[00:00:00] Speaker 03: Final case for argument is 21-1942, provisor versus Weber, once again, with different advocates. [00:00:12] Speaker 03: Good morning, Ms. [00:00:12] Speaker 03: Horton. [00:00:13] Speaker 04: Good morning, Your Honors, may it please the court. [00:00:15] Speaker 04: My name is Sarah Horton. [00:00:17] Speaker 04: I'll remove my mask. [00:00:18] Speaker 04: And I represent Provider Technologies on this appeal today. [00:00:22] Speaker 04: The first issue I want to discuss is the board's decision on the surface area limitation, which was not supported by substantial evidence [00:00:30] Speaker 04: and deprived provisor of its rights under the APA. [00:00:34] Speaker 04: That element, element 1.5, which I won't read to you, requires that a surface area from the top slice be determined. [00:00:48] Speaker 04: The board did not address this limitation in its final written decision. [00:00:51] Speaker 04: And instead, at appendix 13, erroneously found that provisor, quote, did not dispute that petitioner had demonstrated that the combined teachings of White House, Antonison, and Hardy describe or suggest the limitations of the claim other than the digital image receiving device of element 1.3. [00:01:10] Speaker 03: Can I just ask you about that? [00:01:13] Speaker 03: Usually, we assume that everybody behaves confidently and reasonably. [00:01:17] Speaker 03: So I guess if we accept what you're saying, how did this happen? [00:01:24] Speaker 04: Your Honor, I don't know how this happened. [00:01:25] Speaker 04: The petitioner, obviously, that's the limitation is in the claims. [00:01:30] Speaker 04: It's in every single one of the independent claims, 1, 9, and 13. [00:01:34] Speaker 04: The board's institution decision at appendix 1434 recognized provisor had a counter argument. [00:01:42] Speaker 04: On that limitation, Provisors Patent Owner Response and Declaration from Dr. Howard further argued this point at Appendix 1505 and 1508 and then again at [00:01:55] Speaker 04: two thousand fifty five to two thousand fifty eight weber's reply recognize the dispute albeit in a footnote but it it recognize the dispute at appendix twenty one twenty four and then provides are also addressed this issue and it's a reply at appendix twenty five forty three to forty four so we believe that she was squarely before the board the board just did not address it and instead mistakenly found that the element was met which we do not believe [00:02:22] Speaker 04: that it was holding provisor's claims unpatentable. [00:02:26] Speaker 04: We think this is an error. [00:02:27] Speaker 04: The court made no findings on the surface area limitation in violation of the APA. [00:02:32] Speaker 04: And we think that the Romova case that we cite in our blue and yellow briefs is instructive. [00:02:37] Speaker 04: There, the board held unpatentable claims using arguments that the petitioner didn't make. [00:02:42] Speaker 04: And the court ruled that the board did not adequately explain the basis for its findings. [00:02:47] Speaker 03: Stating that the board must quote set forth a sufficiently detailed explanation of its determinations Both to enable meaningful judicial review and to prevent your case is more straightforward We're not parsing whether or not there was a sufficient amount of stuff said correct Your position is nothing was said nothing was said and you're asking [00:03:09] Speaker 03: Well, a reversal clearly would not be an order, right, if what you're suggesting is just the board, for whatever reason, neglected to deal with something. [00:03:18] Speaker 03: A typical remedy would be a remand so that they could do what they should have maybe done in the first instance, right? [00:03:26] Speaker 04: Well, potentially, Your Honor, a remand might be the appropriate remedy. [00:03:30] Speaker 04: But we do think reversal is appropriate here, because the final decision the board found, and this is that Antonison, [00:03:39] Speaker 04: and other evidence, which we think was inappropriate, was the aspect of Weber's petition that showed the camera or the digital image receiving device and not White House. [00:03:51] Speaker 00: What would you suggest we do if we reverse? [00:03:55] Speaker 04: If you were to reverse, I think the finding is that