[00:00:00] Speaker 02:
for argument is 20-2284 jump rope systems versus Coulter Ventures.

[00:00:19] Speaker 04:
Greg Aarons on behalf of the patent owner Jump Rope Systems.

[00:00:24] Speaker 04:
We're here to

[00:00:25] Speaker 04:
seeking your reversal of the PTAB's decision to invalidate all claims of the two patents that were subject to IPR.

[00:00:35] Speaker 04:
We have kind of a threshold issue, which is the use of hindsight in this case from the get-go.

[00:00:44] Speaker 01:
Can I ask you a question?

[00:00:46] Speaker 01:
Yes.

[00:00:47] Speaker 01:
Aside from the hindsight, would you say the opposite of that?

[00:00:49] Speaker 01:
If there's a motivation to combine, if there were a motivation to combine expressly in the prior art references, for example, would that then defeat your hindsight argument?

[00:01:05] Speaker 04:
If the prior art itself actually had a motivation to combine somewhere within the confines of the prior art itself, I think that can overcome

[00:01:14] Speaker 04:
hindsight because it's sort of the opposite of hindsight because there's an explicit motivation.

[00:01:19] Speaker 02:
Okay.

[00:01:20] Speaker 02:
Did the KSR say that there didn't have to be an explicit motivation?

[00:01:24] Speaker 02:
Are you saying after KSR, hindsight enures in every case?

[00:01:28] Speaker 04:
I'm not saying that.

[00:01:29] Speaker 04:
We acknowledge that KSR does not require an explicit motivation or teaching or suggestion to combine within the prior art.

[00:01:38] Speaker 04:
It can be found within the context of the prior art as a whole, within the experience of a person of ordinary skill in the art.

[00:01:46] Speaker 01:
Is the question of whether the board found

[00:01:51] Speaker 01:
motivation to combine is that analogous to the question of whether there's hindsight I mean you're arguing that the there was an incorrect reliance on hindsight to determine that there was a motivation to combine that's reviewed for substantial evidence right because we're really looking to see whether

[00:02:07] Speaker 01:
The combination was fueled by hindsight or whether it was fueled by a motivation to combine properly under KSR.

[00:02:15] Speaker 01:
Again, factual question reviewed for substantial evidence, right?

[00:02:18] Speaker 04:
That's correct.

[00:02:20] Speaker 04:
That is correct.

[00:02:21] Speaker 04:
This court as a whole, however, reviews the obviousness determination denoted.

[00:02:26] Speaker 01:
Read your brief to have two issues one is this hindsight motivation combine argument Which presents a substantial evidence question and the other one is even?

[00:02:36] Speaker 01:
I guess assuming the facts is found by the board that there's that their claims are would not have been obvious as a legal matter Do I read your brief correctly?

[00:02:45] Speaker 04:
I believe that's And so

[00:02:50] Speaker 04:
This case, and the reason that I think it's important to consider the question of hindsight, may stem from one of the very first things in the record from the patent owner, or I'm sorry, the petitioner's expert.

[00:03:06] Speaker 04:
And this is found at appendix 605.

[00:03:11] Speaker 04:
And this statement occurs in a couple of places.

[00:03:14] Speaker 04:
But notably in paragraph, the last sentence of paragraph 89 on Appendix 605, wherein Dr. Mr. Lenz says, it's my opinion that a focita seeking to provide swiveling motion would have been motivated to do thus and such.

[00:03:33] Speaker 04:
Well, right in the very wording, it presumes that a focita is seeking to provide swiveling motion.

[00:03:41] Speaker 04:
And that's just the beginning of the problem.

[00:03:44] Speaker 04:
The references themselves, for example, Wolf, which is the primary reference.

[00:03:51] Speaker 04:
Wolf has in it a description and a discussion about twisting, which might be analogous to the winding issue that's been talked about in the breeze.

[00:04:02] Speaker 04:
And then it also talks in a different context about rope shearing or shearing of the cord.

[00:04:07] Speaker 04:
So the jump rope has a handle.

[00:04:10] Speaker 04:
and then a pivoting or rotating mechanism, and then the actual chord or rope itself.

[00:04:16] Speaker 04:
So in the context of this prior art, you've got

[00:04:22] Speaker 04:
the wolf pack, which is the primary reference.

[00:04:24] Speaker 01:
Can I ask you a question?

