[00:00:00] Speaker 00: 1-1851, provisor versus Weber. [00:00:06] Speaker 00: Good morning. [00:00:07] Speaker 00: Mr. Babbitt, whenever you're ready. [00:00:09] Speaker 01: Good morning, Your Honors. [00:00:10] Speaker 01: May I please escort? [00:00:11] Speaker 01: My name is Michael Babbitt. [00:00:12] Speaker 01: I'm the appellant and patent owner. [00:00:15] Speaker 01: Your Honors, the board's surprise claim construction in its final written decision was an error of law that infected the patentability analysis here and harmed provisor. [00:00:26] Speaker 01: The parties went through [00:00:28] Speaker 01: the entire IPR process with one common agreed understanding of the so-called multi-fill claim limitation and related patentability issues. [00:00:37] Speaker 01: And the board's Sue Espante claim construction at the last possible moment pulled the rug out from underneath the parties on that issue. [00:00:44] Speaker 01: It substituted the board's new [00:00:46] Speaker 00: Overbroad understanding of the claims for the parties initially said this claim construction is multi-fail And then they changed it to piece by piece the diamond written decision. [00:00:56] Speaker 00: That's not how things went down here, right? [00:00:58] Speaker 01: No the board never the board didn't address this claim instruction issue And where did you address it in your in your preliminary response? [00:01:04] Speaker 00: Did you argue that the claims were limited to multi-fail? [00:01:09] Speaker 01: No your honor [00:01:12] Speaker 01: The way this all played out, if we start from the beginning, we have the petition. [00:01:18] Speaker 01: In our preliminary response, we were arguing about a different claim construction issue. [00:01:21] Speaker 01: This is actually about multi-row deposition. [00:01:24] Speaker 01: And it was not about whether we're depositing two pieces at a time. [00:01:28] Speaker 01: So when we see the appellees citing these issues, they're taking this out of context from the preliminary decision and the institution decisions. [00:01:37] Speaker 01: And what you see, if you go and you look at our preliminary Patanona response, [00:01:43] Speaker 01: We were arguing about a different part of the claim. [00:01:45] Speaker 01: We weren't arguing about this multi-fill part of the claim. [00:01:49] Speaker 01: And then when we get to the institution decision, the board actually said there's not a dispute between the parties. [00:01:55] Speaker 01: Where the patent owner first raised these issues is in the patent owner response after the institution decision. [00:02:02] Speaker 01: After we had the benefit of the institution decision, we raised this issue with respect to the missing limitation, with respect to the missing multi-fill limitation in the patent owner response. [00:02:11] Speaker 01: The petitioner reply agreed with the claim instruction. [00:02:16] Speaker 01: And so during the trial, there was no dispute about any of this. [00:02:20] Speaker 01: Everyone agreed that the multifill limitation was the proper construction of the claim. [00:02:26] Speaker 01: This didn't come up in the cert reply. [00:02:28] Speaker 01: It didn't come up in any pre-evidentiary motions. [00:02:31] Speaker 01: It didn't come up at the hearing. [00:02:32] Speaker 01: It was a big surprise to us when we got to the final rent decision. [00:02:36] Speaker 01: And the board said, your agreed construction, which you guys have proceeded on through the entire [00:02:41] Speaker 01: Trial was wrong. [00:02:43] Speaker 04: And now we're going to give you a new construction in your brief in your in your response. [00:02:52] Speaker 04: Is there anything more that you would have said? [00:02:54] Speaker 01: Well, absolutely. [00:02:55] Speaker 01: You know, we raised a multifill issue if that ended up being a point of contention between the parties. [00:03:00] Speaker 01: then there's a whole world of evidence. [00:03:02] Speaker 02: You raised the issue, or did Weber raise the issue, the multi-fill issue? [00:03:07] Speaker 01: The multi-fill claim construction was first provided by us, the pan owner, in the pan owner response. [00:03:17] Speaker 01: So we raised that issue. [00:03:18] Speaker 01: We said under the proper claim construction, there is no obviousness. [00:03:23] Speaker 01: The petitioner agreed with the claim construction, and they made their obviousness arguments. [00:03:27] Speaker 01: But if we knew that that was going to be an issue, there's a hole that would have all proceeded completely differently. [00:03:33] Speaker 01: We would have had replies. [00:03:35] Speaker 01: We would have had expert depositions. [00:03:37] Speaker 01: There would have been