[00:00:00] Speaker 01: Okay, the next target case is number 22, 1379, electronic plastics incorporated against Apogee Lighting Holdings, LLC. [00:00:12] Speaker 01: Mr. Williams, are you ready? [00:00:14] Speaker 00: Thank you, Judge Newman. [00:00:15] Speaker 00: May it please the court? [00:00:18] Speaker 00: Sort of as a harken back to the earlier two cases today, we have, I think, two issues that you've already heard about this morning. [00:00:25] Speaker 00: One is we have PTAB deviating from the principle of party presentation and modifying the grounds that were actually presented by the petitioner below. [00:00:33] Speaker 00: The second problem we have in this case is the PTAB's claim destruction errors in deviating from the actual invention that's described in the specification. [00:00:42] Speaker 00: as well as in one case of failure of the PTAB to actually explain its claim construction that it used to find the patterns obvious. [00:00:50] Speaker 00: Let me begin, if I might actually, with the first point. [00:00:53] Speaker 00: Because if the PTAB had correctly followed the petitioner's theory of the case, the claim construction error actually would have been irrelevant. [00:01:01] Speaker 00: The reason is because in this case, what we have is a LED power supply connected to multiple voltage sources. [00:01:11] Speaker 00: The petitioner's theory was that you would use this patent RealMuto, which described a multiple input power supply, and use that to power a different reference's LED. [00:01:21] Speaker 00: The problem is the motivation that they provide for that combination is the knowledge that in a transportation facility, there would be multiple power sources making the RealMuto multi-input power supply relevant. [00:01:33] Speaker 00: That was their whole theory. [00:01:35] Speaker 00: And for that theory, they had to rely on applicants admitted prior art. [00:01:39] Speaker 00: They said, because [00:01:41] Speaker 00: A person of ordinary skill in the art would have known that a transportation facility has multiple inputs, including a low voltage and a high voltage. [00:01:49] Speaker 00: Therefore, you would have turned to real Muto. [00:01:51] Speaker 00: So that was petitioner's theory of the case. [00:01:53] Speaker 00: The PTAB abandoned that. [00:01:55] Speaker 00: Let me show you what I mean. [00:01:59] Speaker 00: In reply, so we had a patent owner obviously had complained to the PTAB about the use of admitted prior art in the grounds. [00:02:07] Speaker 00: In reply, petitioner explained explicitly how they were using an admitted prior art as part of their motivation to combine. [00:02:13] Speaker 00: This is at appendix page 1354 in the record. [00:02:18] Speaker 00: There, the petitioner told the PTAB that they were relying on admitted prior art as evidence of general knowledge and motivation to combine, and shows that POSA would know that a public transportation facility at the time would include a standard voltage source and a high voltage source [00:02:36] Speaker 00: from which public transportation vehicles draw power. [00:02:40] Speaker 00: That is extremely important. [00:02:41] Speaker 00: Their own theory, as articulated to the PTAB, was that it's the existence in that public transportation facility of this high voltage source from which public transportation vehicles draw power that justified turning to real MUTO [00:02:55] Speaker 00: That's the combination that they proposed. [00:02:57] Speaker 00: The problem with that ground, the problem with that motivation, is that there is no evidence at all anyone of ordinary skill in the art would have attempted to connect to the high voltage power source from which public vehicles draw power. [00:03:09] Speaker 00: And in fact, their own expert admitted that a person of ordinary skill in the art likely would not. [00:03:14] Speaker 00: And that's for several reasons. [00:03:15] Speaker 00: First, you're powering LEDs. [00:03:16] Speaker 00: LEDs are very sensitive semiconductor devices. [00:03:19] Speaker 00: You need very controlled power supplies to them. [00:03:21] Speaker 00: And there's no dispute that in the transit facility where you've got a third rail or some other power source powering a vehicle, that power supply is not in any way suitable for an LED. [00:03:32] Speaker 00: You have to do much to that power supply before it becomes suitable to power an LED. [00:03:37] Speaker 00: So there's lots of problems that you have to solve to get there. [00:03:40] Speaker 00: The PTAB ignored all of those, ignored the expert's admissions that no one would have thought. [00:03:43] Speaker 00: This is again patent owner's admissions that no one would have thought to do this. [00:03:47] Speaker 00: And instead what the board did is change the motivation to the buying. [00:03:51] Speaker 00: and change the admitted prior RART. [00:03:52] Speaker 00: So for instance, at page 43, this is in the final written decision, the board said, applicants admitted prior RART teaches a high-voltage power source as claimed, including a 600-volt power source for use in public transportation facilities besides the third rail. [00:04:10] Speaker 00: So immediately, the board is switching the grounds on this. [00:04:13] Speaker 00: We have prepared the case as though the petitioner's theory was in play. [00:04:17] Speaker 00: that you would connect to the third rail. [00:04:19] Speaker 00: We pointed out that no one would do that. [00:04:20] Speaker 00: There'd be no motivation to do that. [00:04:22] Speaker 02: So- Appendix page, were you just reading from? [00:04:24] Speaker 00: Yeah, appendix page 43. [00:04:25] Speaker 00: These are citations from final written decision. [00:04:30] Speaker 00: Judge Cunningham, there's another one at page 46, where they say, the board again says, applicant's admission is not limited to a training facility's third rail. [00:04:38] Speaker 00: They do it again at appendix page 47. [00:04:40] Speaker 00: Applicant intended the prior art to include more than a source from which electric vehicles draw power. [00:04:47] Speaker 00: There's probably others, but it's replete in the final written decision. [00:04:50] Speaker 00: The board has to turn away from the third rail. [00:04:52] Speaker 00: And now they invent some new second power source that's high voltage in the public transportation facility that was nowhere in the ground that was presented. [00:05:01] Speaker 00: And as I said, that change certainly mattered a lot because the patent owner was responding to the petitioner's theory, not to a new grounds of rejection that was essentially invented by the PTAB during this proceeding. [00:05:14] Speaker 00: It's also, I think, incorrect. [00:05:16] Speaker 00: Substantively, the board concluding that the emitted