[00:04:26] Speaker 01:
You know, at the beginning of this paragraph that you've pointed out to us, it says, in my opinion, a person voting Mary's dummy art would be motivated by the prayer's teachings regarding the benefits of swiveling, such as terpers, and it has a site.

[00:04:39] Speaker 01:
It says to modify wolf to provide swiveling.

[00:04:42] Speaker 01:
So how is that, then, hindsight?

[00:04:45] Speaker 01:
I mean, I understand your point.

[00:04:47] Speaker 01:
If you were to say, it's my opinion that person of scale in the art seeking to achieve the claimed invention would have wanted to achieve the claimed invention, that that is hindsight.

[00:04:57] Speaker 01:
But here, there's a sentence at the beginning of this paragraph you're relying on that makes it clear why it is desirable to achieve swiveling.

[00:05:07] Speaker 01:
Why is that countering then your argument?

[00:05:10] Speaker 01:
Why is that not countering your argument of hindsight?

[00:05:13] Speaker 04:
For a couple of reasons.

[00:05:14] Speaker 04:
First of all, so they cite to Turber for the premise that was stated in the paragraph 89 of the expert's declaration.

[00:05:25] Speaker 04:
And so Turber, which is appendix 832 through 831 or 841, has a swivel ball joint

[00:05:36] Speaker 04:
inserted into the handle end and Turper makes it clear that the oscillation and that the rotation within the handle, and this is found at A34 around lines 12, the invention allows the rope to easily rotate inside the handle and to externally oscillate.

[00:05:56] Speaker 04:
Thus avoiding shearing.

[00:05:58] Speaker 04:
So there's two predicate issues that have been raised allegedly in the prior rope.

[00:06:03] Speaker 04:
One is shearing, that it can occur in the rope or the cord.

[00:06:08] Speaker 04:
And then the other is winding, where the rope somehow gets twisted around itself.

[00:06:15] Speaker 04:
Turper and then the Salau reference, which I'll get to in a moment, both make it clear, as Wolfe does itself, that because you don't have a fixed point of the rope at the handle, you've got some mechanism to allow rotational movement between the end of the rope and the handle

[00:06:32] Speaker 04:
you're not going to have winding or twisting.

[00:06:35] Speaker 04:
And frankly, it makes sense from a logic standpoint.

[00:06:38] Speaker 04:
Think about having a piece of rope.

[00:06:40] Speaker 04:
It's going to twist where there's fixed points.

[00:06:44] Speaker 04:
But in a jump rope handle, where there's rotational motion that's allowed, which is occurring in turper, you don't have winding.

[00:06:51] Speaker 04:
So winding is not an issue.

[00:06:53] Speaker 04:
You don't have winding in the Salau reference.

[00:06:55] Speaker 04:
It explicitly says, and Salau is that,

[00:07:00] Speaker 04:
Appendix 814.

[00:07:03] Speaker 04:
The subject of this invention is an improvement to jump ropes that enables the cord to rotate freely inside the handles without the danger of winding the cord onto itself.

[00:07:14] Speaker 04:
So now you don't have anything except teaching that allowing rotational connection between the handle and the rope end avoids this issue of winding.

[00:07:25] Speaker 04:
So this is just a known

[00:07:27] Speaker 04:
a known thing.

[00:07:28] Speaker 04:
It's a fact from Salao in 1908.

[00:07:30] Speaker 04:
It's a fact from Turber in 1977.

[00:07:34] Speaker 04:
And Wolf, therefore, also includes that, although it might not be as explicitly stated, because you have rotation of a portion of the handle and the arm which rotates within it.

[00:07:46] Speaker 04:
So you've got this direct or indirect connection between the rope end and then the mechanism that allows the rotation relative to the handle.

[00:07:53] Speaker 04:
So there's no issue of cord winding

[00:07:57] Speaker 04:
that exists and because you don't have an issue of cord winding that exists there's no motivation to solve that problem by adding a swivel joint as opposed to a hinge joint as you would have in Wolf.

[00:08:11] Speaker 04:
The second issue that's been raised and was talked about a lot especially at the PTAB hearing was the issue of shearing.

[00:08:20] Speaker 04:
So now you've got a

[00:08:22] Speaker 04:
rope or a cord that comes out of a handle and potentially... Can I interrupt you just for a minute just to make sure I understand where you're at?

[00:08:29] Speaker 01:
I, I, so the board with respect to the hinge versus the swivel said that these were simple substitutions for one another, right?