evidentiary motions. [00:03:38] Speaker 01: We could have dressed that at the hearing. [00:03:40] Speaker 01: And we were deprived of that opportunity by not knowing that there was ever going to be an issue. [00:03:44] Speaker 00: The real key word here is whether it was simultaneous. [00:03:48] Speaker 00: And Weber, in fact, is the person that used simultaneous first. [00:03:53] Speaker 00: And you seize upon that in your surreply. [00:03:57] Speaker 00: And you only said that the claims require depositing multiple drafts at the last time, once in passing, in each response. [00:04:08] Speaker 00: I mean, I'll concede there may have been some confusion, but I don't think it was the board's fault. [00:04:15] Speaker 00: I think it wasn't clear that you were really disputing the simultaneousness of this. [00:04:23] Speaker 00: But you had an opportunity. [00:04:24] Speaker 00: I mean, this was in the game, right? [00:04:27] Speaker 01: No, I mean, it's a completely different obviousness argument with the different claim construction, Your Honor. [00:04:32] Speaker 01: Which is never developed in this IPR trial because the board sprung this on us at the last minute And I don't think it's fair to say that this was something that you know We always had an opportunity to address when we do look at the preliminary response which I think The appellee is focused on and this is that appendix 1721 the table of contents from the preliminary response you can see this is about [00:04:56] Speaker 01: The while said first and second rows are still in the fill station claim limitation, a different claim limitation than what we're dealing with here. [00:05:03] Speaker 01: We're talking it's about multiple row deposition, not about multiple piece and multiple portion deposition. [00:05:08] Speaker 04: But again, you've already told us you did eventually address the very claim construction dispute that is before us now, correct? [00:05:15] Speaker 01: Yes. [00:05:15] Speaker 01: The claim construction dispute is addressed in the pan owner response. [00:05:18] Speaker 04: Can I move on to another argument that you have to confront, which I think is the board went on nonetheless. [00:05:23] Speaker 04: to analyze obviousness based on your own preferred construction, isn't that right? [00:05:28] Speaker 01: Right, and that's where we get to a real substantial evidence issue. [00:05:34] Speaker 01: And I don't think the board has substantial evidence for that obviousness finding. [00:05:38] Speaker 04: If we think that there is substantial evidence for that, do we even have to resolve the claim construction question? [00:05:46] Speaker 01: Well, so there's a substantial evidence issue, and there's an APA issue, actually, with the way that the board did this. [00:05:51] Speaker 01: Because they basically did this backdoor obviousness analysis. [00:05:56] Speaker 01: The entire proceeding was about whether this Honsbrook reference actually discloses the multi-fill limitation. [00:06:02] Speaker 00: And then, just to be clear, I don't want to cut you off, but I thought the APA issue was related to the failure of your not having notice on this multi-fill claim construction issue. [00:06:15] Speaker 01: There's two parts to the APA issue. [00:06:17] Speaker 01: That's the first part of the APA issue with respect to the surprise claim construction. [00:06:22] Speaker 01: And then the second part of the APA issue is this, what I'm calling this backdoor obviousness issue, where the petition says, Hansberg discloses this limitation, [00:06:31] Speaker 01: Again, we proceed through the entire proceeding based on that issue and address that evidence. [00:06:36] Speaker 01: Essentially, what happened is we put in this evidence of the missing limitation. [00:06:39] Speaker 01: Then in reply, the petitioners changed their arguments to try to do this backdoor obviousness case. [00:06:45] Speaker 01: They put in evidence of common sense and the background art. [00:06:50] Speaker 01: And you actually see the board then relying on that in the final written decision. [00:06:54] Speaker 02: So that is a violation. [00:06:55] Speaker 02: Did you respond to those arguments? [00:06:57] Speaker 02: Did you get a chance to respond to those arguments? [00:07:00] Speaker 01: Not in substance, Your Honor, we weren't able to put in additional evidence, because again, we have this issue of it being addressed in reply. [00:07:06] Speaker 02: I don't mean additional evidence, just responding. [00:07:09] Speaker 02: Because it seems to me that one of the problems you have is that even if we accept what you're saying is true, that we're dealing with harmless error. [00:07:18] Speaker 02: Because it seems that the board