prior art included something besides a third rail is just not supported at all in the record. [00:05:25] Speaker 00: The source for that, I suppose, admission comes from the specification. [00:05:29] Speaker 00: But if you read the specification, there's only two types of power sources ever discussed. [00:05:33] Speaker 00: There's the power mains that are coming into the transmission facility, which could be three-phase. [00:05:38] Speaker 00: That's one of the examples of the power mains it talks about. [00:05:41] Speaker 00: Or it could be standard. [00:05:42] Speaker 00: It could be just a regular one-phase power supply, but that's one source. [00:05:46] Speaker 00: The other source is the third rail. [00:05:47] Speaker 00: There literally is no other source ever talked about in the specification. [00:05:52] Speaker 00: The board makes much of the different voltage magnitudes. [00:05:54] Speaker 03: Does it talk about batteries? [00:05:56] Speaker 00: I'm sorry? [00:05:56] Speaker 03: Batteries? [00:05:58] Speaker 00: The specification does talk of batteries. [00:06:03] Speaker 00: Never in the context of admitted prior art, however, [00:06:07] Speaker 00: Of course, some of these claims do cover a battery backup in the power supply. [00:06:10] Speaker 00: That's sort of incidental to the issues on review here, Your Honor, I would say, because what the question is here is would you connect to a standard power source and a high voltage power source? [00:06:20] Speaker 00: The battery is, I think, important to some dependent claims, but it won't turn the outcome of the case here. [00:06:26] Speaker 00: And again, the petitioner's own articulated theory of the case, as I read to you earlier, was you would turn to the admitted prior art because it teaches you that there is [00:06:33] Speaker 00: third rail, high voltage power source to which you would want to connect your light to, and another power source, and therefore you would want to use this remote to a multi-function power supply. [00:06:42] Speaker 00: That was the whole theory of the case. [00:06:44] Speaker 00: Okay, let's see. [00:06:46] Speaker 00: There was another error that I wanted to get to relating to the level of skill in the art. [00:07:00] Speaker 00: The board, I think, tried to hedge its opinion [00:07:02] Speaker 00: not only changing the admitted prior art, but also changing the level of skill in the art. [00:07:07] Speaker 02: Why didn't you challenge the board's definition of personal ordinary skill in the art? [00:07:13] Speaker 00: Can you repeat that? [00:07:14] Speaker 02: Why did you not challenge the board's definition of POSA after the board's institutional decision? [00:07:22] Speaker 00: Respectfully, Your Honor, I think we did. [00:07:24] Speaker 00: I mean, admittedly, we didn't directly point the board to that 65-word addition that they made. [00:07:29] Speaker 00: But I think we did absolutely challenge that what the board added in that level of skill was the knowledge that you would need in order to actually effectively use the third rail as a power source. [00:07:39] Speaker 00: That, in our view, is what all that additional stuff is trying to accomplish. [00:07:42] Speaker 02: Can you give me the page where you made that challenge? [00:07:44] Speaker 00: Yes, yes. [00:07:45] Speaker 00: Sorry, let me get that to you right now. [00:07:51] Speaker 00: OK. [00:07:51] Speaker 00: Well, first let me show you on appendix page A44. [00:07:55] Speaker 00: This is the final written decision. [00:07:57] Speaker 00: The board acknowledged that we had challenged it. [00:08:02] Speaker 00: This is in the background knowledge of a person of ordinary skill. [00:08:07] Speaker 00: That's the heading of this section on page A44. [00:08:09] Speaker 00: The board says, the initial dispute over reasons to combine relates to the background knowledge of a person of ordinary skill in the art. [00:08:16] Speaker 00: The board acknowledged that we had challenged this. [00:08:18] Speaker 00: And in particular, the way we had challenged this throughout [00:08:21] Speaker 00: The proceeding was to point out that there was undisputed evidence that connecting to the third rail was not known to a person of ordinary skill in the art. [00:08:33] Speaker 00: I have several citations for that in our brief that I lay out, Your Honor, in our reply brief. [00:08:40] Speaker 00: But one that they start, for instance, at page [00:08:45] Speaker 02: I'm not sure if I'm reading this the same way you're reading it. [00:08:48] Speaker 02: You're saying that sentence right there says that you challenged and disagreed with the POSA definition that was in the institution decision? [00:08:56] Speaker 00: Yeah, this is the section where the board is explaining the background knowledge of a person of ordinary skill and AR. [00:09:01] Speaker 02: Yeah, no, I see the section. [00:09:03] Speaker 00: Okay, yeah, and they acknowledge right away the initial dispute over reasons to combine relates to the background knowledge. [00:09:09] Speaker 00: And that's correct, because in our view, no one had the background knowledge to connect to the third rail power source. [00:09:16] Speaker 00: But let me just show you, because that's in our briefs. [00:09:20] Speaker 00: Let me just see. [00:09:21] Speaker 00: Start with 542. [00:09:24] Speaker 02: You can keep going. [00:09:25] Speaker 02: I don't need to give you all your arguments. [00:09:26] Speaker 00: No, that's fine. [00:09:27] Speaker 00: I have a whole series. [00:09:28] Speaker 00: There are a whole series in our reply. [00:09:30] Speaker 00: We have a series of citations in our reply brief responding to their waiver argument, where we lay those out. [00:09:35] Speaker 00: And I'm happy to talk about them now or on rebuttal. [00:09:37] Speaker 00: But we repeatedly point out that this was the fundamental flaw in the grounds, that it is just not true that there is some knowledge in the level of skill and the art as to how to connect these things to a third rail. [00:09:49] Speaker 00: There's not a single piece of prior art showing connection to the third rail to power anything, much less an LED. [00:09:55] Speaker 00: And in fact, as we indicated, and we pointed out to the board, their own expert admitted that it's not something that a person of ordinary skill and the art would have done. [00:10:03] Speaker 00: So I think it's unfair to say we never challenged it. [00:10:06] Speaker 00: But the other problem is it wasn't clear to us why the board was even saying that in the institution decision. [00:10:11] Speaker 00: Why did it deviate from what the parties had agreed with the level of ordinary skill in the yard? [00:10:15] Speaker 00: And it wasn't frankly until the final written decision that I began to