[00:08:37] Speaker 01:
So are you challenging that factual finding?

[00:08:40] Speaker 04:
We are and we went at great length with our doctor

[00:08:46] Speaker 04:
Blair's declaration, and it's part of the appendix I can cite you to in a moment, where he explains the extremely torturous path to actually take the portion of turper that they're relying upon, which is the swivel joint, and to retrofit it into a device, the device of wolf.

[00:09:08] Speaker 04:
Frankly, it doesn't give any greater

[00:09:12] Speaker 04:
freedom of rotation to the cord itself by making that substitution.

[00:09:17] Speaker 04:
And it's not a simple substitution.

[00:09:19] Speaker 04:
There's upwards of 15 different steps that are required.

[00:09:24] Speaker 04:
I will say that, you know, our expert was deposed on this topic and was asked questions like, well, would a person of ordinary skill in the art know how to take a screwdriver and insert it into a screw and untwist it?

[00:09:35] Speaker 04:
Would they have a reasonable expectation that if they turned the screwdriver, the screw would become loose

[00:09:41] Speaker 04:
That is all well and good.

[00:09:42] Speaker 04:
And each discrete individual step, in fact, could be performed.

[00:09:47] Speaker 04:
And they're not outside the scope of what a person of ordinary skill in the art would know how to do or be capable of doing.

[00:09:54] Speaker 04:
The question is, why would they be doing this to begin with?

[00:09:57] Speaker 04:
That's the whole predicate of the problem here.

[00:09:59] Speaker 04:
The board simply has adopted what we believe is conclusory

[00:10:07] Speaker 04:
opinions of Mr. Lenz, who says that, sure, it's just a simple substitution.

[00:10:12] Speaker 04:
You can take this part, and you can put it into that part.

[00:10:15] Speaker 04:
Now, this is a mechanical case.

[00:10:16] Speaker 02:
And we're probably- So what is your main point?

[00:10:19] Speaker 02:
That there wouldn't have been the motivation to do that?

[00:10:22] Speaker 02:
That this was just- or that the- you're arguing you wouldn't have thought to do it?

[00:10:29] Speaker 02:
Not that it was mechanically challenging to do it once you figured out that's what you wanted to achieve?

[00:10:35] Speaker 02:
I'm not clear on

[00:10:37] Speaker 02:
where you're finding the deficiency here.

[00:10:39] Speaker 04:
Yes, Your Honor.

[00:10:40] Speaker 04:
Well, a couple of things.

[00:10:42] Speaker 04:
The last point first that you just raised, and that is that there are a lot of steps.

[00:10:47] Speaker 04:
There are upwards of, as you said, about 15 different steps that would be required by a person of skill in the art to actually make the substitution and modification to the Wolf reference.

[00:10:58] Speaker 04:
But the underlying issue is this motivation is allegedly presented by an issue of

[00:11:05] Speaker 04:
Shearing of a cord or winding of a cord like that's the motivation that's ascribed and It's just a false premise.

[00:11:15] Speaker 04:
There's no issue of cord winding in the wolf reference as it sits there And there's no issue of you or do you make this argument before the board?

[00:11:25] Speaker 00:
Yes the sharing argument

[00:11:27] Speaker 04:
Yes, definitely.

[00:11:29] Speaker 04:
And I'd like to, I believe Judge Crost, I answered your question.

[00:11:33] Speaker 04:
If I didn't, I can revert to it.

[00:11:36] Speaker 04:
But specifically, the passage within the wolf reference, which is at A, 793 to 794,

[00:11:43] Speaker 04:
It talks about the potential for cord breaking at the place where it is inserted into the second arm of the mechanism that it's affixed to.

[00:11:54] Speaker 04:
And it's simply, and I can just kind of use my hand for this because you've got an element which is the second arm and shown in the figures in Wolfe generally pointed to as, we'll call it 68, this is figure two.

[00:12:12] Speaker 04:
And then you've got the cord that goes up into the second arm and it bends over the top portion and then it folds back on itself.

[00:12:21] Speaker 04:
And the shearing or the breaking of the cord that's being talked about has to do with this internal construction of this arm.

[00:12:30] Speaker 04:
And all well and good, there is discussion of cord breaking at that point.