ultimately did consider the statements that you're raising today. [00:07:28] Speaker 01: And we don't have harmless hair. [00:07:31] Speaker 02: Did the board hear your arguments? [00:07:35] Speaker 02: Now, I know you didn't get a chance to present an evidence. [00:07:37] Speaker 02: But if your side of the story is accepted, then even assuming you had provided expert testimony to bolster, to support your argument, it seems that the PITDA would have found the same way anyway. [00:07:55] Speaker 01: And I don't think that's right, Your Honor, respectfully. [00:07:57] Speaker 01: And this is the Qualcomm case that we know well from last year, where the board held that it would not be harmless if a petitioner is able to put in additional evidence here. [00:08:12] Speaker 01: We saw in Qualcomm the board talking about, or this court, talking about removing an element of proof and not giving. [00:08:19] Speaker 02: Qualcomm has two parts. [00:08:22] Speaker 02: And then opportunity, opportunity to be heard. [00:08:26] Speaker 02: It could be that here there was no notice, but it seems to me that there was an opportunity to be heard, that you had that. [00:08:34] Speaker 01: And I don't think, respectfully, Your Honor, I don't think that's right. [00:08:37] Speaker 01: I think we have a bigger policy problem here with the PTED, actually, where we have these clever petitioners that put in a vague obviousness theory at the outset in their petition. [00:08:46] Speaker 01: And then we have this shifting standards approach to litigation. [00:08:49] Speaker 01: where they're then able to backfill their petitions on the reply, put in additional evidence, put in additional expert evidence. [00:08:56] Speaker 01: And that puts a patent owner in a really difficult spot. [00:08:58] Speaker 01: In this case, we filed a motion to strike on this. [00:09:00] Speaker 01: And it was denied. [00:09:01] Speaker 01: What else are we supposed to do? [00:09:02] Speaker 01: How are we supposed to address that evidence after the reply stage, where all we have left is a surreply to make attorney argument? [00:09:09] Speaker 01: We were able to make attorney argument about claim construction, where you can't develop the expert record. [00:09:14] Speaker 01: to pose their experts on these issues and develop the evidentiary record in a proper way. [00:09:18] Speaker 00: So what exactly are you saying? [00:09:21] Speaker 00: Because there were experts on both sides here, right? [00:09:24] Speaker 00: That's right. [00:09:24] Speaker 00: And it was dealing with the substantial evidence issue about the multi-fill limitation. [00:09:31] Speaker 00: So what precisely are you saying we weren't on notice [00:09:36] Speaker 00: You weren't on notice on one of the arguments they made? [00:09:40] Speaker 00: Or what is the failure of notice here? [00:09:43] Speaker 00: Notice is what? [00:09:44] Speaker 01: So two notice problems. [00:09:45] Speaker 01: One is with the surprise claim instruction that nobody knew about until the final decision. [00:09:49] Speaker 00: We're already past that. [00:09:49] Speaker 01: We don't want the surprise claim. [00:09:50] Speaker 01: OK. [00:09:51] Speaker 01: Two is with this backdoor obviousness case, where we change it from, in the petition, what does the reference disclose? [00:09:58] Speaker 01: What does it actually disclose? [00:10:00] Speaker 01: That's what we were addressing in the Pan-Owner response, what Honsberg actually discloses. [00:10:04] Speaker 01: And I don't think there's any substantial evidence that Hansbert discloses depositing two at a time, which we can get to that. [00:10:10] Speaker 01: But then when they change that to an obviousness argument that it would have been obvious for Hansbert to have two of them, that's not proper. [00:10:16] Speaker 01: That's beyond the scope of the IPR. [00:10:18] Speaker 01: That's beyond the scope of the proceeding. [00:10:20] Speaker 00: It's beyond the scope of the decision. [00:10:21] Speaker 00: I'm really not understanding what backdoor obviousness is. [00:10:23] Speaker 00: When you're making obviousness, part and parcel of that is what one's filled in the art or how they would have read the prior art and whether it covered this. [00:10:32] Speaker 00: So I don't understand. [00:10:33] Speaker 00: I mean, how could you have been surprised that that was the position they were taking? [00:10:38] Speaker 00: That's inherent in making the obviousness allegation. [00:10:45] Speaker 01: When we look at the petition, and this is at appendix 214, the only argument in the petition about Hansberg was that Hansberg, quote, discloses this limitation, whether it actually discloses. [00:10:56] Speaker 01: There