understand. [00:10:20] Speaker 00: What the board was really doing here was trying to shore up a failure in proof that had developed over the course of the proceeding on the petitioner's side. [00:10:27] Speaker 00: There was just no evidence that a person of ordinary skill and the art would have known how to do this or would have thought to do it at all in the first place. [00:10:35] Speaker 00: The other thing I was going to point out about the board's posted definition is its premise, the only basis, I mean just substantively it's wrong, the only basis the board gives for that deviation from the party's agreement about what the level of ordinary skill in the art was, was that supposedly there's nothing in the specification that explains how a person of ordinary skill in the art would have gone about connecting to a third rail. [00:10:57] Speaker 00: And that's just fundamentally not true. [00:11:01] Speaker 00: Column 6 of the patent has [00:11:04] Speaker 00: Gosh, I don't know, 30 or so lines devoted to explaining the precise circuitry you would use to take the high voltage power source of a third rail and make it suitable for controlling an LED power supply. [00:11:15] Speaker 00: The board just, which we pointed out to the board by the way, but they never even addressed it and they never acknowledged it. [00:11:19] Speaker 00: They never explained why that section at column six, beginning around line nine of page 185 record, disproved their entire theory about why the level of skill in the art needed to be expanded. [00:11:34] Speaker 00: OK, so with my remaining time, if I could just maybe turn to the claim construction points briefly. [00:11:40] Speaker 00: The preamble. [00:11:43] Speaker 00: So the preamble here, the board essentially really tortured this claim trying to take the public transportation facility out of the claim. [00:11:51] Speaker 00: The problem is there's just no way to do that and render the claim coherent. [00:11:55] Speaker 01: Is your position that if they were wrong about the preamble, [00:12:01] Speaker 01: That affects the result. [00:12:03] Speaker 01: Does it make any difference? [00:12:05] Speaker 00: I think it does. [00:12:05] Speaker 00: Yes, Your Honor. [00:12:06] Speaker 00: Again, because for two reasons. [00:12:10] Speaker 00: One is that it does influence the motivation to buy and what you would need to find in the art in order to practice this claim. [00:12:16] Speaker 00: Assuming that you need to find a public transportation facility. [00:12:19] Speaker 01: They found art that was fairly close. [00:12:22] Speaker 01: That's why I asked whether it would make any difference in your argument, whether theoretically we say the preamble does or doesn't count. [00:12:31] Speaker 00: Yeah, again, I think it does because what you then need to do is find a high-voltage power source in a public transportation facility that you would connect this thing to. [00:12:41] Speaker 00: And as we argued to the board, there is nothing in the art. [00:12:45] Speaker 00: They have, the only art they have for that is Roberge. [00:12:48] Speaker 00: Roberge teaches an LED light and it shows it in a train tunnel. [00:12:53] Speaker 00: Okay, so that's fine, but it says nothing about what this high-voltage power source is. [00:12:57] Speaker 01: I can see why it would be relevant to infringement. [00:13:01] Speaker 01: I have trouble seeing why it's relevant to obviousness. [00:13:05] Speaker 00: Well, why it's relevant to obviousness, because if the claim is limited to a high voltage power source in a transit facility, which is what we say, because the preamble should be limiting, if that's true, then to invalidate the claim, you've got to show me a combination of prior art that has [00:13:21] Speaker 00: high-voltage power source in a public transportation facility that you connect the light to. [00:13:26] Speaker 00: And there is no art that has that. [00:13:27] Speaker 00: Roberge does absolutely not teach that. [00:13:29] Speaker 00: Roberge says nothing about what the voltage sources are that are powering that light. [00:13:33] Speaker 00: It just shows a light. [00:13:34] Speaker 00: And Roberge teaches that's connected to power mains. [00:13:37] Speaker 00: It doesn't say it's connected to the third rail. [00:13:40] Speaker 00: That's the whole key to this invention here is connecting something to the third rail and making that work. [00:13:44] Speaker 00: Reverse doesn't have that. [00:13:46] Speaker 00: Nothing in the art has that at all. [00:13:47] Speaker 00: That's our point. [00:13:48] Speaker 00: That was our point to the PTAB. [00:13:49] Speaker 00: That's our point here. [00:13:50] Speaker 00: So yeah, I think it does, in fact, validity. [00:13:54] Speaker 00: I think in this case, it's sort of irrelevant because Petitioner's own theory would have required that anyway. [00:14:00] Speaker 00: So that's why I think the error there is not that important. [00:14:02] Speaker 00: But in any event, there's just no way to take out used in public transportation facility and not torture this claim. [00:14:08] Speaker 00: Because what you're left with then is a light fixture having a power source, and that is certainly not the claim. [00:14:12] Speaker 00: The power source is somewhere else. [00:14:14] Speaker 00: The light fixture connects to it. [00:14:16] Speaker 00: That's what the text of the claim says. [00:14:18] Speaker 00: In my remaining time, I'll just point out that the other claim construction that we dispute is the high voltage power source. [00:14:27] Speaker 00: I have several problems with what the board did here. [00:14:29] Speaker 00: First and foremost, [00:14:31] Speaker 00: They didn't even consider the claim. [00:14:32] Speaker 00: On page A-19, they tell you, we need not clearly delineate the scope of this term. [00:14:36] Speaker 00: So I don't even know why I lost. [00:14:38] Speaker 00: They didn't tell me which of these constructions they were adopting in order to find this thing present in the prior art. [00:14:43] Speaker 00: At the very least, I should be told why it is that this claim is practiced by the prior art. [00:14:48] Speaker 00: They refused to tell me. [00:14:49] Speaker 00: The second thing I'll point out is this voltage, I mean, what really the board was confused about is voltage magnitude versus voltage source. [00:14:57] Speaker 00: Again, here the key is the voltage source. [00:14:59] Speaker 00: It's got to be this high voltage thing that's powering the transit vehicle. [00:15:03] Speaker 00: That's the key to this invention. [00:15:04] Speaker 00: If the spec makes that clear, the title invention makes that clear, the board simply ignored all of that in reaching its conclusion. [00:15:11] Speaker 00: But most notably, I mean, the biggest error I can