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The first case is appeal number 22-1874, NRAE Innovate Medical LLC.

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Counsel for Appellant is Mr. Bahu.

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Did I pronounce that correctly?

[00:00:12] Speaker 00:
Yes, Your Honor.

[00:00:13] Speaker 02:
OK.

[00:00:14] Speaker 02:
And you reserve five minutes for rebuttal.

[00:00:15] Speaker 00:
Yes, Your Honor.

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You may proceed.

[00:00:19] Speaker 00:
May it please the court.

[00:00:20] Speaker 00:
My name is AJ Bahu, and along with Matt Cox at council table, we represent Innovate Medical LLC.

[00:00:27] Speaker 00:
Your Honors, this is a case about a five-way obviousness rejection where the examiner impermissibly uses hindsight bias and improperly uses the inventor's claim as a roadmap to reject the element.

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It gathers too many disparate references to apply to this combination.

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Are you partially arguing that the number of references somehow means that should not be found unpatentable?

[00:00:54] Speaker 02:
Is that what you're partially arguing?

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Not alone, your honor, but when taken in combination and looking at the references, we will go into the details of why there's no motivation to combine.

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So the motivation to combine, as this court's president says, and in re-invasive is, it must be thorough in searching.

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The opinion from the board must state its own reasoning.

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It must not just mention the examiner's arguments and the appellate's arguments, and then say, in conclusion, we agree with the examiner.

[00:01:25] Speaker 04:
But you're not saying that the board can't adopt the examiner's rationale as its own, are you?

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No, Your Honor.

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We're not saying that.

[00:01:33] Speaker 04:
So if they say, we agree with the examiner, they basically adopted the examiner's rationale, and that should pass muster, assuming the examiner's rationale is sound.

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Assuming the examiner's rationale is sound.

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OK.

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It should, but it also needs to stay in the opinion, in the four corners of the opinion, a reason and a motivation to combine for all the references.

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And that's where the five becomes important because looking Takazawa, the board failed in its effort to explain why Takazawa should be combined with any other reference.

[00:02:06] Speaker 03:
Where did you specifically argue that there was an issue with motivation to combine Takazawa?

[00:02:12] Speaker 00:
Yes, Your Honor.

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So we argued it at three different spots.

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Weren't those just generally, we don't agree that there is motivation to combine?

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Was there anything specific to Takizawa?

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Yes, Your Honor.

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Turning to A, 872 through 77.

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872 through 77?

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Yes, Your Honor.

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So throughout the pages here,

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There's an argument to the office that there should be no motivation to combine all five references, including Takazawa.

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For example, on 877, heading B, Planar 1, Planar 2, Kunin, Takazawa, and Wongs.

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I see that you listed it, but what do you say is specifically the problem or the failing regarding Takazawa?

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Because the argument you're facing in part is you forfeited this argument.

[00:03:10] Speaker 00:
Yes, your honor.

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With regard to Takazawa turning to A75, Takazawa's... A75 or 75?

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A as in Alpha 75.

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Yes, your honor.

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Takazawa is opposite of the teachings of the 607 patent.

[00:03:28] Speaker 03:
At column 10... Okay, but where did you argue that?

[00:03:31] Speaker 00:
Yes, your honor.

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So we have at several places argued to the board A111.

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1101, I'm sorry, 1101.

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So we argued to the board at the bottom of page 20 there, appendix 1100.

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1100 and 1101?

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Yes, Your Honor.

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The argument continues on there.

[00:03:58] Speaker 02:
I'm not sure I'm seeing where you made that argument just following up on Judge Stark's question.

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Can you tell us where specifically on these pages you're pointing to?

[00:04:05] Speaker 00:
Yes, Your Honor.

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We argue that Takazawa discloses a backup battery 18 as a backup battery power supply.

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And we cite Takazawa column four, lines nine.

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And we say, Takazawa, unlike the 607 patent, does not characterize the backup battery as resident or mounted in the electronic apparatus.

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Takazawa discloses the backup battery.