was no reason to combine. [00:10:58] Speaker 01: There was no expectation of success with respect to that limitation, that subject matter. [00:11:02] Speaker 01: We made our argument that this is a missing limitation, and the patent owner responds. [00:11:07] Speaker 01: And then the petitioner transformed this argument into an obviousness argument. [00:11:11] Speaker 01: And they started to say, oh, well, it's common sense. [00:11:13] Speaker 01: And there's the background act that supports this. [00:11:16] Speaker 01: And the board actually relied on that in their decision. [00:11:21] Speaker 01: I believe it's appendix 30 or 29. [00:11:24] Speaker 01: We refer to common sense, and they refer to the background art, which is not the argument in the petition. [00:11:29] Speaker 01: The issue is not about actually disclosing. [00:11:32] Speaker 04: I'm struggling a little with how much notice we have with this argument on appeal. [00:11:36] Speaker 04: I think I see two sentences on page 40 of your opening brief. [00:11:40] Speaker 04: Is that the full extent of the development of this backdoor obviousness? [00:11:44] Speaker 01: No. [00:11:44] Speaker 01: I mean, I'm using my clever phrase of backdoor obviousness here. [00:11:48] Speaker 01: That's not in the breach. [00:11:50] Speaker 01: But this APA violation is actually, I think, very much tied to the substantial evidence argument. [00:11:55] Speaker 01: which is, again, that there is not substantial evidence to what Hansberg actually discloses. [00:12:01] Speaker 04: OK, but that's not an APA violation, right? [00:12:05] Speaker 04: Or at least you're saying there's an APA violation in addition to lack of substantial evidence in addition to the claim construction. [00:12:11] Speaker 01: They're tied together, Your Honor. [00:12:13] Speaker 01: And so there's a legal failing. [00:12:15] Speaker 04: Well, I wanted to know your argument about lack of notice about what Hansberg disclosed. [00:12:21] Speaker 04: Where would I have found that in preparation for today? [00:12:24] Speaker 01: And so that's in our APA portion that you cited. [00:12:28] Speaker 01: It was, I think, the last paragraph with a site to the M&K holding case, which I think that case is very instructive, Your Honor. [00:12:36] Speaker 01: Because what we saw there is this court reverting on the situation where there was an obviousness argument in the petition for this dependent claim three. [00:12:48] Speaker 01: And the board transformed that into an anticipation argument. [00:12:50] Speaker 01: So they transformed it from is it obvious to what does the prior art disclose? [00:12:56] Speaker 01: I think it's actually even more of an issue here when you're transforming it from what does the prior art actually disclose [00:13:02] Speaker 01: to an obvious source issue. [00:13:03] Speaker 01: So that's the APA issue there, coming right from MNK Holdings. [00:13:08] Speaker 00: All right, I'll save my time, please. [00:13:11] Speaker 03: May it please the court, John Wright, for the [00:13:17] Speaker 03: Appellee Weber. [00:13:19] Speaker 03: So I think I'll address the two APA arguments that seem to be an issue in the opening argument here. [00:13:28] Speaker 03: So with respect to the claim construction APA argument, there is no or was no sui sponte construction by the board in its final written decision. [00:13:39] Speaker 03: Its construction was actually perfectly consistent with [00:13:44] Speaker 03: what it said about the claims in the decision on institution. [00:13:50] Speaker 03: And to the extent that there was any confusion in the decision on institution, it was an issue of provisor's own making. [00:13:58] Speaker 03: So perhaps the best evidence in the decision on institution that the board rejected provisor's exclusion of piece by piece deposition from the claim term that we're talking about [00:14:13] Speaker 03: is at appendix 1940. [00:14:17] Speaker 03: And there, the board, in the context of addressing the Hollymatic reference, and this is at the top of 1940, this is the institution decision on the 936 patent, but we can also find it in the institution decision on the 513 patent. [00:14:43] Speaker 03: At the top, the board says 1940. [00:14:47] Speaker 03: And they're addressing Hollymatic, which I think there's no dispute on ambiguously has piece by piece deposition. [00:15:05] Speaker 03: The board said that the patent owner offers no explanation why serial [00:15:10] Speaker 03: depositing of multiple food objects in multiple rows would not meet the recited claim language, even if we assume that Hansburg-Hollymatic combination is limited to single item deposition as the patent owner contends. [00:15:24] Speaker 