[00:00:00] Speaker 04: Okay, Mr. Salyers. [00:00:10] Speaker 07: Good morning and may it please the court. [00:00:18] Speaker 01: This is the second appeal of this IPR, as Judge Dyke and Hughes you may recall, and it was remanded for the sole issue to determine whether a reference, the Miller reference, [00:00:30] Speaker 01: invalidated the claims. [00:00:33] Speaker 01: On remand, there was a split decision. [00:00:37] Speaker 01: The board found that claim one was invalid over the Miller reference, but found that the remaining independent claims were not. [00:00:45] Speaker 01: In making that ruling, the board made a scope of the claims type decision that we believe was in error and should be reviewed under the de novo standard, like all claim construction issues. [00:01:00] Speaker 01: briefs lay out in detail the basic reasons why we believe that to be an error by the board. [00:01:08] Speaker 01: But to summarize, [00:01:10] Speaker 01: all of the independent claims as even this court noted in the first of the year. [00:01:14] Speaker 04: Before we get to that, just a point of clarification. [00:01:16] Speaker 04: With respect to claim seven of the 186, the combination of Miller and Laster, the decision on that would not appear to be within the authority of the PTO because the remand was solely with respect to Miller alone. [00:01:33] Speaker 01: Your Honor, there were unreached issues in the first decision. [00:01:39] Speaker 01: Well, there may be, but... The board never... I'm sorry, Your Honor. [00:01:44] Speaker 04: I mean, we didn't address those, but we remanded only for a limited purpose. [00:01:50] Speaker 04: I don't understand how the fact that there may have been [00:01:53] Speaker 04: on error in the opinion of not preserving these other issues can help you at this point. [00:02:03] Speaker 04: Well, Your Honor, we were pretty clear about the remand. [00:02:06] Speaker 04: It was only Miller alone. [00:02:07] Speaker 01: Yes, Your Honor, it was Miller alone. [00:02:10] Speaker 01: But there was never a decision rendered on claims at 7. [00:02:13] Speaker 05: Yeah, but last time around on that combination, [00:02:16] Speaker 05: Did you argue to us that that combination also rendered it obvious? [00:02:20] Speaker 05: And if it got remanded, the board should address that? [00:02:24] Speaker 01: We argued what the board said. [00:02:26] Speaker 01: What the board said in the... To us? [00:02:28] Speaker 05: To us, yes, Your Honor. [00:02:30] Speaker 05: Well then, isn't the fact that we remanded on Miller alone suggested that we didn't want that considered? [00:02:35] Speaker 01: Your Honor, the decision that you rendered did not say one way or another whether the dependent claims would be considered under the accommodations that were proposed. [00:02:45] Speaker 05: I mean, I think the decision is pretty clear. [00:02:47] Speaker 05: We sent all of it back only to look at Miller, not on anything else. [00:02:51] Speaker 01: Well, under that rationale, Your Honor, there was never a decision rendered by the board before about 186-7. [00:02:57] Speaker 01: There was no written decision for this court to review. [00:03:02] Speaker 01: Because all it said was, for the reasons that we [00:03:05] Speaker 01: found claim one not to be to be patentable. [00:03:09] Speaker 01: Same thing for claim seven. [00:03:10] Speaker 01: That's all the board said in the first appeal. [00:03:12] Speaker 04: But then you should have asked us to remand, with respect to the dependent claims, to allow something more than Miller alone. [00:03:19] Speaker 04: Did you argue that? [00:03:20] Speaker 01: We did argue that, Your Honor. [00:03:22] Speaker 01: We argued that there should be a remand on all claims for multiple reasons. [00:03:26] Speaker 05: Your Honor's only... But we rejected most of them. [00:03:29] Speaker 05: You did reject... Yes, you projected... Well, we directed everything except Miller alone. [00:03:35] Speaker 01: Well, Your Honor, I'd have to go back and look, but my recollection is that we did raise in the first appeal that the dependent claim should be considered on remand because the board's rejection was only based on [00:03:48] Speaker 01: these grounds. [00:03:49] Speaker 01: They never addressed them errors. [00:03:51] Speaker 04: You made an error in limiting the remand to Miller alone with respect to the dependent claims, but there it is. [00:04:02] Speaker 04: Did you petition for rehearing on the grounds that the scope of the remand was too limited? [00:04:10] Speaker 01: Your honor, here's what your honor said. [00:04:12] Speaker 04: Wait, wait, wait. [00:04:12] Speaker 04: Just answer my question. [00:04:13] Speaker 04: Did you ask for rehearing on the theory that the scope of remand was too limited as to the dependent claims? [00:04:22] Speaker 01: No, we did not. [00:04:23] Speaker 01: Because here's what this court said in its ruling last time. [00:04:28] Speaker 01: We vacate the board's patentability determinations. [00:04:35] Speaker 01: We vacate the obviousness