Weber has not met its burden of proof to show [00:04:02] Speaker 04: that the claims that include this limitation are unpatentable. [00:04:08] Speaker 04: They have not shown that its petitioned prior art has a, now I do have to read the claim limitation. [00:04:19] Speaker 00: Would that be appropriate if there's been no findings on any underlying facts, if there's been no findings for us to do that now? [00:04:29] Speaker 00: Or should we remand and have the board look at this issue? [00:04:33] Speaker 04: So the findings that the board has made are that Ann Tonneson plus White House plus Hardy rendered the claims in ground one of Weber's petition unpatentable. [00:04:48] Speaker 04: The final written decision at page 17 finds that it is Antonison and Antonison's camera that is used for the aspects of the claims that require a camera or data or the digital image receiving device. [00:05:06] Speaker 04: It used Antonison's camera at the location of Whitehouse's sensor, but did not rely on Whitehouse's length scanner. [00:05:15] Speaker 04: There's findings to that effect. [00:05:17] Speaker 04: Whitehouse is the only thing in the record that the petitioner relies on that could determine surface area. [00:05:25] Speaker 04: It's not Antonison's camera. [00:05:27] Speaker 04: It's Whitehouse. [00:05:28] Speaker 04: But the final written decision does not use Whitehouse's sensor. [00:05:34] Speaker 04: in the obviousness combination. [00:05:36] Speaker 04: In fact, at the oral argument, at appendix 3079, the board agreed. [00:05:43] Speaker 00: You're saying that Antonisonian doesn't use a camera? [00:05:48] Speaker 04: No, Your Honor. [00:05:48] Speaker 04: I'm sorry if I misspoke. [00:05:49] Speaker 04: Antonison does use a camera. [00:05:50] Speaker 04: The problem with Antonison is that Antonison specifically states that it does not image the surface area. [00:05:58] Speaker 04: So that's this limitation we're talking about. [00:06:00] Speaker 04: Antonison says at appendix [00:06:03] Speaker 04: 658 column 4 lines 51 through 55 that the system of Antonison its camera is adjusted specifically to exclude portions of the surface area. [00:06:15] Speaker 04: So that is the reason we think that reversal is appropriate here because of this. [00:06:21] Speaker 01: But if you're right that the board simply overlooked this argument and this element, then it follows, doesn't it? [00:06:30] Speaker 01: There's nothing for us to review [00:06:32] Speaker 01: And we have to let the board tell us what they think on this issue. [00:06:36] Speaker 01: Isn't that right? [00:06:38] Speaker 04: Your Honor, respectfully, I think that there are fact findings that the board has made that could lead this country to. [00:06:43] Speaker 01: You're arguing the necessary or possible implication of it, I take it. [00:06:47] Speaker 01: But wouldn't we normally want the board's view on that? [00:06:51] Speaker 04: Yes, Your Honor. [00:06:52] Speaker 04: Actually, in the Romova case that I just cited to the board where this happened, there was a remand. [00:07:02] Speaker 04: And that is what happened there. [00:07:04] Speaker 04: The results of the remand of the claims were patable. [00:07:06] Speaker 00: I can see a reversal if the board makes an actual finding. [00:07:11] Speaker 00: And we reverse that finding and perhaps even substitute our own finding in that place. [00:07:17] Speaker 00: We have a straight up reversal. [00:07:20] Speaker 00: But if we follow your argument, the board never considered or looks like they didn't consider this and never addressed it. [00:07:27] Speaker 00: then I wonder how appropriate it is for us to reverse it. [00:07:31] Speaker 00: So I'm not going to start with Sam, but it's a different story. [00:07:36] Speaker 04: Understood, Your Honor. [00:07:38] Speaker 04: I think the Romovo case, then, is the most instructive here, and that does say to vacate and remand. [00:07:49] Speaker 04: The [00:07:51] Speaker 04: Next issue is the improper evidence issue, which I want to touch on briefly. [00:07:57] Speaker 04: There, we believe the board abused its discretion in allowing in late evidence from petitioner and then using that evidence as highly probative in its obviousness finding on the image receiving device or the digital image