see here is this 250 volts that they put into one of the constructions. [00:15:17] Speaker 00: That comes nowhere in the specification. [00:15:20] Speaker 00: The specification teaches the opposite of that. [00:15:22] Speaker 00: Specifications teaches it's only 277 volts and higher that could possibly be considered high voltage. [00:15:28] Speaker 00: The board ignored all that, finding 250 volts was sufficient. [00:15:32] Speaker 00: The reason they did that is because they found a piece of prior art that was put in the petition that talked about 240 volts. [00:15:37] Speaker 00: But you can't construe my claims based on what some other prior art reference defines. [00:15:42] Speaker 00: as a high voltage magnitude. [00:15:44] Speaker 00: I mean, it's clear from reading the final decisions and look at what the board was turning to in reaching this conclusion, it's clear there are many different definitions of high voltage in the art. [00:15:54] Speaker 00: And therefore, it's very important that you read the specifications to know which one of them would make the most sense. [00:15:59] Speaker 00: The board just didn't do that. [00:16:00] Speaker 00: That was the area. [00:16:01] Speaker 00: Let's hear from the other side. [00:16:02] Speaker 00: We'll save everybody time. [00:16:03] Speaker 00: Thank you, Your Honor. [00:16:07] Speaker 03: Good morning. [00:16:09] Speaker 03: May it please the court. [00:16:10] Speaker 03: My name's Greg Wirtz and I'm representing Appellee here at Apogee. [00:16:17] Speaker 03: I believe there's a couple, few issues that have been raised and all of them, I believe either the board got right, have been completely waived by appellants or a homeless owner. [00:16:31] Speaker 03: So starting with the claim construction issues. [00:16:35] Speaker 03: There was two claim construction issues which the appellants raised. [00:16:39] Speaker 03: One is whether the preamble should be limiting. [00:16:42] Speaker 03: The second is what's the construction of a high voltage power source. [00:16:49] Speaker 03: And with regard to the limitation of whether preamble is limiting, the board fully considered we believe the case law and the language got it right. [00:16:59] Speaker 03: It's not limiting. [00:17:00] Speaker 03: It's a statement of intended use where the slight fixture is intended to be used in a public transportation facility. [00:17:06] Speaker 03: Could be used in a commercial building, could be used anywhere else. [00:17:10] Speaker 03: We believe it's clear. [00:17:11] Speaker 03: A statement of intended use is not limiting. [00:17:14] Speaker 03: It wasn't referred to in the body of the claim public transportation facility. [00:17:18] Speaker 03: It wasn't addressed as an issue in the prosecution history. [00:17:22] Speaker 03: Bottom line is it's not a limitation, but even if it was, the board found that [00:17:29] Speaker 03: We will apply it and it's homeless error because that limitation was applied by the board to the prior art. [00:17:35] Speaker 03: And it came up with the same conclusion. [00:17:38] Speaker 03: Roe bears, which was the secondary reference in grounds one and two with real new though, very clearly discloses the use of the light fixture disclosed therein in a not only public transportation facility, but specifically a train station facility, just like the claim. [00:17:55] Speaker 03: So the board said, look, it's not limiting. [00:17:57] Speaker 03: That's right. [00:17:58] Speaker 03: But even if it was, it's still not going to change our position. [00:18:02] Speaker 03: It's harmless error because the same application by using Robert's, that was the reason it was there as a backup clearly makes it invalid as obviousness. [00:18:12] Speaker 03: And similarly in grounds three and four Robert's was the secondary reference. [00:18:16] Speaker 03: So under either interpretation, whether it's limiting, which we think is right, or whether it's as appellants now argue that it's not limiting, it was harmless error because then it goes to the board's factual determination. [00:18:28] Speaker 03: of what's actually disclosed in the prior art. [00:18:31] Speaker 03: And that issue is clear. [00:18:33] Speaker 03: And I don't think there's ever been an argument by appellants that the prior art doesn't disclose that. [00:18:39] Speaker 03: So that's that one claim limitation. [00:18:40] Speaker 03: The second claim limitation was high voltage power source. [00:18:44] Speaker 03: Now similarly, here the board got that right. [00:18:48] Speaker 03: But when it was initially presented to understand the background, in our brief, we didn't initially construe it. [00:18:56] Speaker 03: We didn't believe it needed to, we were in litigation and it wasn't a big issue at the time. [00:19:01] Speaker 03: In Appellant's position paper, when they requested a rehearing, they pushed and submitted their, in the preliminary response request for rehearing, they submitted the position. [00:19:13] Speaker 03: They said a high voltage power source has a particular definition. [00:19:18] Speaker 03: And they limited unduly, we thought, and the board found, to specifically a [00:19:26] Speaker 03: an electrical power source from which public transportation vehicles draw power. [00:19:32] Speaker 03: And in a parenthetical, they said, e.g., by example, the third rail. [00:19:37] Speaker 03: So when they made that position, we responded. [00:19:40] Speaker 03: We said, we think that's wrong. [00:19:42] Speaker 03: It's a preferred embodiment in the spec. [00:19:44] Speaker 03: But the spec does define it. [00:19:46] Speaker 03: And the board found, well, it could be based on the prior art, 250 volts or more. [00:19:51] Speaker 03: We sided to the spec and told the board, when we responded two different times, [00:19:56] Speaker 03: We believe the spec says it's 277 volts or higher would be such a high voltage power source reaching that level of voltage. [00:20:06] Speaker 03: And so what the board said was we're going to apply several. [00:20:11] Speaker 03: We could apply what they did and the law allows them to look to what once filled in the art would be and what's in the prior art. [00:20:17] Speaker 03: The board also said we'll go directly to the spec where it says 277 volts or higher. [00:20:23] Speaker 03: for this particular high voltage power source, and we'll apply that. [00:20:26] Speaker 03: Or we could just use what those skilled in the art would think was plain meaning. [00:20:29] Speaker 03: Under any of those, it's invalid as obviousness under all foregrounds. [00:20:34] Speaker 03: They said the one position we won't take, because it's clearly wrong, is the appellant's position of the construction where they've reached into a preferred embodiment and said the high voltage