determinations of all claims. [00:04:40] Speaker 01: Ford failed to consider those claims are unpatentable in view of Miller or Hicks alone. [00:04:43] Speaker 01: And then on remand, the board should consider where the claims are unpatentable in light of our opinion. [00:04:49] Speaker 01: The claims. [00:04:50] Speaker 01: That's what it says. [00:04:51] Speaker 01: We went back down to the board. [00:04:54] Speaker 05: Well, there's multiple rulings. [00:04:56] Speaker 05: I know. [00:04:58] Speaker 05: I mean, you can argue all you want what you think we said, but I read that as Miller alone. [00:05:06] Speaker 05: I mean, I didn't look back and see if you raised this specific ground to us, but even if you did, if we remanded on Miller alone, you should have asked for re-hearing to make it clear that the mandate should include that. [00:05:21] Speaker 05: Somebody asked for re-hearing on something. [00:05:22] Speaker 01: We did, Your Honor. [00:05:23] Speaker 01: We asked this to the unrelated patents on him. [00:05:25] Speaker 05: And we did clarify that to the extent. [00:05:29] Speaker 05: So let me just, I don't want to, you have important arguments on the merits of the rest of the case to make. [00:05:34] Speaker 05: If we determine that the board exceeded its scope and shouldn't have reviewed the combination here, my understanding is that this particular claim you agree doesn't go down on Miller alone. [00:05:47] Speaker 01: Yes, Your Honor, we do agree with that. [00:05:49] Speaker 05: So if we find the board exceeded its scope, then this claim is good. [00:05:53] Speaker 01: Fair point. [00:05:54] Speaker 01: I mean, we thought that that, we didn't read the opinion that way. [00:05:57] Speaker 01: The board did not read the opinion that way. [00:05:59] Speaker 01: the board considered all the dependent claims, including those that had combinations, and rejected all but this one family panel. [00:06:06] Speaker 01: So both the parties never raised this issue below. [00:06:09] Speaker 01: They didn't raise it in the appellate briefs today. [00:06:12] Speaker 01: If your honors believe that was your mandate, then we'll certainly respect that. [00:06:16] Speaker 01: On the merits of the remaining independent claims, however, we believe that the board made a second error of claim construction as it did in the first appeal. [00:06:28] Speaker 01: And that that error is failing to read the whole claim, the scope of the claim, as the board said in ruling claim one was unpatentable over Miller. [00:06:39] Speaker 01: And as this court said in its first opinion, all of these independent claims are set out in very similar fashion. [00:06:46] Speaker 01: They recite a series of known parts of trees that are then described as being coupleable, connectable, electrically connectable. [00:06:57] Speaker 01: in various, very similar ways. [00:07:00] Speaker 03: Yes, Your Honor. [00:07:02] Speaker 03: I'm seeing a difference between claim one of the 186 patent and some of the other claims. [00:07:09] Speaker 03: And that claim one of the 186 patent talks about having an electrical connection, and then it talks about having a mechanical connection. [00:07:18] Speaker 03: Whereas some of the other claims say, for example, wherein the tree is mechanically and electrically connectable to a first tree portion, [00:07:26] Speaker 03: by coupling the lower end of the second trunk body to an upper end of the first trunk body, thereby causing an electrical connection, which does seem to tie the electrical and mechanical connections together, whereas claim one of the 0.86 patent does not. [00:07:45] Speaker 03: Kind of like a claim-claim interpretation issue. [00:07:49] Speaker 03: How do you respond to that specific claim? [00:07:52] Speaker 01: Certainly, Your Honor. [00:07:53] Speaker 01: I think all of the claims, one and two, [00:07:55] Speaker 01: just to pick on 10. [00:07:56] Speaker 01: If you looked at 10, which is the language I believe your honor was reading, all have this two things going on, mechanically and electrically. [00:08:03] Speaker 01: They all talk about coupleable. [00:08:05] Speaker 01: Indeed, claim one has a second wherein clause where coupling is also recited, that trunk ends are coupled. [00:08:12] Speaker 01: What is the missing thing that the board did not consider is that the thereby causing language in claim 10 [00:08:21] Speaker 01: is describing the electrical connection is made within the interior of the lighted artificial tree. [00:08:28] Speaker 01: And that phraseology, added during prosecution, creates a location for where that connection is made that Miller would meet. [00:08:38] Speaker 01: Because as opposed to a timing issue of when stuff is done, we believe that the thereby causing language is a locational issue describing where that connection is made. [00:08:51] Speaker 01: And in the Miller dangling connector, that connection can first be made outside of the tree, because there are two plugs that dangle from the trunks. [00:09:02] Speaker 01: And then when the