receiving device limitation that was so hotly contested during the proceedings below. [00:08:22] Speaker 01: Why don't you help us on where's the unfair prejudice to your client on that? [00:08:27] Speaker 01: I understand it's prejudicial because it's highly probative evidence, but where's the unfair prejudice? [00:08:31] Speaker 04: Sure. [00:08:32] Speaker 04: The unfair prejudice comes in this way. [00:08:36] Speaker 04: The procedure by which that IPRs are supposed to happen for the statute and for the regulations is that the petitioner sets forth its grounds in its petition. [00:08:48] Speaker 04: Weber did that, and they relied on Antonison and White House to show this digital image receiving device. [00:08:56] Speaker 04: Then after reviewing provisor's patent owner response, it added new evidence related to that same element about the Electrum 1000 camera, and then later on recross of its expert and its deposition of its expert of the 1000N. [00:09:18] Speaker 04: The board then used that evidence in the prejudicial way that you just mentioned. [00:09:24] Speaker 01: It was a response to your making an argument that I think they didn't anticipate that your camera was somehow different than the camera in the prior art. [00:09:38] Speaker 01: And the evidence they put in, you say late, showed that there really was no difference between those cameras. [00:09:44] Speaker 04: Sure. [00:09:44] Speaker 04: So first, on that logic, Your Honor, which I think is in Weber's red brief, I think that if that is the standard for when you are allowed to use reply evidence, then in response to any argument a patent owner makes in its responsive brief, there could be new evidence. [00:10:00] Speaker 04: And that just doesn't seem to be fair. [00:10:02] Speaker 03: Well, I'm not buying that. [00:10:03] Speaker 03: I mean, we're dealing with the facts here. [00:10:05] Speaker 03: And it seems to me that their petition did talk about the disclosure in the prior art of a digital camera. [00:10:15] Speaker 03: And they replied to your contention that you responded to. [00:10:21] Speaker 03: You've got an abuse of discretion standard review here. [00:10:24] Speaker 03: And the board is on the ground watching all this paper fly back and forth. [00:10:28] Speaker 03: So I think it's quite hard to get there. [00:10:35] Speaker 04: So to the prejudice point, which I didn't quite answer, and then I will answer your question if that's OK, Judge Prost. [00:10:41] Speaker 04: In response to the evidence that they added during reply, we were, yes, allowed to make attorney argument as to why they were wrong. [00:10:48] Speaker 04: We were allowed to file us a reply and did file us a reply. [00:10:52] Speaker 04: What we were not allowed to do is add any of our own substantive evidence regarding why we thought they were wrong or other evidence on the issues of the Electrum 1000N or the Electrum 1000. [00:11:03] Speaker 04: Our expert was not allowed to opine on it. [00:11:05] Speaker 04: There was no opportunity for us to do that. [00:11:07] Speaker 04: So that is pretty much all. [00:11:08] Speaker 01: You took the deposition of their expert on that. [00:11:10] Speaker 01: Right. [00:11:10] Speaker 04: We took an expert deposition of their expert on the evidence that they had included in their reply, in their new expert deposition. [00:11:18] Speaker 04: Yes, we did. [00:11:20] Speaker 01: And then after that- I'm sorry. [00:11:21] Speaker 01: Did you ask for a chance to put in an expert report of your own after that? [00:11:27] Speaker 04: Our understanding is that there is no availability to do that in this third apply. [00:11:31] Speaker 01: You didn't ask, right? [00:11:32] Speaker 04: No, we did not. [00:11:35] Speaker 04: On the issue of- so we think this case is [00:11:40] Speaker 04: is more like the Henny Penny case and the Arosa cases that we've cited. [00:11:45] Speaker 04: In Arosa, the court rejected petitioners' attempt to even add new details to an obviousness, ground that it actually had already made from a different section of the art that was in its petition. [00:11:58] Speaker 04: And that wasn't allowed. [00:11:59] Speaker 04: And we think that this case is more egregious than that. [00:12:03] Speaker 04: I'll reserve the remainder of my time for