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18 is removable.

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But where do you say lack of motivation to combine?

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That's all in a section where you're trying to argue that Takazawa doesn't even disclose the claimed element.

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Yes, Your Honor.

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And over on the next page, Appendix 11.02, the heading there, the claimed invention would not have been obvious to person of skill in the art because the combinations of the cited reference failed to teach a valid motivation to combine the references.

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Maybe I'll ask his question just a little bit differently.

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What would you say is your best place to point us to in terms of where you made this argument on motivation to combine?

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I know you've got various pages you've identified to Judge Stark, and I think in response to my questions.

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But if you could give me your best one, that would be great.

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Yes, Your Honor.

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I believe those three citations that we've talked about are our best statement to say that we did argue to the board that there's no motivation to combine all the references, and we argued that there's no motivation to combine Takazawa.

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And specifically, the substance of it, as you can see, as I cited two pages back, Takazawa teaches something different than the 607 patent.

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Takazawa, at A75, column 10, finds 60 through 64.

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And that's at the bottom on the right-hand column, Takazawa teaches,

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And this is starting at line 60.

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Because lithium batteries are commonly used for backup batteries, backup battery 18 must be replaced when discharged.

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And in Takazawa, it teaches something opposite of what the 607 patent covers.

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So we turn now to the 607 patent, and we see at A29 in figure 14, item number 338,

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We teach that the backup battery is trickle-charged, the backup battery from the main battery.

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Likewise, when we go to A39, column 14, line 7 through 9, the patent teaches that the resident backup battery must be, or maybe, recharged.

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OK?

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But what line was that again?

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Yes, Your Honor.

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That is on appendix 39, column 14, line 7 through 9.

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Backup battery 106 may be recharged by the electrical connection, electrically connecting the backup battery 106 with a battery assembly 16.

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That's important because as taught in the object of the invention, it is focused on the fact that the main batteries, the 16A and 16B, when they're inserted, recharge the backup battery, the resonant backup battery in our patent.

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And that's opposite of what Takazawa teaches.

[00:07:31] Speaker 04:
Your submission with respect to the resident battery is that the backup battery is resident as in it is never removed regardless.

[00:07:41] Speaker 00:
Your honor, I don't think we'd go that far with never removed.

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If for some reason it's malfunctioned, it would be removed under a repair circumstances, but not under the normal use in a medical

[00:07:53] Speaker 04:
So you're saying repair would be all right as a purpose for removing it, but not recharging?

[00:08:01] Speaker 00:
I'm saying that repair would be understood that you would have to send it into the shop.

[00:08:06] Speaker 04:
But that would be consistent with resident.

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In other words, this is what I'm getting at.

[00:08:10] Speaker 00:
No, Your Honor, we disagree.

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And so if we turn to, and this relates now, switching over from motivation combined to the claim construction of resident.

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So we see that the board on A16,

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construed the term resident as a backup battery that may reside on a device for a length of time and being discharged and then replaced.

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Okay.

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Yes, your honor.

[00:08:34] Speaker 04:
Yeah, go ahead.

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And so what the board got wrong in its construction is it actually got the word replaced from Takazawa.

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And that's wrong.

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And that's where the citations I've mentioned to the poor.

[00:08:45] Speaker 04:
But if it malfunctions and is replaced, would that not come within

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Your understanding of what resident means?

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If it malfunctions and needed to be sent into the shop.

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Replaced.

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Or just replaced with a new one.

[00:08:59] Speaker 00:
Yes, your honor.

[00:09:01] Speaker 04:
You would still say that battery was resident on the device, right?

[00:09:08] Speaker 00:
Yes, your honor.

[00:09:09] Speaker 00:
We would say it's resident.

[00:09:09] Speaker 04:
But your distinction is between it's resident if it needs to be removed for repair or malfunction.

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but not resident if it needs to be replaced because it's discharged.

[00:09:25] Speaker 04:
That's the distinction you're drawing.