trunks are coupled, that electrical connection is brought within the tree. [00:09:10] Speaker 03: So I understand what you're saying, but that's not really quite the instruction argument. [00:09:15] Speaker 03: That's looking at melody and doing a comparison. [00:09:18] Speaker 03: So just talking about the plain claim language. [00:09:21] Speaker 03: And first, when you look at the intrinsic evidence about the patented issue, how do you respond to that plain claim language? [00:09:27] Speaker 07: Because it says it's not just the thereby cause. [00:09:30] Speaker 03: It's also the by coupling. [00:09:34] Speaker 03: There's mechanical and electrical connection. [00:09:37] Speaker 03: by coupling the lower end of the second trunk body to an upper end of the first trunk body. [00:09:43] Speaker 03: So there's like one step, this coupling, that is providing both the mechanical and electrical connectivity. [00:09:51] Speaker 01: Your Honor, I believe that the claim is broad enough, one of the broadest reasonable interpretation standards, to allow the reading that we've given to it. [00:09:59] Speaker 01: I certainly agree that there is a one-step that would be covered by the client. [00:10:04] Speaker 01: There's no doubt about that. [00:10:05] Speaker 01: But what is allowed by the client because of this last phrase here is a two-step approach in which there would be a coupling [00:10:15] Speaker 01: of the trunks that would bring an already made electrical connection inside of the trunks. [00:10:22] Speaker 03: Will we do it the bi-coupling language, the bi-aligning language in Claim 20? [00:10:27] Speaker 01: Well, Your Honor, again, these are not method of assembly claims. [00:10:31] Speaker 01: There's not an order in which things have to be done. [00:10:34] Speaker 01: So there is a coupling of trunks that happens in every Christmas tree. [00:10:38] Speaker 01: They're always coupled when you have multiple parts. [00:10:40] Speaker 01: The question that this case raises, or this patent raises, is what does that look like for the claims that they drafted? [00:10:50] Speaker 01: And the drafting process coupled the ends and then said, thereby causing the trunk connectors to make an electrical connection within an interior of the lighted trunk. [00:11:01] Speaker 03: I just want your response to my question about by coupling. [00:11:04] Speaker 03: What specifically is your answer to that? [00:11:06] Speaker 03: By aligning? [00:11:07] Speaker 03: the second trunk portion and the first trunk portion along the common axis. [00:11:12] Speaker 03: You're going to that thereby clause again. [00:11:14] Speaker 03: You can tell me some answers. [00:11:16] Speaker 03: I think you could have some, but I want to hear one specifically for this language. [00:11:20] Speaker 01: Sure. [00:11:20] Speaker 01: By coupling means that the ends of these two trunks are put into contact with each other. [00:11:26] Speaker 03: And your view is that that doesn't have to form an electrical and a mechanical connection. [00:11:31] Speaker 01: My view is it has to form both, but that the electrical connection can be made within the interior of the tree. [00:11:39] Speaker 03: It can be made beforehand. [00:11:40] Speaker 01: It can be made beforehand, correct. [00:11:42] Speaker 03: But how would, if the electrical connection occurs first by me plugging in the CDF, and then I form the mechanical connection, how is it that the mechanical and electrical connectable is occurred by aligning the second trunk person with the first person? [00:11:59] Speaker 01: Your Honor, you're reading a lot of words together. [00:12:01] Speaker 01: And I think the claims split them up into clauses. [00:12:05] Speaker 01: So bicoupling is describing what's happening with the trunks. [00:12:10] Speaker 01: The electrical connection is not saying that they are coupled. [00:12:14] Speaker 01: It just says it thereby causes the electrical connection to be made within an interior of the lighted tree. [00:12:22] Speaker 03: I'm going to read it to you specifically. [00:12:24] Speaker 03: It says, wherein the second tree portion is mechanically and electrically connectable to the first tree portion by aligning the second trunk portion with the first portion along a common axis. [00:12:37] Speaker 03: So you know I'm not omitting any words there. [00:12:40] Speaker 03: That's Claim 20. [00:12:40] Speaker 03: It's the wearing clause that occurs above the door lock. [00:12:46] Speaker 01: Well, Your Honor, I'm glad you went to Claim 20, because Claim 20 doesn't have thereby causing. [00:12:52] Speaker 01: Claim 20 has an alignment of tree portions. [00:12:55] Speaker 01: that are coupled to form a first mechanical connection. [00:12:59] Speaker 04: So if claim 20 had the word thereby instead of just informing, then we'd have a different situation, right? [00:13:08] Speaker 01: You certainly would have a different situation, yes. [00:13:10] Speaker 01: So I think that claim 20, like claim 1, and the other claims that we've contested, all have different