the prosecutor. [00:12:06] Speaker 04: Thank you. [00:12:09] Speaker 02: Good morning, Your Honors. [00:12:10] Speaker 02: May it please the Court. [00:12:11] Speaker 02: My name is Tyler Dutton, and I'm arguing here on behalf of Weber. [00:12:15] Speaker 02: Judge Proce, you asked the question of why this claim construction issue happened with the determining a surface area of the top slice. [00:12:24] Speaker 02: And this happened because of how Provisor presented the arguments in its patent owner response. [00:12:29] Speaker 02: If you go to Appendix 1477, this lists Provisor's arguments that it raised in its patent owner response. [00:12:37] Speaker 02: Notably missing is this determining a surface area element. [00:12:40] Speaker 03: I'm sorry. [00:12:41] Speaker 03: Give me a chance. [00:12:43] Speaker 02: 1477. [00:12:44] Speaker 02: So on this page, Provisor told the board what its arguments were, and it did not argue a missing element for determining a surface area. [00:13:00] Speaker 02: Instead, Provisor buried this argument at Appendix 1507, which actually relates to whether Weber presented a coherent theory for the combination, not necessarily a missing element. [00:13:14] Speaker 03: Well, I mean, if you use the word buried, I'm not sure I read it as necessarily buried. [00:13:20] Speaker 03: The argument is therefore clearly made, right? [00:13:23] Speaker 02: That's very wrong. [00:13:24] Speaker 03: Maybe you choose to characterize it as buried. [00:13:26] Speaker 03: I'm not sure what buried means in the context of hundreds of pages being thrown around. [00:13:30] Speaker 02: That's fair enough, but it wasn't displayed prominently as one of the four principle arguments that Provisor was raising. [00:13:37] Speaker 02: Instead, they raised this as an argument related to whether Weber had presented a coherent theory for the combination. [00:13:43] Speaker 02: And the board did address that in its final written decision at Appendix 17, where the board disagreed with Provisor and understood the combination fully. [00:13:55] Speaker 02: So reading from this section of the final decision, they stated, quote, Petitioner has proposed only that an ordinarily skilled artisan would have been motivated to use Antonison's higher fidelity imaging technique on the meat after slicing, just as White House uses sensor four. [00:14:12] Speaker 02: And if you go to appendix nine, the board determined that White House uses sensor four to determine the surface area. [00:14:19] Speaker 02: And so from kind of the historical context of how this dispute came up and how the board analyzed this issue, it can be reasonably discerned that the board understood the combination and determined that Antonison's camera would determine the surface area of the top slice when positioned at White House's sensor four. [00:14:40] Speaker 01: Doesn't the board also say though at age 13 that the only dispute is the digital image receiving device? [00:14:48] Speaker 02: They do say that, Your Honor. [00:14:50] Speaker 02: And I think the reason why they said that is because this was not one of the provisor's main arguments on appeal. [00:14:57] Speaker 02: This wasn't one of the provisor's main arguments in the patent owner response. [00:15:01] Speaker 01: You're asking us to reasonably discern what the board did on an issue that it basically, affirmatively says is not an issue. [00:15:09] Speaker 02: Well, it says it's not an issue, because provisor did not raise this as a missing element. [00:15:14] Speaker 01: That may be why. [00:15:15] Speaker 01: Maybe that's the explanation for why it was overlooked. [00:15:18] Speaker 01: But it was overlooked, wasn't it? [00:15:20] Speaker 02: It was not overlooked, Your Honor, because at appendix 13, the board did address this element by adopting Webber's arguments in the petition as their own. [00:15:33] Speaker 02: And so they cited. [00:15:44] Speaker 02: on Appendix 12, they cite a bunch of the evidence that Weber put forth to support the obviousness rationale. [00:15:52] Speaker 02: And within that citation, they include page 21 of the petition, which is the analysis that Antonison would determine the surface area of the top slice if it was positioned at White House's Sensor 4. [00:16:06] Speaker 02: And the board [00:16:07] Speaker 02: came to the conclusion that a person of ordinary skill in the art would have moved Antonison's camera from the cut face to over the top slice. [00:16:15] Speaker 03: I'm not sure. [00:16:16] Speaker 03: So you're saying that means that the board did consider the arguments and address them? [00:16:21] Speaker 03: What's your point? [00:16:22] Speaker 02: They considered the evidence that Weber put forth and adopted the evidence and the obviousness theories set forth in the petition as their own. [00:16:32] Speaker 02: They say this expressly on Appendix 13 [00:16:36] Speaker 02: on the sixth line. [00:16:38] Speaker 03: And they also address provisional. [00:16:43] Speaker 03: And that follows right after what Judge Stark was just pointing to, where they made the comment that patent owner does not dispute, the petitioner has demonstrated, blah, blah, blah, all the limitations other than digital image receiving. [00:16:57] Speaker 02: That's correct. [00:16:58] Speaker 02: Because to the board's understanding, the only disputed missing element was the digital image receiving device. [00:17:04] Speaker 02: The argument that provisor raised in the patent owner response was whether there was a coherent theory of the combination. [00:17:13] Speaker 02: And the board agreed with Weber that the combination was quite simple. [00:17:17] Speaker 02: All you do is move the camera from the cut face to the position of White House's censor. [00:17:30] Speaker 02: We also note on Appendix 17, where I directed the court's attention to previously, it cites three pages of the petition regarding the combination that provisor argued was [00:17:49] Speaker 02: was not a coherent theory of obviousness. [00:17:51] Speaker 02: And they cited to the three portions of the petition where we make clear that what we're doing is putting Antonissian's camera at the location of White House's sensor. [00:17:59] Speaker 02: And that would determine the surface area of the top slice. [00:18:03] Speaker 01: Is it correct that you briefed the 1.5 element because you understood it to be in dispute, just like Provisor did, right? [00:18:12] Speaker 02: Yeah. [00:18:13] Speaker 02: We don't dispute that they raised this as an argument below. [00:18:17] Speaker 02: But we do dispute the characterization of how they raised this argument below. [00:18:23] Speaker 02: We don't view their dispute as being a missing element when you adopt the combination, but rather whether there was a cohesive combination to begin with. [00:18:34] Speaker 00: Assuming we rule against you, and we look at the potential of remanding this. [00:18:44] Speaker 02: Well, with respect to the determining a surface area of the top slice, this only comes up in some of the claims. [00:18:49] Speaker 02: It's not in all of the claims. [00:18:51] Speaker 02: And so we would submit that at most, we would do a remand on a partial subset of the claims. [00:19:00] Speaker 02: It's in with claim one and claim 13. [00:19:07] Speaker 02: But there is no basis for a reversal here because Weber did present arguments about determining the surface area. [00:19:16] Speaker 02: We point to evidence at Appendix 78 as well as Appendix 2124. [00:19:23] Speaker 02: And so there would be no basis for a reversal. [00:19:28] Speaker 02: So I'd like to spend a few moments on the evidentiary dispute if there's no questions on the surface area limitation. [00:19:37] Speaker 02: And here, I just want to make the point that there's no unfair prejudice, because like Judge Stark said or asked, that provisor had ample opportunities to respond to this evidence. [00:19:51] Speaker 02: Well, it couldn't put on an expert, could it? [00:19:56] Speaker 02: evidence during the depositions, and they also could have asked the board to submit a declaration. [00:20:03] Speaker 02: Rule 42.5 prints such a request, and the board, that was up to provisor, and they decided not to ask for that relief. [00:20:12] Speaker 02: So we think that they had ample opportunities to respond to this evidence on the merits, and they chose not to. [00:20:22] Speaker 03: You want to move to the cross field? [00:20:24] Speaker 02: Yes, Your Honor. [00:20:26] Speaker 02: So for claims 11 and 12, the board erred here by considering Wyslowski in isolation and