[00:12:36] Speaker 04:
That is not the type of cord breaking that would be a potential issue

[00:12:41] Speaker 04:
in a jump rope, however, the type where you've got the cord coming out of the handle and because of the rotational movement, the cord is getting, you know, oscillated back and forth and it could break at the point at which it exits from the handle.

[00:12:58] Speaker 04:
Wolf, however, addresses this problem.

[00:13:00] Speaker 04:
In fact, Wolf, the whole premise of Wolf is solving this problem of having cord breakage within this second arm.

[00:13:09] Speaker 04:
So the issue that's presented of potential cord shearing

[00:13:14] Speaker 04:
First of all, it's a misunderstanding or a misinterpretation of Wolf to say that that's the shearing that's being talked about in Wolf.

[00:13:21] Speaker 04:
And second of all, Wolf solves the problem itself.

[00:13:23] Speaker 01:
So Wolf has a... You're looking at... Are you referring to page 837 of the board's opinion?

[00:13:28] Speaker 01:
Because the board says Wolf addresses a different shearing problem, right?

[00:13:34] Speaker 04:
Yes.

[00:13:34] Speaker 04:
Right.

[00:13:34] Speaker 04:
They do acknowledge that.

[00:13:35] Speaker 04:
And yet, in what is, to me,

[00:13:41] Speaker 04:
the failure of the board is looking at the evidence as a whole and still finding obviousness when the underlying issue being shearing is the one and only, almost the one and only, maybe it's one of two issues that is presented by the petitioner that you want to avoid shearing and Wolf has shearing.

[00:14:04] Speaker 04:
Therefore you need to modify wool.

[00:14:06] Speaker 01:
It's just not true and I think the board was saying Correct me if you think I'm wrong, but I thought the word was saying well wolf addresses a different sharing problem turper addresses a sharing problem and it would have been obvious to modify wolf in order to Not also solve the problem presented by turp

[00:14:28] Speaker 04:
That is an analysis of what they have said.

[00:14:32] Speaker 04:
It's just incorrect because Wolf, albeit acknowledged by the board, addresses sharing within its own device.

[00:14:40] Speaker 04:
It's a different type of sharing and the board does acknowledge that.

[00:14:43] Speaker 04:
There's no discussion or scant discussion of any other kind of sharing in Wolf.

[00:14:49] Speaker 04:
It does say a couple of pages later in Wolf,

[00:14:52] Speaker 01:
Your position is the type of shearing that Turpers concerned about would not ever present itself in Wolf.

[00:14:58] Speaker 01:
Is that your position?

[00:14:59] Speaker 01:
I just want to make sure I understand.

[00:15:00] Speaker 04:
I believe that's probably a very accurate way of saying it and I can say it with a little more authority because Wolf itself talks about using a, and this is on page A795,

[00:15:15] Speaker 04:
that there's a truncated cone at the end of the second arm, which the rope passes through and prevents any issue of shearing at the exit point of the rope from that portion of the arm mechanism.

[00:15:30] Speaker 01:
I can't remember.

[00:15:31] Speaker 01:
Did both sides present expert testimony on this point?

[00:15:35] Speaker 04:
Yes.

[00:15:36] Speaker 04:
Yes.

[00:15:38] Speaker 04:
I had reserved so much time, and I realized that I'm not getting it.

[00:15:42] Speaker 02:
OK.

[00:15:43] Speaker 02:
Why don't we use it?

[00:15:43] Speaker 02:
I will restore it.

[00:15:46] Speaker 02:
Thank you.

[00:16:12] Speaker 03:
mornin, your honor.

[00:16:13] Speaker 03:
I'm Luis De Santo for Respondent Court for Ventures.

[00:16:17] Speaker 03:
May it please the court.

[00:16:18] Speaker 03:
Your honor, before I get into the specific points... Council, could you speak up a little bit?

[00:16:22] Speaker 03:
Yeah, sorry, your honor.

[00:16:23] Speaker 03:
Yeah, I have a very low voice.

[00:16:24] Speaker 03:
If I trail off again, please let me know.

[00:16:28] Speaker 03:
But before I get into direct responses to counsel's arguments,

[00:16:34] Speaker 03:
I'd like to just very briefly state that there were four factual independent bases provided by the board to support the motivation to combine.

[00:16:45] Speaker 03:
And if this court agrees with any one of them, the case can be affirmed.

[00:16:49] Speaker 03:
The first one was the combinations according to known methods that yield predictable results.