language. [00:13:18] Speaker 01: And the board gave it one whitewash across and said all of them are the same. [00:13:24] Speaker 01: the broadest reasonable interpretation argument relies upon is that every claim term needs to be given meaning, that the broadest scope of the claim is what the board is supposed to apply, and that claim 10 can be read such that the Miller two-step process is not the only way to read the claim. [00:13:45] Speaker 01: The spec is doesn't Yeah, there are multiple ways in which these things are connected Yes They do describe how you could stick it in in one place and have to rotate it and drop it in and make a second connection so that over time mechanical is made first [00:14:14] Speaker 01: And then electrical is made second. [00:14:17] Speaker 01: So that is a specification description. [00:14:21] Speaker 01: They also describe how it can be done at the same time. [00:14:25] Speaker 01: But the point is that the spec doesn't limit the claims. [00:14:28] Speaker 01: Your honors have done that routine multiple times. [00:14:32] Speaker 01: But the language that they chose in their claims was to parse it out into these multiple things that are [00:14:40] Speaker 01: separated by commas and various connective phrases. [00:14:46] Speaker 05: What language? [00:14:47] Speaker 05: I mean, the dispute here really is they want, and the board found, that the same structure has to make the mechanical-electrical connection, right? [00:14:58] Speaker 05: That's a very narrow way of looking at this. [00:15:00] Speaker 01: Yeah, that's a narrow way. [00:15:02] Speaker 05: And it gets you out of Miller. [00:15:03] Speaker 05: Or it gets them out of Miller. [00:15:05] Speaker 05: What language would they have had to use, in your view, [00:15:09] Speaker 05: to have that narrow path. [00:15:10] Speaker 01: They should have said securely fixed the connectors to each other. [00:15:14] Speaker 01: That's what they had to argue below, which is not what the claim says. [00:15:18] Speaker 01: The claim says the connectors are simply located within. [00:15:21] Speaker 04: Or they could have said a mechanical connection, which also creates an electrical connection. [00:15:28] Speaker 01: They could have said that, yes. [00:15:29] Speaker 01: They could have said that. [00:15:31] Speaker 01: But the language, again, Your Honor, in this world, we fight about the language all the time. [00:15:37] Speaker 01: And I think that this broadest reasonable interpretation of standard supports the Miller two-step process, because they did not claim structure [00:15:47] Speaker 01: that requires mechanical and electrical to happen at the same time. [00:15:52] Speaker 01: And that's why they lost claim one. [00:15:54] Speaker 01: I mean, when you look at the structure in claim one, it's the same structure that's in every other claim with small variations. [00:16:01] Speaker 01: So that if you can find that the claim one language and the structure set out in that claim do not require a two-step process, then you do allow a one-step process. [00:16:14] Speaker 01: The same structure is in every other claim. [00:16:17] Speaker 01: So Your Honor, the board is, in essence, adding structure into the claims that was not in those claims. [00:16:25] Speaker 01: And that's where I think they ran afoul of the scope of these claims. [00:16:31] Speaker 01: And we've set it out into three different buckets. [00:16:34] Speaker 01: Each independent claim has its own little order of things. [00:16:38] Speaker 01: But I think claim 20, which Judge Stoll just mentioned, has a very different structure. [00:16:42] Speaker 01: There's two different mechanical connections. [00:16:45] Speaker 01: I think claim 10 and 28 and 7 of the other patent have a different structure in that they have within the interior of the lighted tree. [00:16:54] Speaker 01: And then I think that the claim 187-1 has a very similar to wherein phraseology to that used in claim 1 of the 186. [00:17:04] Speaker 01: So I know I'm over time right now. [00:17:06] Speaker 01: So unless there's other questions, I'll reserve the rest for rebuttal. [00:17:10] Speaker 01: All right. [00:17:10] Speaker 04: We'll give you two minutes for rebuttal. [00:17:12] Speaker 04: Thank you, Your Honors. [00:17:13] Speaker 04: Mr. Arendt. [00:17:14] Speaker 04: Mr. Arendt. [00:17:16] Speaker 06: May it please the court, counsel? [00:17:35] Speaker 00: My name is Patrick Ahrens, and I represent the respondent, Willis Electric. [00:17:40] Speaker 00: As counsel mentioned, this is the second appeal in the seven, six-year saga of competitor versus competitor litigation. [00:17:46] Speaker 03: Do you want to address that claim construction issue? [00:17:48] Speaker 00: Yes, Your Honor. [00:17:49] Speaker 04: Take claim 20, where it seems to me is one example. [00:17:55] Speaker 04: And it says, it talks about making first mechanical connection and second mechanical connection. [00:18:05] Speaker 04: And it says, [00:18:09] Speaker 04: Thereby forming a second mechanical connection