not the combination as a whole. [00:20:34] Speaker 02: At appendix 28 through 29, the board looked at whether Wyslowski in isolation disclosed the camera located above and aimed at a scale. [00:20:44] Speaker 02: And after finding that it did not, the board ended its analysis. [00:20:48] Speaker 02: It did not consider the combination as a whole and how a posa would have used Wyslowski's teachings about. [00:20:54] Speaker 03: Well, you know, just like I asked your friend, when we see that there might be some problem, we always kind of want to figure out how it happened. [00:21:02] Speaker 03: And I guess I have the same question here, because I think there's some heft, frankly, to your second argument on the cross appeal. [00:21:09] Speaker 03: And your main argument in that regard is that, hey, they did this. [00:21:14] Speaker 03: They looked at the combination for claims 2, 6, and 7, reached the right result. [00:21:20] Speaker 03: But then somehow, on the cross-appeal, they isolated, was lost, whatever. [00:21:28] Speaker 03: Why? [00:21:29] Speaker 03: How did that happen? [00:21:30] Speaker 03: I mean, it's unclear to me why they did what you're arguing they erroneously did. [00:21:37] Speaker 02: Yeah, Your Honor, I frankly don't know why they did not look at the combination. [00:21:43] Speaker 02: I think the board got tunnel vision after they had the construction of Wake and Bear. [00:21:50] Speaker 02: And they just applied that construction, which we did. [00:21:53] Speaker 03: Is there an argument that you never made this argument with respect to these claims? [00:21:57] Speaker 02: We had always argued that the combination in ground two disclosed a camera located above and directed at a weight conveyor, even under the board's narrow construction. [00:22:10] Speaker 02: And we provide this at the gray brief at page nine, where we showed a side-by-side comparison of White House [00:22:18] Speaker 02: and then the combination that we presented in the petition. [00:22:23] Speaker 02: And what's on the right side of the gray brief at page nine is a screenshot from the petition. [00:22:28] Speaker 02: All those annotations are in the petition. [00:22:30] Speaker 02: And so the combination is actually just merely applying Wyslowski's general concept of imaging and weighing at the same time and applying that to White House such that a person of ordinary skill in the art would have moved the load cell over to Conveyor 19. [00:22:46] Speaker 03: And the board credited this... And that's what the board said one skilled in the art would have done with respect to the other claims, too. [00:22:53] Speaker 03: The end result is a scale in the conveyor that's positioned beneath the digital camera. [00:22:58] Speaker 02: That's correct, Your Honor. [00:22:59] Speaker 02: And so their decision here is inconsistent in the sense that they credited this combination for [00:23:06] Speaker 02: the first two claims of ground two, but then did not address it at all for the second two claims. [00:23:12] Speaker 01: And that's why. [00:23:12] Speaker 01: Was the board right that for claims 11 and 12, the physical arrangement is required, whereas it isn't for the other three, two, six, and seven? [00:23:24] Speaker 02: Under the board's construction, it would be required. [00:23:28] Speaker 02: We disagree of that construction for the reasons provided. [00:23:31] Speaker 02: But ultimately, under that construction, ground two discloses that element. [00:23:36] Speaker 02: But the references individually do not have that arrangement. [00:23:41] Speaker 01: Help me understand the inconsistency you see between invalidating 2, 6, and 7 and not invalidating 11 and 12. [00:23:49] Speaker 01: As I understand it, the board said the difference is that 11 and 12 are narrower claims because they have a specific physical arrangement that's required that's not disclosed in any of your prior references, whereas that was not necessary to invalidate 26 and 7. [00:24:05] Speaker 01: Did the board say that? [00:24:05] Speaker 01: And if so, why were they wrong? [00:24:07] Speaker 02: That is an accurate summary of the board's findings. [00:24:11] Speaker 02: They're wrong because they're looking at each reference individually as whether they disclosed that physical