:18:24] Speaker 03:
The board points out that in both Rotsky and Lee, tapering is used and that they're applying the well-known principle of the mechanical ledge to radially expand the sleeve by intrusion of a winch-shaped plug or core.

[00:18:42] Speaker 03:
The board provides incitations to the art and then concludes the paragraph by saying, while the locations of the tapering may vary from one device to another,

[00:18:53] Speaker 03:
A person of ordinary skill in the art would understand that the mechanical principles applied are the same.

[00:19:01] Speaker 00:
When you look at the reverie and you look at the gravery, it's like two ships passing in the night.

[00:19:06] Speaker 00:
In other words, the board says, refers to tapering generally, but never actually addresses all of the arguments that are spelled out probably in the best detail, but that were also presented before the board.

[00:19:19] Speaker 00:
The arguments that what they're talking about is that the way Lee is configured and the way Lee teaches that you don't do press fitting or pre-fitting and the principles of Rothstein that they're actually teaching away from the combination and the board never really addresses that.

[00:19:47] Speaker 03:
I believe the board does, in the opinion, address the reversal and the reverse configuration of the plug and the sleeve.

[00:19:57] Speaker 03:
I mean, it's clear in record that Rob seems to be using both approaches.

[00:20:02] Speaker 03:
So both the board and the examiner really, I think, deny

[00:20:08] Speaker 03:
by into the argument that simply reversing the direction or the relative placement of the plug in the sleeve made a difference.

[00:20:21] Speaker 03:
So I would contend that although the sport opinion may not follow the sort of the precise sequence that a traditional teaching away opinion or obvious opinion might

[00:20:34] Speaker 03:
And it is clearly contending with Mr. Strelitz's appellate brief before the board, and it is responding to those arguments.

[00:20:48] Speaker 03:
And that all the law and the facts that are necessary to support the rejection under substantial evidence are there.

[00:21:04] Speaker 02:
Anything further, Mr. Hickman?

[00:21:07] Speaker 03:
Um, I have nothing further.

[00:21:09] Speaker 02:
Okay.

[00:21:10] Speaker 02:
Mr. Winter, you have a little bit of rebuttal time.

[00:21:13] Speaker 04:
All right.

[00:21:14] Speaker 04:
You can hear me now?

[00:21:15] Speaker 04:
Yep.

[00:21:16] Speaker 04:
Okay.

[00:21:16] Speaker 04:
Great.

[00:21:17] Speaker 04:
Um, so getting back to appendix 76, the board says the result of the modifications is predictable and expected, right?

[00:21:29] Speaker 04:
That's what they're saying about LEED, is press fitting and modification is predictable and expected.

[00:21:35] Speaker 04:
If you look at LEED, LEED says, well, only if you taper the outer wall of the insert.

[00:21:41] Speaker 04:
It's predictable and expected.

[00:21:43] Speaker 04:
Only if you do not have a cylindrical metallic cleat.

[00:21:47] Speaker 04:
Rothstein has a cylindrical metallic cleat.

[00:21:50] Speaker 04:
So basically what is going on is he's saying it's predictable to press fit into Rothstein.

[00:21:57] Speaker 04:
And that will definitely work.

[00:21:59] Speaker 04:
And I'm just going to ignore the fact that Lee says, no, the radial distortion problem is going to make that not be practical.

[00:22:05] Speaker 04:
So we have a very clear what I call teaching against.

[00:22:09] Speaker 04:
On the stronger scale, the stronger scale of the teaching away, sliding scale is consistent with your case law.

[00:22:18] Speaker 04:
And I think still at the same time, there's never any finding to support the conclusion that Roth's team

[00:22:28] Speaker 04:
would actually have the court press fit into the sleeve before that threaded rod is already threaded as a whole.

[00:22:38] Speaker 04:
The threaded rod is always threaded to the court and then after that put into the sleeve, which is inconsistent with our claims.

[00:22:46] Speaker 04:
Thank you.

[00:22:47] Speaker 02:
Thank both counsels for their argument.

[00:22:48] Speaker 02:
The case is taken under submission.