and forming an electrical connection But the question is in interpreting this claim whether the word thereby Applies to only the mechanical connection or it applies also to forming an electrical connection [00:18:28] Speaker 04: and so under, brought its reasonable interpretation. [00:18:31] Speaker 04: Why wouldn't we interpret this as the thereby clause only applying to the mechanical connection and the forming an electrical connection being separate? [00:18:41] Speaker 00: Well, I think this goes to one of the comments that Judge Stoll made. [00:18:45] Speaker 04: And if you look at the beginning of the- Try to answer my question. [00:18:49] Speaker 00: Yes, Your Honor. [00:18:50] Speaker 00: When you look at the beginning of the wearing clause, it says that the second tree portion is mechanically and electrically connectable. [00:18:58] Speaker 04: I want you to answer my question about the specific language I pointed you to. [00:19:06] Speaker 04: Isn't it ambiguous as to whether that thereby language applies only to the mechanical part of it, or it applies to the mechanical and the electrical? [00:19:16] Speaker 00: I don't think it is ambiguous. [00:19:17] Speaker 00: I think the first mechanical connection causes the second mechanical connection, which is causing the electrical connection, and that's all happening at the same time. [00:19:26] Speaker 00: That's how we would read the claim. [00:19:28] Speaker 00: And what I would submit, Your Honor, is it goes back to that first part of the wear-in clause, where the second tree portion is mechanically and electrically connectable by aligning those two portions. [00:19:40] Speaker 00: So what the claim is saying is, by aligning the two trunk portions, you are going to create a first mechanical connection, which is causing and creating a second mechanical connection and an electrical connection at the same time. [00:19:54] Speaker 00: And I think what's really important [00:19:56] Speaker 00: Is that missing in claim law? [00:19:57] Speaker 04: So you're not relying on the thereby clause? [00:19:59] Speaker 04: You're relying on the earlier part of the claim language? [00:20:02] Speaker 00: No, we are relying on the thereby form. [00:20:04] Speaker 00: Absolutely. [00:20:04] Speaker 06: You're relying on both? [00:20:06] Speaker 06: Yes, Your Honor. [00:20:07] Speaker 06: If there was an argument in the case that this was considered by them. [00:20:11] Speaker 00: I may be mistaken and unclear about this. [00:20:14] Speaker 00: And I'm sorry if I'm confused. [00:20:16] Speaker 06: The petition for IPR equated. [00:20:20] Speaker 00: The claims are mechanically and electrically connectable. [00:20:24] Speaker 00: and by aligning the first trunk portion with the second trunk portion. [00:20:30] Speaker 05: And that goes on to... What in that language says it has to be done in one step versus two steps? [00:20:44] Speaker 00: Well, I think that thereby forming [00:20:47] Speaker 00: language is saying that the first mechanical connection is thereby forming the second mechanical connection and electrical connection. [00:20:54] Speaker 04: You're only talking about claim 20 there because the other claims aren't specific about the mechanical connection thereby causing. [00:21:04] Speaker 00: Well claim 20 is different your honor. [00:21:05] Speaker 04: The other claims talk about coupling causing rather than mechanical connection causing. [00:21:12] Speaker 00: I'm sorry I didn't hear that. [00:21:13] Speaker 04: The other claims [00:21:15] Speaker 04: 1028 and whatever it is claim [00:21:21] Speaker 04: seven of the or the other pattern, whatever it is. [00:21:27] Speaker 04: Don't use the language mechanical connection as a predicate to the whereby clause. [00:21:37] Speaker 04: They just talk about the coupling causing the connection, right? [00:21:44] Speaker 04: And if the coupling is a two-step, then the thereby clause doesn't get you anywhere. [00:21:52] Speaker 00: I do believe claim 20 is different from all the other independent claims on appeal. [00:21:57] Speaker 00: Claims 1 and claim 7 of the 187 patent are explicit that the electrical connection is made when the mechanical connection is made. [00:22:08] Speaker 00: And that is very clearly a one-step connection. [00:22:13] Speaker 04: Claim 1? [00:22:14] Speaker 00: Claim 1 of the 187 patent. [00:22:16] Speaker 00: and claim seven of the 187 patent. [00:22:18] Speaker 00: Use the when language. [00:22:20] Speaker 03: You want to read that language too, Les? [00:22:22] Speaker 03: You're looking at the 187 claim one? [00:22:26] Speaker 00: Yes, it's in the first wherein it starts out wherein the second tree portion is mechanically coupleable to the first tree portion about a central vertical axis and the second tree portion is electrically connectable to the first [00:22:45] Speaker 00: tree portion such that a portion of the first electrical connector of the first trunk portion contacts, a portion of the second trunk electrical connector of the second trunk portion when the first