source must be this [00:20:49] Speaker 03: source, the electrical power source from which public transportation vehicles draw power, e.g. [00:20:56] Speaker 03: the third rail. [00:20:57] Speaker 03: So the board did apply both 277 or above, specifically as the spec teaches, or 250 or above, as they thought was reasonable to look at based on the testimony of those skilled in the art, the experts in the case, or plain meaning. [00:21:13] Speaker 03: And under that application, they said the claims are invalid under all four grounds as well. [00:21:18] Speaker 03: So we think the board got it right. [00:21:21] Speaker 03: And if the board didn't get it right, we submit it clearly would be harmless error. [00:21:25] Speaker 03: It goes to the factual analysis of the disclosure of prior art. [00:21:29] Speaker 03: Appellate men switches to the person of ordinary skill in the art issue. [00:21:33] Speaker 03: And they accuse the board of being an advocate rather than a fact finder or a neutral party here. [00:21:41] Speaker 03: And we believe, first off, [00:21:43] Speaker 03: The board did the right thing and was authorized to do what it did. [00:21:47] Speaker 03: It took the exact definition of a person of ordinary skill in the art that was proposed that appellants are stipulated to. [00:21:55] Speaker 03: And they then said, and such a person would have certain knowledge of problems that existed. [00:22:03] Speaker 03: The board drew based on the factual determinations of what expert testimony was provided, what the specification generally disclosed and then go into detail and what the prior art disclosed. [00:22:14] Speaker 03: So the board said, based on these things, the definition of one skilled in the art would include someone having that particular knowledge. [00:22:22] Speaker 03: At no time, Judge Cunningham, you asked this question, did they challenge it? [00:22:27] Speaker 03: At absolutely no time did appellants ever challenge that. [00:22:32] Speaker 03: That argument was completely waived. [00:22:34] Speaker 03: The board found this in its initial determination. [00:22:38] Speaker 03: Appellants requested a rehearing. [00:22:40] Speaker 03: They never made a comment about the board's determination of one's field in New York. [00:22:44] Speaker 02: What's your response to the page that he pointed you to saying that that was supposed to be a recognition that there was a challenge made of that? [00:22:52] Speaker 03: It was a generalized statement by the patent office. [00:22:55] Speaker 03: It has no citation, no statement whatsoever that they challenged this. [00:23:00] Speaker 03: I looked at it. [00:23:01] Speaker 03: It's at 1843, I believe, in the appendix. [00:23:04] Speaker 03: Was that this citation? [00:23:06] Speaker 03: Let me pull it up. [00:23:08] Speaker 03: 1354, I think. [00:23:12] Speaker 02: I think 1354. [00:23:14] Speaker 03: Yeah, 1354. [00:23:15] Speaker 03: I read it. [00:23:16] Speaker 03: It doesn't say that the appellants made a determination and challenge here. [00:23:19] Speaker 03: What was noticeably absent, Your Honor, is appellants said, well, I can find citations. [00:23:25] Speaker 03: They can't, because he didn't. [00:23:26] Speaker 03: He didn't include in his brief any challenge. [00:23:29] Speaker 03: They accepted. [00:23:30] Speaker 03: that the PTABS had one skilled in the art that had a bachelor of science degree in electrical engineering or an equivalent and a couple years experience in the industry. [00:23:40] Speaker 03: And they said, and would have knowledge of these type of problems based on expert testimony and the prior art, et cetera, and the specifications lack of detail. [00:23:50] Speaker 03: At no time did they tell the board in its request for a hearing, in its response to the decision, in its sir reply, even at the oral argument. [00:23:59] Speaker 03: At no time did Mr. Williams or anyone in that firm put in writing or make an argument. [00:24:05] Speaker 03: We take issue with the board's finding of a personal skill in the art. [00:24:08] Speaker 03: So I know he did a citation. [00:24:10] Speaker 03: I don't believe it stands for what he said. [00:24:11] Speaker 03: It was a very generalized statement. [00:24:14] Speaker 03: And in any event, although I think this is very clearly waived for the reasons I explained, there's just no record otherwise, even if it wasn't waived somehow, [00:24:25] Speaker 03: The board was authorized to do what it did. [00:24:28] Speaker 03: It acted as a fact finder. [00:24:30] Speaker 03: And it said, the parties both agree on this point came from the experts, came from counsel to bachelors of science, electrical engineering or equivalent, couple years of industry knowledge and [00:24:45] Speaker 03: would have knowledge of these certain things. [00:24:47] Speaker 03: That's what the board's supposed to do. [00:24:49] Speaker 03: It went into the facts. [00:24:50] Speaker 03: It went into the prior art that was cited. [00:24:52] Speaker 03: It went into the specific testimony of Dr. Karlocheck, their expert. [00:24:57] Speaker 03: It went into the specification and said, we don't find that these things are detailed out. [00:25:01] Speaker 03: So for any of these reasons, it was there. [00:25:04] Speaker 03: So it wasn't challenged, and it was supported by facts. [00:25:07] Speaker 03: It's substantial evidence. [00:25:09] Speaker 03: It's more than reasonable. [00:25:10] Speaker 03: We think, frankly, it's quite accurate. [00:25:12] Speaker 03: And that was the whole issue. [00:25:14] Speaker 01: I saw their objection as trying to say, you have defined this person, not as a person of ordinary skill, but as a person of extraordinary skill. [00:25:26] Speaker 01: And therefore the wrong standard was applied. [00:25:30] Speaker 03: Yeah. [00:25:30] Speaker 03: I believe your honor, there was an argument. [00:25:32] Speaker 03: You're correct. [00:25:32] Speaker 03: I think I saw that in the briefs as well. [00:25:34] Speaker 03: And I don't believe the board did that at all. [00:25:36] Speaker 03: I think what the board did is exactly what [00:25:40] Speaker 03: it's supposed to do it went into determinations of what one skilled in art would know in making these decisions of validity on obviousness. [00:25:49] Speaker 03: And the board used quite a substantial amount of references to facts, both the prior art [00:25:55] Speaker 03: the spec and expert testimony. [00:25:57] Speaker 03: So I don't believe, while they made the argument, I don't believe it applies. [00:26:01] Speaker 03: I don't think the board exceeded any authority. [00:26:04] Speaker 03: I think the board did perfectly what the board should do and go very deeply into the facts that were at issue and determine the type of knowledge that one skilled