arrangement. [00:24:17] Speaker 02: We have to look under KSR and in-room at Moutet about how a person of ordinary skill would have applied Wyslowski's general teachings to White House. [00:24:26] Speaker 01: So they were right that none of the individual references disclosed the arrangement, but you're saying it would have been obvious to make that arrangement. [00:24:34] Speaker 02: That's correct, Your Honor. [00:24:35] Speaker 02: There's no explicit teaching. [00:24:36] Speaker 03: Is that because, am I right that the first set of claims were method claims and these were apparatus claims? [00:24:41] Speaker 03: Is that what drove the board to make this distinction? [00:24:44] Speaker 02: I believe they're both system claims, but I would have to double check, Your Honor. [00:24:49] Speaker 02: So unless there are further questions, I'd like to reserve my remaining time for rebuttal. [00:24:55] Speaker 04: Thank you. [00:24:58] Speaker 04: Your Honors, I'd like to briefly start with the surface area limitation and then move to the cross appeal. [00:25:03] Speaker 04: Just in response to Mr. Dutton's argument on the surface area claims, petitioner Woodstrip [00:25:11] Speaker 04: It would flip the burdens here by having Weber not have to put forward the case on obviousness and instead look to what provisor said in response as to what the board should look at for obviousness. [00:25:24] Speaker 04: That's not the standard. [00:25:26] Speaker 04: The board made no findings on the surface area limitation, and we cannot substitute Weber's suppositions about what the board might have found based on its other findings with regard to the surface area limitations, which in fact [00:25:40] Speaker 04: Claims 1, 13, and 9. [00:25:43] Speaker 04: Moving to the cross-appeal issue. [00:25:48] Speaker 03: So your friend called out 113, and you say 9 also. [00:25:51] Speaker 04: Yes, 9 also has a surface area limitation in it. [00:25:53] Speaker 04: Yes, Your Honor. [00:25:57] Speaker 04: Judge Post, on the cross-appeal, you started by asking, why did the board do what it did? [00:26:02] Speaker 04: I think the board did what it did because it looked at what Weber's arguments were and applied the law to its arguments and made fact findings consistent with that. [00:26:13] Speaker 04: Weber argued and grounds to that there was a four reference obviousness combination. [00:26:19] Speaker 04: It added Wyslotsky there. [00:26:21] Speaker 04: So appropriately, after going through the entire petition, looking at what the other three, Hardy and Tonneson, [00:26:28] Speaker 04: and White House disclosed, it focused, yes, its decision on grounds two on Weisslotzky. [00:26:34] Speaker 04: It hasn't Weisslotzky. [00:26:37] Speaker 04: It had not yet discussed that in the brief, or excuse me, in its final written decision. [00:26:43] Speaker 04: Weber just didn't make a compelling record as to why the specific physical arrangement on claims 11 and 12 [00:26:51] Speaker 04: were obvious. [00:26:52] Speaker 04: Weber chose to spend only one page of its petition on claims 11 and 12 and not more. [00:27:01] Speaker 04: Weber said, I think I heard Weber say up here when Mr. Dutton was arguing, that claims 11 and 12 do not have a specific physical arrangement. [00:27:11] Speaker 04: However, I would respectfully say [00:27:13] Speaker 04: that the claim language itself requires a specific physical limitation. [00:27:18] Speaker 01: I didn't understand saying that, but let me ask you, there is a dispute about the construction of weight conveyors in connection with their appeal, right? [00:27:26] Speaker 01: And you're defending at least the implicit construction that the board made, is that right? [00:27:30] Speaker 04: I would not praise it like that, Your Honor. [00:27:33] Speaker 04: I don't think there's a claim construction dispute here. [00:27:35] Speaker 01: Was there any claim construction briefing? [00:27:37] Speaker 01: No. [00:27:38] Speaker 04: Weber, in its petition, did not say that the claim term need to be construed. [00:27:41] Speaker 04: Provider did not put forth one. [00:27:43] Speaker 04: The final written decision does not put forth one in the claim. [00:27:47] Speaker 01: But the board does limit weight conveyor to scales, I think it is, right? [00:27:51] Speaker 