[00:16:56] Speaker 03:
The second was that the combination was a simple substitution of a swivel joint for a hinge joint, and both were used in the context of jump rope technology.

[00:17:09] Speaker 03:
And the other two were expressed teachings found in each of two examples of prior art.

[00:17:16] Speaker 03:
One being turper that showed the swivel joint and the benefits of a swivel joint to reduce shearing that can be caused when the rope

[00:17:24] Speaker 03:
Rotates on itself and the other piece of prior salute that describes using a swivel joint allows the rope to Avoid winding on itself because any winding in the rope can be unwound

[00:17:40] Speaker 03:
by the ball.

[00:17:41] Speaker 03:
If the court agrees with any one of those positions, this case can be affirmed.

[00:17:48] Speaker 03:
And now I'd like to speak directly to counsel's arguments with regarding hindsight.

[00:17:54] Speaker 03:
And I had planned to bring up the testimony of the petitioner in the case.

[00:18:03] Speaker 03:
excuse me, the appellee here and petitioner before the board and their expert testimony of Mr. Lenz, and specifically in the appendix, page 605 and 606, paragraphs 88, 90, and 91.

[00:18:20] Speaker 03:
And at the top of paragraph 89, Mr. Lenz expressly refers to one of the prior art, Terper,

[00:18:29] Speaker 03:
and identifies the teachings in Turper that a swivel joint can be used to avoid the shearing forces in a jump rope.

[00:18:39] Speaker 03:
And earlier in his testimony, he explains what is meant by shearing forces in Turper.

[00:18:46] Speaker 03:
And that can be found in paragraph 81, starting on page 601 of the appendix.

[00:18:52] Speaker 03:
So he proceeds to identify the teaching in the prior art and explain why one of ordinary skilling art, based on those teachings, would then seek to impart those qualities into the Rope of Wolf.

[00:19:07] Speaker 03:
And also next, he proceeds to reference the other piece of prior art.

[00:19:13] Speaker 03:
And in this paragraph, it's exhibit 108.

[00:19:15] Speaker 03:
That's the Salou reference, where the Salou reference similarly explains that

[00:19:20] Speaker 03:
When you use a swivel joint in a jump rope, the rope can rotate around its own axis and then avoid twisting on itself.

[00:19:28] Speaker 03:
Thereby, based on these two teachings, we would put one skill in the art.

[00:19:33] Speaker 03:
We motivated to include a swivel joint in Wolf, and we can explain why.

[00:19:38] Speaker 03:
In Wolf, Your Honor,

[00:19:39] Speaker 03:
that the rope is connected to the second arm of wolf and the second arm of wolf is connected to a hinge and there was and that hinge joint is a fork and when the second arm is in that hinge that second arm simply cannot rotate about its own axis therefore the rope that's attached to

[00:19:58] Speaker 03:
the second arm.

[00:20:00] Speaker 03:
If there's any bending or twisting in that rope, it cannot be unwound because the source is stuck.

[00:20:05] Speaker 03:
There was no dispute on this point.

[00:20:07] Speaker 03:
Their expert testified.

[00:20:09] Speaker 03:
They agreed that there was no rotation.

[00:20:11] Speaker 03:
The second arm of Wolf could not rotate about its own axis.

[00:20:17] Speaker 03:
Therefore, if there's any sort of bending or winding that's implemented into the rope of wolf while jumping rope, and as Mr. Lenz testified before the board, that bending and twisting can be imparted by just movement of the ropes while you're jump roping, which is very intuitive because the back of the rope lags behind you and you're driving it forward and it bends and twists as your wrists are twisting.

[00:20:43] Speaker 03:
Using the swivel joint there would allow any sort of that bending

[00:20:47] Speaker 03:
to be unwound at the joint and free it up.

[00:20:51] Speaker 03:
And so therefore, those expressed teachings provide the motivation, and the board laid it out in detail in their ruling.

[00:21:03] Speaker 03:
And it's referenced in detail in order with a detailed explanation why in Mr. Len's testimony at least 88, 90, and 91.

[00:21:13] Speaker 03:
And in accordance with the decision, this court's decision in Ray Medke, which we also cite in our brief, when there is this style of direct teaching in the prior art that would provide a motivation to combine, there is no hindsight.

[00:21:36] Speaker 03:
And I'd like to just respond, other than that, I'd like to respond to a few other points that counsel raised

[00:21:44] Speaker 00:
Chancellor, with respect to the hindsight argument, does it matter that what we're dealing with is a extraordinarily simple technology?