tree portion and the second tree portion are mechanically coupled. [00:23:02] Speaker 03: Do you think that's your strongest plain language argument? [00:23:07] Speaker 00: I think they're all very strong. [00:23:08] Speaker 00: I think the when is very clear language, but I also submit that as you go on, [00:23:14] Speaker 00: Throughout the claim, it goes on to make clear that the second electrical contact of the first trunk connector makes an electrical connection. [00:23:23] Speaker 00: Excuse me. [00:23:27] Speaker 00: And it goes on that the first tree portion makes an electrical connection with the first electrical contact of the trunk connector of the second tree portion, thereby creating an electrical connection. [00:23:39] Speaker 00: So it's talking about the mechanically coupling the tree portions, thereby creating an electrical connection. [00:23:45] Speaker 04: Which claim language are you reading now? [00:23:47] Speaker 00: That is claim one of the 187 patent, Your Honor. [00:23:51] Speaker 04: Well, claim one of the 187 isn't before us, right? [00:23:55] Speaker 00: It is before. [00:23:56] Speaker 00: Before, Your Honor. [00:24:01] Speaker 04: I thought what was before us was claims 10, 20, and 28 of the 186 and claim seven of the 187. [00:24:12] Speaker 00: The board found claim one of the 187 patent not unpatentable. [00:24:22] Speaker 00: And my understanding is that Poly Group has appealed that decision. [00:24:29] Speaker 02: So for the 187, it's just 1 and 7. [00:24:42] Speaker 00: That's correct. [00:24:43] Speaker 00: And 7 has another issue we've already talked about. [00:24:47] Speaker 00: Those are the independent claims of the 187 patent. [00:24:50] Speaker 00: The issues that I think you're referencing are dependent claims 7 of the 186 patent. [00:24:55] Speaker 00: Oh, OK. [00:24:56] Speaker 00: So that's a different issue, Your Honor. [00:24:57] Speaker 05: So 1 and 7 of the 187 are similar in your view. [00:25:03] Speaker 00: That's right. [00:25:05] Speaker 00: They may vary. [00:25:06] Speaker 03: I noticed in the blue brief on page 3, there's a lot of claims mentioned under issue 2. [00:25:12] Speaker 03: including some dependent claims. [00:25:13] Speaker 03: Are you saying those aren't an issue or that those rise and fall with the independent claims? [00:25:18] Speaker 00: I'm sorry, your honor. [00:25:20] Speaker 00: Except for dependent claim seven of the 186 patent, the dependent claims that are on appeal rise and fall, we would submit with the independent claims. [00:25:29] Speaker 00: I apologize for being unclear about that. [00:25:32] Speaker 00: What I do think is critically important, as the board did, is to look also at claim one of the 186 patent. [00:25:39] Speaker 00: as your honor mentioned, the board construed or understood the plain language of that claim not to require sort of a mechanical connection causing an electrical connection. [00:25:52] Speaker 00: And when you look at the claim language of claim one, it's missing the important claim terms that the board relied on in its decision, specifically in the wherein clause [00:26:06] Speaker 00: The second tree portion is only mechanically coupleable to the first tree portion. [00:26:10] Speaker 00: And then the thereby creating an electrical connection is only referring to the electrical contacts. [00:26:16] Speaker 00: Whereas when you look at all the other claims on appeal, they reference the mechanically and electrically connectable by either aligning or coupling. [00:26:28] Speaker 00: And then go on to say that the connecting of the trunk portions [00:26:32] Speaker 00: is what is thereby forming, thereby causing an electrical connection. [00:26:37] Speaker 03: Is claim 7 of the 187 patent, that doesn't have the when language that we see in claim 1 of the 187 patent. [00:26:44] Speaker 03: Is that right? [00:26:45] Speaker 00: That's not right. [00:26:46] Speaker 00: So it does have the when language. [00:26:48] Speaker 00: It's at the bottom of the claim, the bottom half of the last stanza. [00:26:55] Speaker 00: The electrical connection being made when the lower end of the second trunk body is coupled [00:27:01] Speaker 00: to the upper end of the first trunk body. [00:27:03] Speaker 04: OK, but it all seems to turn on what, in large part, seems to turn on what's meant by coupled. [00:27:11] Speaker 04: Whether coupled is necessarily a one-step mechanical connection or whether coupled can be a two-step process including a mechanical connection and an electrical connection separate from each other, right? [00:27:27] Speaker 00: I disagree, Your Honor. [00:27:28] Speaker 00: I think the claim language is talking, when it's talking about coupled, it's talking about coupling or joining the lower end of the trunk body to the upper end of the trunk body. [00:27:39] Speaker 04: No, what I'm saying is that to a large extent, this claim construction terms on what you understand coupled to me [00:27:48] Speaker 04: Whether it's just talking about a mechanical connection or whether it can