03: So the board rejected the position there, and it rejected it again. [00:15:35] Speaker 03: in the context of the 513 patent as well. [00:15:39] Speaker 03: So additionally, my sense is that Provisors kind of shifted its position on appeal as well, because it says fairly clearly in its opening brief on page 14 that Provisor argued in its preliminary responses that the claims as properly constructed required multiple drafts to be deposited simultaneously [00:15:59] Speaker 03: in multiple rows while the web remains stationary. [00:16:03] Speaker 03: And now they seem to be arguing that, oh, we didn't make that argument in the preliminary response. [00:16:08] Speaker 03: We didn't make that until our patent owner response. [00:16:11] Speaker 03: So my overall point here is that there is a clear line all the way through the preliminary response where a provisor argued for, or at least attempted to argue for, a simultaneous multi-fill. [00:16:26] Speaker 03: The decision on institution, which [00:16:30] Speaker 03: rejected that position. [00:16:33] Speaker 03: And then the final written decision, which, again, was consistent with the institution decision. [00:16:38] Speaker 03: So there's just no shift in the board's position all the way through on the claim construction argument. [00:16:48] Speaker 03: And that, frankly, eviscerates the APA argument with respect to claim construction. [00:16:55] Speaker 03: So happy to answer additional questions on [00:17:00] Speaker 03: on the APA claim construction argument. [00:17:04] Speaker 00: So move on to the substantial evidence APA question. [00:17:07] Speaker 03: Right. [00:17:08] Speaker 03: So the provisor in its opening brief for this APA violation is relying on the board's decision at appendix 41. [00:17:22] Speaker 03: And I'm looking at page 40 of their blue brief, where this is where they're arguing that the board [00:17:28] Speaker 03: at the bottom of page 40 of the blue brief, the board held that Hansberg and Hollymatic renders obvious rather than discloses the multi-fill limitation. [00:17:38] Speaker 03: And they cite, for example, Appendix 41. [00:17:40] Speaker 03: But if you go to Appendix 41, that is simply the board's summary conclusion of the obviousness case. [00:17:53] Speaker 03: So if you look at Appendix 41, [00:17:56] Speaker 03: I think that what they're pointing to is, at the bottom, the conclusion for claim one, where they say that Honsberg and Hollymatic render claim one is obvious. [00:18:05] Speaker 03: But it doesn't say there that, oh, it's the multi-fill limitation that's obvious. [00:18:10] Speaker 03: And in fact, if you go back to appendix 32 in the board's final written decision on the 513 patent, there in the middle of that page, the board says, and this is at the [00:18:26] Speaker 03: have the last sentence of the middle paragraph. [00:18:29] Speaker 03: But we further find that the DE915 application supports that Hansburg teaches or suggests both the multi-fill deposition and piece-by-piece deposition as alternatives. [00:18:41] Speaker 03: So the board found and substantial evidence supports [00:18:46] Speaker 03: that Hansberg discloses, or at least suggests, simultaneous multi-fill deposition into Rhoades. [00:18:59] Speaker 03: And that finding is supported by substantial evidence. [00:19:02] Speaker 03: And if that is the case, then this court can affirm on direct appeal. [00:19:14] Speaker 03: OK. [00:19:15] Speaker 03: Absent questions on the direct appeal, I'd like to turn to Weber's cross-appeal argument. [00:19:25] Speaker 03: So with respect to the reverse fill claims, as we're referring to those claims on cross-appeal, the board erred analytically because it premised its decision of non-obviousness solely on its [00:19:45] Speaker 03: observation and evidence that said that the reverse fill embodiment of the Hansburg-Holymatic combination is less efficient and requires more steps than what I'll call the normal fill Hansburg-Holymatic combination. [00:20:03] Speaker 03: And that was the combination, of course, that Weber put forth that successfully invalidated most of the claims in the patent. [00:20:12] Speaker 03: But that finding, [00:20:15] Speaker 03: is not sufficient to support non-obviousness because the board did not evaluate. [00:20:20] Speaker 03: the motivations to combine that Weber put forth for Hansburg-Hollymattox for claim one. [00:20:26] Speaker 00: I guess I may be missing something in the record. [00:20:29] Speaker 00: So maybe it's on me. [00:20:31] Speaker 00: But it seems to me that notwithstanding whatever the law is, the argument you made for motivation to combine was that it was efficiency, full stop. [00:20:42] Speaker 00: And so the