[00:21:54] Speaker 03:
Yeah, I think that cuts against the hindsight argument.

[00:21:57] Speaker 03:
Yeah, I can't remember.

[00:21:59] Speaker 03:
I remember reading that somewhere.

[00:22:00] Speaker 03:
I can't recall where.

[00:22:03] Speaker 03:
But yeah, my understanding is yes, the simpler the technology and the more expressed, like the teaching, you know, they're just, it's hard to find a hindsight position.

[00:22:15] Speaker 02:
Speaking of that, who's a person skilled in the art?

[00:22:18] Speaker 03:
It's actually a decent, highly

[00:22:21] Speaker 03:
skilled level.

[00:22:23] Speaker 03:
We referenced that in, there was no dispute on that either.

[00:22:30] Speaker 03:
It was someone with a college degree and in mechanical engineering at least and some years of experience

[00:22:38] Speaker 03:
or the equivalent of that.

[00:22:40] Speaker 03:
So this isn't, we're not talking about someone off the street.

[00:22:44] Speaker 03:
And I respectfully submit that this stuff is intuitive enough that someone with far less experience could have figured this out as well, especially in view of the expressed teachings that are in the prior art.

[00:22:59] Speaker 03:
And even if we set this aside, I'd like to raise this additional point here that even if

[00:23:05] Speaker 03:
There was a legitimate dispute that Wolf could whine on its own, or that there's no shearing problem, or there's no...

[00:23:20] Speaker 03:
Winding problem in wolf in accordance with this court's ruling in unwired planet for example one of ordinary skill me art can pursue the benefits that are disclosed in the prior art and modify a reference just to try to provide those benefits and here the court the board

[00:23:42] Speaker 03:
provided credit to that type of benefit because there's there's no dispute that the rope of wolf cannot rotate about its own axis so the board itself Stated that in this combination the by providing this combination the board of jump rope of both earns another element of movement another dimension of movement therefore in view of unwired planet alone

[00:24:10] Speaker 03:
One of ordinary skill in the art could pursue the benefits that are disclosed in turper and wolf.

[00:24:24] Speaker 03:
And with regard to the number of steps that would be required to incorporate the proposed change of including the swivel joint of Wolf into Turper, that was considered and rejected by the board in detail.

[00:24:42] Speaker 03:
And that can also be rejected based on law.

[00:24:45] Speaker 03:
And that is, there's no requirement to show obviousness by having

[00:24:50] Speaker 03:
Bodily incorporation of turper or salute into wolf.

[00:24:54] Speaker 03:
It's just the teachings that matter alone in in any event also the Patent owner here didn't submit any evidence to suggest that or make the position that one of or narrow-scale in the art couldn't do those steps to make the combination and

[00:25:12] Speaker 03:
And the last thing that will be done is with regard to the argument, simple substitution, there is only, I believe, one sentence provided in opposition to that analysis provided by, there was only one sentence provided by

[00:25:30] Speaker 03:
The appellant here in opposition that analysis provided by the board So that that's reason that's much that's very detailed position that the board provided and one sentence to say that it's not good enough You know it should is not good shouldn't be good enough in itself.

[00:25:48] Speaker 01:
Before you sit down I want to ask you one question which is a patent owner argues that The board erred by not considering the alternative grounds

[00:26:01] Speaker 01:
that were instituted upon, if hypothetically we were to disagree with you and say that there wasn't substantial evidence for the board's reason for modifying, the board would consider that alternative grounds on remand, right?

[00:26:15] Speaker 01:
Wouldn't they have to consider that?

[00:26:17] Speaker 03:
I think if this court tells them to yeah You think that we could just say oh, you don't have to consider those other grounds or sass or consider the other grounds for turper the turpent of the Wolf turper grounds that weren't detailed here because there were other there was other evidence provided for the combination of Wolf and turper that the board didn't

[00:26:43] Speaker 03:
rely on, but I might be misunderstanding your question.

[00:26:48] Speaker 01:
So the point of my question is, if we were to disagree with the board's decision here, there would still be work for the board to do, right?

[00:26:58] Speaker 03:
Yes, that's correct.

[00:26:59] Speaker 01:
And so they would ultimately consider those alternative grounds that were instituted under SAS, right?

[00:27:06] Speaker 03:
That's correct.

[00:27:07] Speaker 03:
There's no requirement for them to do so.