be interpreted to mean the two-step connection with a mechanical connection separate from an electrical connection. [00:28:02] Speaker 00: That is the issue that Polygroup has raised. [00:28:04] Speaker 00: I would submit that it's not properly considered a claim construction issue. [00:28:08] Speaker 00: Well, in terms of the way that it was presented to the board, and I would submit that it's been waived since, because there has been no construction of coupled. [00:28:19] Speaker 00: There has been no analysis of the specification or the prosecution history, the extrinsic evidence. [00:28:25] Speaker 00: The board was applying the plain language, which is what Poly Group has asked [00:28:29] Speaker 00: the board to do. [00:28:30] Speaker 00: And on review, I think that the substantial evidence standard should apply to map the claim language to what the board factually found as prior. [00:28:42] Speaker 04: The couple doesn't have a plain meaning as being limited to a mechanical connection, right? [00:28:48] Speaker 04: When used, a couple doesn't necessarily mean a mechanical connection. [00:28:55] Speaker 00: In the context of these claims, I think the only reasonable construction would be that the coupling of the lower end of the trunk portion with the other portion would be a mechanical connection that would lead to an electrical connection. [00:29:11] Speaker 04: So in your view, the word coupling excludes an electrical connection? [00:29:17] Speaker 00: I would not go that far in the abstract, Your Honor. [00:29:20] Speaker 04: Well, that's the problem. [00:29:21] Speaker 04: We're dealing with plain meaning, so plain meaning coupled can mean mechanical or electrical, right? [00:29:33] Speaker 02: I don't know without checking, Your Honor. [00:29:49] Speaker 00: I would go back, Your Honor, and accept that the claims are mechanically and electrically coupleable or connectable. [00:30:01] Speaker 00: And so coupling could be mechanically and electrically. [00:30:06] Speaker 00: And I think the way that they are described, the claims are describing the processes by aligning or coupling the physical trunk portions. [00:30:15] Speaker 04: OK, so would you also agree that coupled doesn't necessarily mean a single step? [00:30:21] Speaker 00: No, coupling in these claims does mean a single step. [00:30:25] Speaker 04: How do we know that? [00:30:26] Speaker 00: Because of the syntax of the claim language, in that they are mechanically and electrically connectable, and they talk about how the mechanical connection causes or forms the electrical connection. [00:30:36] Speaker 00: Or in claims one and seven, how the mechanical connection or the electrical connection is made when the mechanical connection is made. [00:30:46] Speaker 00: The when language is key. [00:30:51] Speaker 04: The when language appears of which claims? [00:30:54] Speaker 00: Claim one and claim seven of the 187. [00:30:56] Speaker 00: Let me just make sure I say it correctly. [00:31:00] Speaker 00: Claims one and claims seven of the 187 patent have the when language. [00:31:05] Speaker 00: The claims in the 186 patent do not have the when language. [00:31:08] Speaker 00: But they do have the thereby causing or thereby forming, which when you [00:31:13] Speaker 04: read the claim language in full, make clear that the mechanical connection is what is it thereby causing... What it's saying is that the coupling is causing and the question is whether coupling is a single mechanical step or whether it can involve two steps. [00:31:28] Speaker 00: But here, Your Honor, what it is talking about is coupling the trunk portions, the physical mechanical connection between the trunk portions. [00:31:37] Speaker 03: Can I just ask, now claim 20 is a little different, it says [00:31:40] Speaker 03: by aligning the second trunk portion with the first trunk portion. [00:31:44] Speaker 03: That's mechanical, for sure. [00:31:46] Speaker 03: But your position, as I understand it, is that that step of aligning is providing an electrical and a mechanical connection. [00:31:55] Speaker 03: Is that correct? [00:31:56] Speaker 00: No. [00:31:57] Speaker 00: By aligning, it is a mechanical connection that, in this functional language, that has the structural features of the claim. [00:32:05] Speaker 00: And so by aligning the trunk portions, it is allowing for the electrical connection [00:32:09] Speaker 00: to be established. [00:32:13] Speaker 05: I find this all confusing. [00:32:15] Speaker 05: If you'd really wanted this very narrow definition of what the invention is, why didn't you just write a narrow definition? [00:32:21] Speaker 05: This seems intentionally ambiguous to cover a whole host of things, which includes Miller but also doesn't include Miller. [00:32:29] Speaker 05: I mean, it's not that hard to say the mechanical and electrical connections are made simultaneously through the same structure, which is what your point is, right? [00:32:41] Speaker 00: That is correct. [00:32:42] Speaker 00: The mechanical and electrical connection