[00:09:29] Speaker 00:
Your honor, we recognize that if it malfunctions, it would need to be sent into the shop to be replaced.

[00:09:34] Speaker 04:
And that would be consistent with your definition of resident, as I understand what you're saying.

[00:09:38] Speaker 00:
No, your honor.

[00:09:38] Speaker 00:
I think what we're saying is different in that if the battery under normal operation, so we got a mobile workstation in a medical environment, and the 607 patent teaches

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It's critical for the healthcare provider to continue that service, right?

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And so if the battery is getting low in our invention, the battery 16A is removed from the holster 32 and a new fresh battery 16B from figure one is inserted in the holster.

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During that brief amount of time where service needs to continue is the resident backup battery is providing power.

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And so then when you insert the new battery 16B, it recharges that resident backup battery.

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So under normal use in the healthcare environment, the point is the resident stays on there continuously long-term until it breaks down.

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So again, I thought that my question was directed to exactly that distinction between something that stays resident for a long time, but ultimately may need to be replaced.

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versus something that stays there for a less long time in that it stays until it's discharged and then gets recharged or replaced.

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That's your distinction, right?

[00:10:55] Speaker 00:
Yes, Your Honor.

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That is a distinction.

[00:10:57] Speaker 04:
So you're saying resident means it will take a longer time before it needs to be replaced.

[00:11:04] Speaker 00:
Yes, Your Honor.

[00:11:05] Speaker 00:
If you interpret it that way, I think that that's... Well, isn't that the way you're interpreting it?

[00:11:09] Speaker 04:
Because that's what I took away from your answer in my last question.

[00:11:13] Speaker 00:
What we're saying is that we understand that if it breaks down or malfunctions, it would need to be sent into the shop to be replaced.

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The important thing... What is your argument that was wrong with the construction that the board adopted?

[00:11:24] Speaker 00:
Yes, Your Honor.

[00:11:25] Speaker 00:
Thank you for asking.

[00:11:26] Speaker 00:
That is actually on A16, the board could have changed one word, and this is why it's very critical.

[00:11:33] Speaker 00:
It committed a cardinal sin of claim construction.

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It did not look to the 607 patent specification to interpret resident.

[00:11:42] Speaker 02:
You said it could change one word.

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Can you tell us what that one word is?

[00:11:45] Speaker 00:
Yes, Your Honor.

[00:11:46] Speaker 00:
The last word, when it says replaced, the board got that from Takazawa, which should not be used in claim construction.

[00:11:53] Speaker 03:
What should it be?

[00:11:55] Speaker 00:
It should be recharged.

[00:11:56] Speaker 00:
It should be recharged based upon the citations that I've mentioned, A75, column 10, 60 through 64.

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Our patent teaches when our resident backup battery is discharged, it is recharged.

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And that is why the one word should be replaced on the claim construction.

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It is a cardinal sin to interpret the claim terms in a way that is inconsistent with the patent specification.

[00:12:29] Speaker 00:
So importantly as well, Takazawa

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teaches, it's an electroschematic diagram.

[00:12:35] Speaker 02:
And so when it discloses... You are definitely into your rebuttal time.

[00:12:39] Speaker 02:
Do you want to save some of it?

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Do you have any final words that you want to say before maybe giving the other side a chance to speak?

[00:12:45] Speaker 00:
I'll reserve my time for rebuttal, thank you.

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And if there's no further questions at this time.

[00:12:55] Speaker 02:
Good morning, may it please the court?

[00:13:10] Speaker 01:
Substantial evidence here supports the board's findings that

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obvious over the prior arc.

[00:13:16] Speaker 01:
And in particular, with the reference that was just being discussed as it relates to Takazawa and this issue about how the word resident is construed, I think Innovate's counsel kind of answered the question for this court in the sense that Innovate's counsel admitted that the backup battery can be removed, whether it be to recharge or to be

[00:13:40] Speaker 01:
taken out for repair, if you look at the claims, there's nothing in the claims that limit it to repair or discharge.