board was fully, it seems to me, within its rights to say, well, we don't agree that it's [00:20:50] Speaker 00: of more efficient. [00:20:51] Speaker 00: Indeed, it's much less efficient because it's all this convoluted changing stuff. [00:20:56] Speaker 00: So we're rejecting your claim. [00:20:58] Speaker 00: I mean, what's wrong with that? [00:21:00] Speaker 00: They relied on the argument you were making for motivation and rejected it. [00:21:04] Speaker 00: And it's a substantial evidence review of that conclusion, is it not? [00:21:12] Speaker 03: On the facts and on motivation to combine, that's a question of fact, correct. [00:21:16] Speaker 03: But if the board kind of foot faulted in its application of the law, then of course that's reviewed de novo. [00:21:23] Speaker 00: Well, what's the foot fault? [00:21:25] Speaker 03: Well, the foot fault is that the board, so if you look at appendix 27, this is the final written decision for the 513 patent, the board lists the motivations to combine that Weber [00:21:39] Speaker 03: put forward. [00:21:40] Speaker 03: It's in that paragraph at the bottom of page 27 and over to 28. [00:21:44] Speaker 03: And there, on page 27, there are four motivations to combine there, none of which, well, at least three of which do not implicate the overall direction that the conveyor moves when depositing. [00:21:59] Speaker 03: So for example, the first one is [00:22:02] Speaker 03: this is the second sentence in that paragraph, forming arrays with multiple rows and columns was an efficient way to organize containers. [00:22:11] Speaker 03: That's true irrespective of whether you're looking at the forward fill or the reverse fill combinations. [00:22:18] Speaker 03: The second one is that forming multiple rows and containers during each dwell time increases the number of containers that can be formed and improves the amount of product that can be loaded. [00:22:28] Speaker 03: Again, that motivation [00:22:31] Speaker 03: is there irrespective of whether it's a forward fill or reverse fill combination for Hansburg and Hollymatic. [00:22:40] Speaker 03: Same thing at the bottom of the page. [00:22:43] Speaker 03: It says, petitioner also contends that using containers formed in webs rather than pre-formed trays, as in Hollymatic, is less expensive. [00:22:49] Speaker 03: Again, that's irrespective of the overall motion of the conveyor. [00:22:54] Speaker 03: in the depositing steps. [00:22:57] Speaker 03: So the board simply either didn't appreciate that all of those motivations are there, irrespective of the overall motion of the conveyor. [00:23:09] Speaker 03: And then when it evaluated the reverse fill combination, it failed to do that kind of balancing of pros and cons that the law requires. [00:23:21] Speaker 03: It simply said, oh, the reverse fill is not as efficient as the forward fill. [00:23:25] Speaker 00: Well, it said that adding an advancement step would be less efficient and undesirable because it would require advancing the conveyor, then retracting the part that supports the food, then advancing it. [00:23:40] Speaker 00: I guess I'm not seeing [00:23:43] Speaker 00: You're saying this is a lot of case with a lot of issues, and they couldn't take you at your word and say, no, no, no. [00:23:51] Speaker 00: We're looking at this, and it's less efficient. [00:23:52] Speaker 00: You are making an efficiency argument. [00:23:54] Speaker 00: This is less efficient. [00:23:55] Speaker 00: I don't understand what more was required in terms of balancing this and balancing the four different sub-arguments you were making. [00:24:04] Speaker 00: Just help me out here, because I'm not getting it. [00:24:06] Speaker 03: So I guess there's two principles of law that come into play here. [00:24:12] Speaker 03: The first is that a combination that is perhaps inferior or not the most desired combination or the preferred combination is still not in apt for purposes of obviousness. [00:24:30] Speaker 00: I take that point. [00:24:31] Speaker 00: We've all read KSGuard numerous times. [00:24:34] Speaker 00: But that doesn't mean that the board is foreclosed from taking the argument that the petitioner is making on motivation. [00:24:41] Speaker 00: which is, this is more efficient using efficiency, and saying, we reject your argument on motivation, and therefore you lose. [00:24:52] Speaker 00: That kind of analytical framework is not foreclosed by KSR, is it? [00:24:57] Speaker 03: No, because the motivation to combine can come from any number of places post-KSR. [00:25:04] Speaker 03: The point is that all of the motivations to combine that the board [00:25:09] Speaker 03: accepted with respect to the forward fill