[00:27:09] Speaker 03:
I am unaware of any law that says they have to consider all the grounds.

[00:27:14] Speaker 03:
They have to consider all the claims under SAS, but whether they have to consider every single ground

[00:27:21] Speaker 01:
We actually have a case law that says that they have to consider every ground.

[00:27:25] Speaker 01:
They have to institute on every ground.

[00:27:27] Speaker 01:
We have cases that say that.

[00:27:28] Speaker 01:
But there's a slightly different question here, which is in a final written decision.

[00:27:34] Speaker 01:
Do you also just, does the board have to address each and every ground that is presented to it in its final written decision, or could it just address one ground and say, we think this is strong, we're done,

[00:27:51] Speaker 01:
And then on appeal, if we disagree with them, then they would have to consider the alternative.

[00:27:56] Speaker 01:
Yes.

[00:27:56] Speaker 03:
That's my question.

[00:27:57] Speaker 03:
That's my understanding.

[00:27:58] Speaker 03:
Yes.

[00:27:58] Speaker 03:
OK.

[00:28:00] Speaker 03:
Thank you.

[00:28:06] Speaker 02:
Will we still have two minutes, everybody?

[00:28:08] Speaker 04:
Thank you, Your Honor.

[00:28:11] Speaker 04:
I did want to address what Judge Stoll was just asking about, and that has to do with the Wolf plus Bradley combination that was a ground upon which the IPRs were instituted, but did not form a basis of the final written decision.

[00:28:26] Speaker 04:
I'm not aware of a case

[00:28:28] Speaker 04:
and perhaps I'm wrong, that explicitly says that the board has to have its final written decision address all of those different grounds.

[00:28:37] Speaker 04:
But certainly, as you just pointed out, the case law is clear that in the institution stage, they must.

[00:28:46] Speaker 04:
I think it's not a good precedent for a board not to address it in this eventuality.

[00:28:52] Speaker 04:
And that is, this court can, under TQ Delta, for example, reverse the board.

[00:28:57] Speaker 04:
It doesn't need to remand to the board.

[00:28:59] Speaker 04:
It can reverse the board and say, yeah, we don't think that evidence and the record as a whole in the framework of obviousness actually results in unpatentability.

[00:29:09] Speaker 04:
Therefore, we're reversing.

[00:29:10] Speaker 01:
Were there alternative grounds remaining in the TQ Delta case?

[00:29:13] Speaker 01:
I don't think so.

[00:29:16] Speaker 04:
No, I wasn't suggesting that.

[00:29:17] Speaker 04:
Then maybe there would have been a reversal if there were.

[00:29:20] Speaker 02:
So what's the beef that you have?

[00:29:22] Speaker 02:
I mean, leaving aside what's compelled by the law, where does it

[00:29:27] Speaker 02:
Where's your harm?

[00:29:29] Speaker 02:
Where's the harm to you?

[00:29:31] Speaker 04:
With regard to the failure to address the Wolf plus Bradley reference?

[00:29:36] Speaker 04:
Well, it's this, Your Honor.

[00:29:37] Speaker 04:
I believe that it's going to prolong things potentially should this court reverse on the Wolf plus Turper combination and find that the claims were not proven to be unpatentable.

[00:29:50] Speaker 04:
Then you have a situation where

[00:29:52] Speaker 04:
And that's reversed.

[00:29:54] Speaker 02:
OK, I take your point.

[00:29:56] Speaker 02:
What are we supposed to do with that?

[00:29:58] Speaker 02:
Let's assume we are ready to affirm the rest of it.

[00:30:01] Speaker 02:
And the only thing we agree with you on is that, yeah, it probably would have been better globally for judicial efficiency to address all alternatives.

[00:30:10] Speaker 02:
What then?

[00:30:11] Speaker 04:
Right.

[00:30:13] Speaker 04:
And that eventuality probably doesn't

[00:30:15] Speaker 04:
require doing anything.

[00:30:17] Speaker 04:
However, if you're going to reverse, and we would urge you to do that, I think I would go so far as to ask that you say there doesn't even need to be a remand to the PTAB on the Wolf plus Bradley reference because Bradley is just more deficient than Turber was and isn't even really in the context of the invention.

[00:30:36] Speaker 04:
Thank you.

[00:30:36] Speaker 04:
Thank you very much.

[00:30:37] Speaker 02:
We thank both sides in the case