are happening at the same time. [00:32:46] Speaker 00: I see my time is running out. [00:32:49] Speaker 00: I would... [00:32:50] Speaker 05: But you're not pointing to anything in this that is clear, that uses the word simultaneous, or the same structure makes both connections, or anything like that, right? [00:33:03] Speaker 05: All you have is the electrical and mechanical compiling, some win clauses, some thereby clauses. [00:33:10] Speaker 05: There's nothing as specific as what I suggested. [00:33:13] Speaker 00: I believe the when language would be an example of being that specific, but it doesn't use the word simultaneous. [00:33:20] Speaker 00: And I see my time is up, so absent any other questions. [00:33:23] Speaker 00: Thank you for your time and ask for interference on the board. [00:33:26] Speaker 04: Okay, thank you. [00:33:29] Speaker 02: Mr. Sellers, you have a couple of minutes. [00:33:40] Speaker 01: have four points. [00:33:41] Speaker 01: Number one, every one of these claims describes tree portions. [00:33:46] Speaker 01: Tree portions have multiple sub-parts. [00:33:49] Speaker 05: I know you said you have four points, but the thing that is most troubling to me is what your friend raised about the two 187 claims, which do seem to have that kind of language and stuff like that that may be a little different than the 186 claims, particularly in claim seven. [00:34:05] Speaker 01: Your Honor, I think that, again, as Your Honor said, they are very complicated, lots of stuff going on, but they all start with the same point, that there are multiple subparts that are described as making mechanical and electrical connections. [00:34:21] Speaker 01: I would say that the 186 language and the 186 Claim 1 and all of the claims talk about mechanical connections and electrical connections, but the specs [00:34:35] Speaker 03: describes coupling as being the- I'm going to go back to Judge Hughes' question, which is it says the first trunk electrical connector, the first trunk portion, contacts the portion of the second trunk electrical connector of the second trunk portion when the first tree portion and the second tree portion are mechanically coupled. [00:34:54] Speaker 03: How can you say that's not a one-step process? [00:34:58] Speaker 01: Because the claim has already described the connection between the two things touching each other. [00:35:06] Speaker 01: so that the limitation that's added, it says the electrical connection being made when the lower end of the trunk is coupled to the upper end of the trunk. [00:35:17] Speaker 01: Miller would do that. [00:35:19] Speaker 01: Again, it's because the electrical connection has already been made, and then when you couple the lower ends, [00:35:27] Speaker 01: It's also made. [00:35:28] Speaker 01: I mean, it's a duplicative claim. [00:35:30] Speaker 01: It has multiple facets to it, but it's not limited to just one thing. [00:35:37] Speaker 01: As Judge Hughes just said, it's not that they said there's one and only one way to do this. [00:35:44] Speaker 01: The coupling is described in the patent specification in column 13, line 40, and following as describing, as we all would probably know, when you start putting two things together, you've started coupling. [00:35:57] Speaker 01: But they're not mechanically connected until they're resting on each other. [00:36:01] Speaker 01: If you think of two tent poles, when you first put the one pole into the other, they've started to couple. [00:36:06] Speaker 01: But they're not mechanically connected, as the patent teaches. [00:36:09] Speaker 01: So they get all the way to the bottom, and one thing's touching another. [00:36:13] Speaker 01: So that there is this time. [00:36:15] Speaker 03: Where is this language? [00:36:16] Speaker 01: Column 13 of the 186. [00:36:17] Speaker 03: Is this the base portion may be mechanically coupled and electrically connected by simply aligning the upper end of the base part portion? [00:36:27] Speaker 01: Claim the 186, column 13, base portion may be mechanically coupled and electrically connected. [00:36:34] Speaker 01: line 40 and following. [00:36:36] Speaker 03: There's a long description of all the way the pieces are. [00:36:43] Speaker 01: It does say mechanically coupled. [00:36:46] Speaker 01: The patent just says coupled. [00:36:48] Speaker 01: And the patent also. [00:36:50] Speaker 03: I'm sorry? [00:36:52] Speaker 01: The claim. [00:36:52] Speaker 01: I'm sorry. [00:36:52] Speaker 01: Yes, Your Honor. [00:36:53] Speaker 01: The claim just says coupled. [00:36:54] Speaker 01: So the last point I'll make, and I know my time is up. [00:37:00] Speaker 01: I apologize, but maybe I shouldn't take the last point. [00:37:03] Speaker 01: If I'm over time, I'll stop here, unless your honors have other questions. [00:37:09] Speaker 04: OK. [00:37:09] Speaker 04: All right. [00:37:10] Speaker 01: Thank you very much. [00:37:11] Speaker 01: Thank you, your honor. [00:37:12] Speaker 04: I thank both counsels. [00:37:13] Speaker 04: The case is submitted.