in New York would have. [00:26:16] Speaker 03: So I believe that was proper. [00:26:17] Speaker 03: And also, Your Honor, as I said, in addition to the properness and the factual support, it just simply wasn't argued at any point in time. [00:26:26] Speaker 03: They wanted a shot at that. [00:26:27] Speaker 03: And when it didn't go their way, they're saying, oh, let me see now what I could argue on this issue. [00:26:32] Speaker 03: And that's what they're trying to do in terms of saying that the person of ordinary skill in New York was something [00:26:39] Speaker 03: are improperly determined. [00:26:41] Speaker 03: If they had an issue and they raised it with the board, it could have been addressed below, but they didn't. [00:26:46] Speaker 03: And this court would have had a record on which it could have addressed it. [00:26:48] Speaker 01: It does seem strange to say that an ordinary electrician would know you can attach your LED to the third rail and not have it blow up in your face. [00:26:59] Speaker 03: Yeah. [00:27:00] Speaker 03: I don't believe your honor, the board went that far. [00:27:02] Speaker 03: I think what the board said on that was, [00:27:06] Speaker 03: I could read from the appendix at 401 and 402 in the initial determination. [00:27:13] Speaker 03: What the board said was that someone who was skilled in the art with this educational degree and two or more years of work experience in designing lighting fixtures and the same amount working with LED sources, well, that was undisputed. [00:27:26] Speaker 03: It was much more detailed. [00:27:27] Speaker 03: It said that person, based on the facts of record, they said, would have sufficient knowledge of experience [00:27:35] Speaker 03: not of connecting it specifically to a third rail. [00:27:38] Speaker 03: What they said, they'd have knowledge of prior problems such as equipment and techniques to provide a power system to drive light sources in a high voltage environment, such as a train environment. [00:27:50] Speaker 03: That's all they said there. [00:27:51] Speaker 03: And to account for challenges that may occur in a high voltage environment, such as voltage spikes up to three kilovolts, [00:27:59] Speaker 03: grounding issues, et cetera. [00:28:01] Speaker 03: They set a few other minor points. [00:28:03] Speaker 03: And on that note, what they did is they cited to a record of testimony and prior art and the specification, but not the specificity that counsel's arguing that once Gilda New Art would know specifically how to connect it to a third rail and a train station, the board didn't say that at all. [00:28:21] Speaker 02: So your opposing counsel takes issue with the [00:28:24] Speaker 02: High voltage power source claim destruction, specifically the reference to 250 volts. [00:28:29] Speaker 02: Can you respond why you think that is appropriate or more so expand on the fact that there were these multiple, it looks like, constructions that the board was contemplating? [00:28:40] Speaker 03: Yes. [00:28:41] Speaker 03: So when the board came and did that and they take issue, [00:28:46] Speaker 03: At that time, the board was responding to the appellant's argument that it had to be limited. [00:28:52] Speaker 03: They were reading it from the spec to this electrical power source from which public transportation vehicles draw power, e.g. [00:29:01] Speaker 03: the third rail was the thing. [00:29:02] Speaker 03: The board said no. [00:29:04] Speaker 03: one would have, based on the record, knowledge of the prior art as well. [00:29:08] Speaker 03: And the specification is much broader than that. [00:29:11] Speaker 03: It doesn't say it's limited to that. [00:29:12] Speaker 03: That was one example. [00:29:13] Speaker 03: So the board pointed to certain prior art knowledge, and they cited cases how they could rely on that. [00:29:19] Speaker 03: Then the board said, but they hear, now that's that issue, also the specification specifically disclosed a source of power that's 277 volts or higher. [00:29:30] Speaker 03: And the board, that was found in the patent specification, Appendix 185. [00:29:36] Speaker 03: And the board made in its determination of the claim construction that it could include that as well on Appendix 58 [00:29:47] Speaker 03: What the board said was, under that construction, and they explained where that's specifically in the specification of the citation to that, it's also invalid over the prior art. [00:29:58] Speaker 03: So they said it could be based on the knowledge of the art, because there's record evidence of that. [00:30:04] Speaker 03: It could also be this source of power that's 277 volts or higher. [00:30:09] Speaker 03: We're applying both. [00:30:10] Speaker 03: Because that's exactly what the specification says. [00:30:14] Speaker 03: And under either of those, they went through an analysis and said it would be invalid over the prior art. [00:30:22] Speaker 03: So they didn't limit it only to the 250 volts or higher from the art. [00:30:27] Speaker 03: They applied both very clearly in the record. [00:30:31] Speaker 02: So your argument potentially is that we can affirm in light of the fact that it wasn't just this 250 volt construction. [00:30:40] Speaker 02: But there were also these other constructions that were also examined. [00:30:43] Speaker 02: I don't know if I'm stating it accurately. [00:30:45] Speaker 02: Yes. [00:30:46] Speaker 03: You said it, Your Honor, very accurately. [00:30:48] Speaker 03: And I'm just looking. [00:30:50] Speaker 03: I might have miscited the appendix page. [00:30:54] Speaker 03: I think the appendix page I had there was for the [00:31:01] Speaker 03: preamble limitation, there was a different appendix site, which I'll get for you in just a moment, where they said exactly that. [00:31:08] Speaker 03: The point's the same, that we're applying three different definitions here of constructions and appellants invalid under every one of them, whether it's 250 or higher, 277 or higher. [00:31:21] Speaker 03: or plain meaning. [00:31:24] Speaker 03: And that was out of appendix 20. [00:31:25] Speaker 03: What they said they would not do is the improper construction, which they thought was clearly wrong, which was to read in this from the spec that the high voltage power source had to be limited to this specific source from which public transportation vehicles draw power, e.g. [00:31:43] Speaker 03: to third rail. [00:31:45] Speaker 03: And lastly, your honor, just briefly touch on it, because I know I'm just running out of time here on the applicants admission of priority issues. [00:31:53] Speaker 03: Number one, when below, the only issue they ever raised with the board was whether or not we could properly combine [00:32:02] Speaker 03: the applicants admission of