04: Don't I don't think that's true either your honor the one place where that is mentioned in the final written decision is Not in the claim construction section, but in the first Page 24 appendix 24 if they did limit it to a scale would that be a correct limitation? [00:28:13] Speaker 04: I don't think anyone has been arguing that it has to be limited to a scale. [00:28:18] Speaker 04: I don't think Weber's arguments depend on it being limited to a scale, and I don't think that the board limited it to a scale. [00:28:32] Speaker 04: What really happened here is I think Weber didn't like the outcome on some of the claims, 11 and 12, in its ground two analysis, while it did like the other outcome on the analysis. [00:28:45] Speaker 04: And I actually think it's hypocritical for Weber to, on one hand, say that the board's analysis as to claims two, six, and seven was fine, and then say that it was not with regard to claims 11 and 12. [00:28:57] Speaker 04: For example, [00:28:58] Speaker 04: on final thought, because you've exceeded your time. [00:29:04] Speaker 03: So just give us your final. [00:29:05] Speaker 04: Sure. [00:29:06] Speaker 04: My final thought is I don't think that the board did anything in isolation here. [00:29:10] Speaker 04: In fact, last sentence and last paragraph before the board makes its ultimate finding on 11 and 12 explains well that it looked at Wyslotsky and Antonison and Hardy [00:29:27] Speaker 04: and White House and found that the petitioner offers no persuasive reason why an ordinary skilled artisan would have modified the references to achieve such an arrangement. [00:29:43] Speaker 02: A couple of quick notes on rebuttal, Your Honors. [00:29:47] Speaker 02: The board did limit claims 11 and 12 to require a scale. [00:29:52] Speaker 02: This is explicit at appendix 24, where they stated that claims 11 and 12 require that a camera is located above and aimed at a scale used to weigh the stack. [00:30:02] Speaker 02: And there is no scale otherwise recited in the claims. [00:30:05] Speaker 02: This construction, it's our opinion that infected the board's analysis with respect to claims 11 and 12, and that they looked at Wyslowski in that light salation to determine whether it had a camera located above and aimed at a scale used to weigh the stack. [00:30:23] Speaker 01: So if you're right, it's an implicit claim construction. [00:30:26] Speaker 01: Shouldn't we send it back to the board, and you all can argue about claim construction and see if they stick to that position or not? [00:30:33] Speaker 02: So we submit that reversal is the proper remedy here, because provisor did not preserve any arguments related to claims 11 and 12. [00:30:42] Speaker 02: They did not argue that ground two, as presented in the petition, as we showed at appendix 127, that that combination [00:30:50] Speaker 02: has a camera located above and aimed at a scale. [00:30:53] Speaker 02: And they also did not appeal the board's factual finding with respect to claims two and seven, or claims six and seven. [00:31:01] Speaker 02: So that rationale that the board applied should be a final factual finding. [00:31:07] Speaker 02: And with those findings, that would justify a finding of obviousness. [00:31:12] Speaker 03: Well, don't you think reversal is a little much here, as I said, just because [00:31:18] Speaker 03: forgetting the scale stuff and just going into the argument you're making with respect to the comparability of two, six, and seven to give the board an opportunity to explain if it really does think there's a distinction to be made between the two sets of claims or you think they don't get another chance because what they did was just wrong on the record as presented. [00:31:37] Speaker 02: So it's our view that they can't disturb their result for claims six and seven, because those are assuming that Weber prevails on the direct appeal. [00:31:50] Speaker 02: There would be no issues with respect to claims six and seven. [00:31:55] Speaker 02: And so in order to have a consistent opinion that's not arbitrary and capricious, we would need to have that same rationale applied to claims 11 and 12. [00:32:03] Speaker 02: Thank you. [00:32:04] Speaker 02: Thank you, Your Honor. [00:32:07] Speaker 03: dudes are proceeding.