embodiment of Hansburg-Hollymatic are equally applicable to the reverse fill Hansburg-Hollymatic. [00:25:21] Speaker 03: And again, the overall motion of the conveyor does not detract from those motivations. [00:25:28] Speaker 03: And I think it was incumbent on the board to at least say something about those motivations, which it had accepted. [00:25:38] Speaker 03: throughout the case and weighed those against the inefficiency that the reverse fill had over the forward fill combination. [00:25:49] Speaker 03: It didn't even evaluate the reverse fill combination over the prior art standing alone. [00:25:55] Speaker 03: Again, all of those motivations are still applicable, and that was kind of the footfall in the board's analytical reasoning. [00:26:03] Speaker 03: I see them into my rebuttal time. [00:26:05] Speaker 03: OK. [00:26:06] Speaker 03: Thank you. [00:26:07] Speaker 03: Thank you. [00:26:08] Speaker 01: Your Honor, I'll just briefly address the cross-appeal issue, because I think your question, Judge Prost, got right at the heart of it. [00:26:14] Speaker 01: There's no air of law here. [00:26:15] Speaker 01: The board did a purely factual analysis on obviousness. [00:26:20] Speaker 01: The petitioner said that the combination would have made it efficient, and the board rejected that. [00:26:25] Speaker 01: You can see that admission from them in the red brief on page 66. [00:26:29] Speaker 00: But what about his point about the board should have taken into account all the other motivation arguments that were present in the main appeal? [00:26:37] Speaker 01: I think the board considered that information, and it rejected it on a factual basis. [00:26:42] Speaker 01: There's no legal issue, as you say. [00:26:44] Speaker 01: KSR is a flexible analysis. [00:26:46] Speaker 01: The board applied KSR in that situation and found that there was non-obviousness on those claims. [00:26:55] Speaker 01: With the moments I have left, I would like to just actually get to an issue, which I think I haven't raised, which is the substantial evidence issue. [00:27:01] Speaker 01: Because I think it's important of Pondsburg [00:27:03] Speaker 01: When we talk about Hounsburg, the issue is does- I'm sorry. [00:27:07] Speaker 00: Are we back to the main appeal now? [00:27:09] Speaker 01: Yes, Your Honor. [00:27:10] Speaker 00: May I? [00:27:12] Speaker 00: Well, you're making an argument you didn't make in your earlier statements. [00:27:16] Speaker 01: I'd like to address the substantial evidence issues that we touched on. [00:27:21] Speaker 01: So Honsberg, there's not substantial evidence that Honsberg actually teaches the multi-fill limitation. [00:27:26] Speaker 01: The board only cited the two things with respect to Honsberg. [00:27:29] Speaker 01: They cited the fact that there's empty lanes and that there's empty receptacles. [00:27:33] Speaker 01: So empty lanes and empty receptacles doesn't tell anything about how these things are actually deposited. [00:27:39] Speaker 01: There's actually a portion of Honsberg at column four and column five, which starts with the manner in which the sliced food is delivered will now be described. [00:27:47] Speaker 01: That's the evidence of how Hansberg disposes things. [00:27:50] Speaker 01: And consistently throughout that, it's all one at a time. [00:27:53] Speaker 01: So there is not substantial evidence. [00:27:54] Speaker 00: OK. [00:27:55] Speaker 00: It's a little problematic, because these are arguments you didn't raise when you were first up here. [00:27:59] Speaker 00: And they have an opportunity to respond on the cross appeal, but not on that. [00:28:03] Speaker 00: So it's a little troubling. [00:28:05] Speaker 00: But anyway, thank you. [00:28:05] Speaker 00: We have your argument. [00:28:06] Speaker 01: Thank you, Your Honor. [00:28:08] Speaker 03: Just one very brief point on the cross appeal. [00:28:11] Speaker 03: The appropriate yardstick for measuring obviousness for the reverse fill combination was not the preferred combination of the forward fill that Weber put forth to invalidate most of the claims. [00:28:29] Speaker 03: The proper yardstick is the prior art [00:28:33] Speaker 03: as it existed at the time. [00:28:35] Speaker 03: And again, all of those motivations that motivated Hansburg and Hollymatic coming together are equally applicable to the reverse fill combination. [00:28:48] Speaker 03: And they're just not tied to the direction that the conveyor moves when depositing drafts. [00:28:55] Speaker 03: And the board's failure to appreciate that and evaluate those motivations is the error. [00:29:01] Speaker 03: Thank you. [00:29:01] Speaker 03: Thank you. [00:29:01] Speaker 00: Thank both sides.