prior art, which we did in grounds three and four, but not in grounds one and two. [00:32:07] Speaker 03: And they never raised this issue about the scope being wrong or what we said. [00:32:11] Speaker 03: They never argued that they argued that. [00:32:13] Speaker 03: So we contend here in our papers, and we think it's clear that they waived an argument now, just like on the personal skill in the art. [00:32:20] Speaker 01: I better tell you, I am not sympathetic to waivers. [00:32:24] Speaker 01: The board, the PTAB, [00:32:26] Speaker 01: is supposed to get it right. [00:32:28] Speaker 01: And when a new argument comes up in the course of the back and forth, they have an obligation to do their best to get it right. [00:32:39] Speaker 01: So just don't waste your time on waiver. [00:32:43] Speaker 03: Thank you, Your Honor. [00:32:44] Speaker 03: So on that note, I was just going to mention that the board did get this right. [00:32:49] Speaker 03: They very clearly did. [00:32:51] Speaker 03: They properly determined for sure AAPA. [00:32:55] Speaker 03: OK, was based on facts. [00:32:57] Speaker 03: They cited directly to the prosecution history. [00:33:01] Speaker 03: And they said, in the prosecution history of December 48 patent, there was an admission by the applicant's counsel. [00:33:06] Speaker 03: So what the board said the fact. [00:33:08] Speaker 03: Citing to the specification and said, applicants argued when they were trying to overcome the Prior Art Smith reference. [00:33:15] Speaker 03: And they do the citation. [00:33:17] Speaker 03: It's in the appendix A. [00:33:27] Speaker 03: They cite to the appendix at 1918, and that was the argument where the appellant's counsel, when they were getting this patent, said the prior art's anticipated by Smith. [00:33:38] Speaker 03: And they specifically said, the rejection cites the existing power sources in the public transportation facilities as leading to preamble limitations. [00:33:47] Speaker 03: This was their counsel during prosecution. [00:33:49] Speaker 03: The applicant notes that this prior art is described in applicant specification at page 5. [00:33:55] Speaker 03: That's Appendix 2068. [00:33:57] Speaker 03: It's in the 748 spec. [00:33:59] Speaker 03: And there, they said, we have very clear support that the AAPA we're relying on was admitted by them, what's in the patent, as it was in the knowledge. [00:34:11] Speaker 03: And then they went on and said, also, we cited the expert of Dr. Karlocheck admitted that in a public transportation facility, a high voltage power source, Your Honor, and a standard voltage power source was known. [00:34:23] Speaker 03: So not only was it their admission, not only is it, they cite to their own 748 patent and the application, there was a testimony that was relied on and the board then properly relied, your honor, which applies to grounds three and four. [00:34:38] Speaker 03: We didn't use AAPA in one or two, it would be harmless error. [00:34:43] Speaker 03: And there was seven other motivation factors the board used in its opinion to say why Real Muto and Roberge would invalidate it. [00:34:50] Speaker 03: So although the board could have relied on AAPA, there was seven factors in addition of motivation for one and two. [00:34:56] Speaker 03: But in three and four, what the board said was it was proper to use a combination with the Afghans admitted prior art because they acknowledge it during the prosecution. [00:35:07] Speaker 03: It's in the specification and it was clearly there. [00:35:10] Speaker 03: And therefore the board got it right. [00:35:13] Speaker 03: And they very clearly got it right based on applicant's own admission, the spec and the record and other facts, which is a substantial evidence standard. [00:35:20] Speaker 03: And lastly, as I mentioned, the harmless errors, it doesn't apply to grounds one or two anyway, it's not needed. [00:35:27] Speaker 03: Their whole argument now seems to be the claim limitation has to include connecting to a third rail. [00:35:35] Speaker 03: And the board addressed that at length as well. [00:35:37] Speaker 03: It does not. [00:35:38] Speaker 03: And even if it did. [00:35:40] Speaker 03: They felt, I think you indicated earlier, Your Honor, that there's a pretty close reference and they found it would be obvious based on those facts. [00:35:48] Speaker 03: Your Honor, I have nothing further and thank you all for your time this morning. [00:35:52] Speaker 01: Any questions? [00:35:53] Speaker 01: Anything else for counsel? [00:35:55] Speaker 01: Okay, I think we have the argument. [00:35:57] Speaker 01: Thank you. [00:35:58] Speaker 01: Mr. Williams. [00:35:59] Speaker 00: Thank you, Your Honor. [00:35:59] Speaker 00: Let me begin with the last point because it's clearly false to say that the board did not rely on AAPA for ground one and two. [00:36:05] Speaker 00: It absolutely did and it's because that was Petitioner's own theory. [00:36:08] Speaker 00: It turned to page exit. [00:36:10] Speaker 02: But if you look at the chart that's in there, it says AAPA for grounds three and four, like the summary chart. [00:36:17] Speaker 02: Do you know what I'm talking about in each of the decisions? [00:36:19] Speaker 02: So I want more on why you're saying that it would be in grounds one and two. [00:36:23] Speaker 00: I see it's important. [00:36:23] Speaker 00: I'm absolutely going to give it to you. [00:36:25] Speaker 00: Page A45. [00:36:27] Speaker 00: So the answer is motivation. [00:36:28] Speaker 00: That's the answer. [00:36:29] Speaker 00: Page A45, which is the board's final written decision. [00:36:32] Speaker 00: This is their [00:36:34] Speaker 00: This is the board's analysis of Realmuto and Roberge. [00:36:38] Speaker 00: This is ground one. [00:36:39] Speaker 00: This is the ground that underlies all of the grounds of patentability in the petition. [00:36:49] Speaker 00: And I can read it to you, Your Honor, because I have it and I think it's very clear. [00:36:54] Speaker 00: This is under the heading, again, page 845, this is the board heads this support for motivation to combine Realmuto and Roberge. [00:37:01] Speaker 00: And then the second full paragraph. [00:37:03] Speaker 00: says, petitioner properly relies on the AAPA as substantial evidence that a person of ordinary skill in the art would have known that a public transportation facility has a high- I don't see 845 in the joint appendix. [00:37:14] Speaker 02: I don't know if my appendix is- Appendix? [00:37:16] Speaker 00: Oh, sorry. [00:37:16] Speaker 00: Just appendix page 45? [00:37:17] Speaker 00: Sorry. [00:37:18] Speaker 00: Am I saying 845? [00:37:19] Speaker 02: Oh, you're saying 25. [00:37:20] Speaker 02: 45, yes. [00:37:21] Speaker 00: Appendix page 45. [00:37:22] Speaker 00: I'm sorry. [00:37:23] Speaker 02: OK, I put an 8 in front of them. [00:37:24] Speaker 02: I have no idea where you are. [00:37:27] Speaker 00: Now I see the confusion. [00:37:28] Speaker 02: OK. [00:37:28] Speaker 00: Appendix page 45. [00:37:30] Speaker 00: Got it. [00:37:32] Speaker 00: OK, so here it is. [00:37:32] Speaker 00: Petitioner. [00:37:33] Speaker 00: This is the middle of the page. [00:37:34] Speaker 00: Petitioner properly relies on the AAPA as substantial evidence that a person of ordinary skill in the art would have known that a public transportation facility has a high voltage power source and a traditional 110 to 277 volt power source. [00:37:48] Speaker 00: And then they go on. [00:37:49] Speaker 00: There is no doubt. [00:37:51] Speaker 00: And I read this to you in my opening section, but I'm going to read it to you again. [00:37:56] Speaker 00: It's so important. [00:37:57] Speaker 00: Appendix page 1354. [00:37:58] Speaker 00: This is the petitioner's reply brief. [00:38:02] Speaker 00: addressing the same ground, says AAPA was properly relied on, sorry, AAPA was properly cited as evidence of general knowledge and motivation to combine, and shows that POSA would know that a public transportation facility at the time would include a standard voltage source and a high voltage source from which public transportation vehicles draw power. [00:38:22] Speaker 00: And my whole point of my argument here today is the petitioner's theory from the outset, as we understood it as the patent owner, because that's what they told the board, was that we're going to combine real Muto with this light source, because real Muto has multi-input power source, can accept multi-input power sources, and a person born near a skill in the art would know that [00:38:42] Speaker 00: In a public transit facility, there are multiple power sources, including one from which the multiple transit vehicles draw power, and you would have connected those things to a real meal tool. [00:38:51] Speaker 00: That was their motivation to combine. [00:38:53] Speaker 00: The problem is the board dispensed with that. [00:38:55] Speaker 00: As we went through earlier, the board on multiple occasions relied on the fact that there were power sources other than the third rail. [00:39:02] Speaker 00: We talked about appendix page 43. [00:39:04] Speaker 00: 46, 47, 48, they're replete with instances where the board said, oh, no, you don't have to connect to the third rail. [00:39:11] Speaker 00: The petition's theory is you can connect to anything else that's a high voltage power source in this facility. [00:39:15] Speaker 00: That was not their theory. [00:39:16] Speaker 00: If that was the theory, we would have had a much different case below. [00:39:19] Speaker 00: The evidence would have been presented much differently. [00:39:21] Speaker 00: And if that's the theory that I'm now supposed to be responding to, then I ask you to send the case back so we can actually present evidence on that theory. [00:39:27] Speaker 00: They presented evidence that you'd connect to the third rail. [00:39:30] Speaker 00: We show that you wouldn't. [00:39:31] Speaker 00: And it's undisputable that you wouldn't. [00:39:33] Speaker 00: There's no evidence in this case that you would ever have done that. [00:39:36] Speaker 00: No one had the level of skill to do that. [00:39:38] Speaker 00: Now, again, the board found that person has the level of skill to do that in their post-finding. [00:39:43] Speaker 00: They did that based on a just completely meritless sentence that says, because the spec doesn't teach you how to do this with no citation. [00:39:50] Speaker 00: That was their whole reasoning. [00:39:51] Speaker 00: The spec has a whole column that explains how you do this that they just ignore. [00:39:54] Speaker 00: So that can't be right. [00:39:56] Speaker 00: I did want to just lastly, in my remaining time, which I see I'm out of, [00:40:00] Speaker 00: point to some of the places where we actually raised the issue about, oh, by the way, I should say the submitted prior work thing. [00:40:05] Speaker 00: There was no point I could have objected to that because it wasn't until the final written decision that the board switched the grounds on me. [00:40:10] Speaker 00: Up until the final written decision, the board had been properly, as we understood it in the institution decision, analyzing the grounds, which was based on connecting to the third rail. [00:40:18] Speaker 00: Only in a final written decision do we see these multiple instances where you no longer have to connect to the third rail. [00:40:23] Speaker 00: That's complete change of the grounds. [00:40:25] Speaker 00: And so that's why I didn't object to it any time before that. [00:40:28] Speaker 00: As to the definition of a POSA, however, Your Honor, which I don't mean to point. [00:40:33] Speaker 00: You had asked me, Judge Cunningham, about places where we had raised that issue to the board. [00:40:37] Speaker 00: I just want to make sure I pointed out a couple of them to you. [00:40:40] Speaker 00: I think there are many. [00:40:42] Speaker 00: Starting at page 502 of the appendix, this is in our POR. [00:40:46] Speaker 00: We say, second full paragraph, contrary to petitioner and its experts' opinions, the configuration of the power supply of the 748 to accept backup power source at or above 600 volts would not have been within the knowledge of a POSA. [00:40:58] Speaker 00: We point out some testimony from their expert on that point. [00:41:02] Speaker 00: Then, if we go to page 543 of the appendix, we say, there is no suggestion anywhere in the prior art relied upon by the petitioner that a POSA working on LED lighting would consider powering LED with a power source, such as with such a power source, or that there would be any motivation for such a person to do so with an expectation of success, as discussed above. [00:41:26] Speaker 00: Dr. Bretschneider, that's their expert, confirms the poster would not attempt to power a fixture from the third rail because the poster would not have been able to overcome the technical problems pursuing that path. [00:41:38] Speaker 00: So we objected numerous times. [00:41:39] Speaker 00: We told the board, none of that is in the level of ordinary skill in the art. [00:41:44] Speaker 00: No one in ordinary skill in the art would have done the thing that the petitioner says you would do that supported their petition. [00:41:49] Speaker 00: And because there was absolutely no evidence of that, the board clearly erred in finding otherwise. [00:41:56] Speaker 00: Unless the court had any other questions. [00:41:58] Speaker 01: Thank you. [00:41:59] Speaker 01: Thanks for your counsel. [00:42:01] Speaker 01: The case is taken under submission.