[00:13:46] Speaker 01:
It just says the word resident.

[00:13:47] Speaker 01:
Resident on a mobile workstation.

[00:13:50] Speaker 01:
And what the board said was that Innovate's claim construction was too narrow to suggest that there couldn't be any removal of the backup battery.

[00:13:58] Speaker 01:
And in fact, if you look at the claim language and you look at the specification, there's nothing that says that this backup battery cannot be removed, that there's some preclusion here.

[00:14:09] Speaker 01:
There's no temporal limitation on what the word reside means.

[00:14:12] Speaker 01:
It simply means to be on the mobile workstation.

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And Taco's Hour satisfies that limitation.

[00:14:18] Speaker 01:
And so there was nothing wrong with the way that it was construed by the board, and finding that that reference teaches that was the correct finding.

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In addition, this idea about the motivation to combine, the board had suggested it was waived.

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And I just want for the court to understand if, for any reason, the court disagrees with that, there was a motivation to find by the examiner.

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And the board is able to adopt that motivation under our regs.

[00:14:47] Speaker 04:
Did the board actually adopt that particular finding by the examiner?

[00:14:53] Speaker 01:
Well, the board, under the regulation 37 CFR 4150A1, any rejection that is not specifically called out as being rejected is affirmed.

[00:15:05] Speaker 01:
So to answer your question, yes, because the board basically adopts the findings of the examiner under that regulation unless they specifically say otherwise.

[00:15:14] Speaker 03:
But what if we were to find that enough was done to preserve the issue?

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Wouldn't that mean that Innovate did raise the issue with the board, and therefore the board can't rely on that regulation to adopt the examiner implicitly?

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The board would have to do something express to adopt the examiner's reasoning on this point.

[00:15:36] Speaker 01:
I'm not sure, respectfully, if that's correct.

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If they did raise that issue, which they didn't, the board could have said, and we adopt the examiner's finding.

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It wouldn't have had to make some extra step.

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They could have said, no.

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As the examiner said on page and then point to where the examiner found, we agree with the examiner.

[00:15:56] Speaker 03:
But they didn't even do that.

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The board didn't even do that here.

[00:15:59] Speaker 01:
The board didn't do that here because the issue was waived.

[00:16:01] Speaker 03:
And I get that.

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I think the waiver argument may be a strong one.

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But I guess my question is, what if we didn't find the waiver?

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If we weren't persuaded on that, don't we have to remand?

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Because I don't think you can point to anywhere the board actually says even, we agree with the examiner on this point.

[00:16:19] Speaker 01:
But I don't think I have to, respectfully, Your Honor.

[00:16:21] Speaker 01:
I think if you disagree with us on the waiver, I don't think you'd need to remand for that reason.

[00:16:25] Speaker 01:
I think you can rely on the fact that the board is adopting the examiner's finding.

[00:16:30] Speaker 01:
I mean, the examiner talked about a motivation to combine in more than one location.

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It was repeating itself.

[00:16:35] Speaker 01:
It wasn't finding multiple motivations.

[00:16:38] Speaker 01:
But it did it on several different pages.

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And I feel like

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That's a very strong... But never does it specifically about Takazawa, right?

[00:16:47] Speaker 03:
That's... If that's wrong, yeah, show us.

[00:16:50] Speaker 01:
Yeah, if you start, if you could please turn to APPX 1017 to 1018.

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I'm going to read from the bottom of 1017.

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It says, to that end, a person of border-scale in the art would have been prompted to supply the mobile workstation with a resident backup battery to prevent data loss.

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when both of the battery packs were discharged or disconnected.

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And then it goes on.

[00:17:16] Speaker 01:
So that's a step of, I don't want to read the whole thing, but it's quoting says, such as claimed would have been obvious to those ordinary skill in the art.

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That's the motivation for Takazawa.

[00:17:27] Speaker 01:
And the board says that again on APPX 1036,

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1040, 1045, 1052, 1057.

[00:17:33] Speaker 01:
Can you run those by us again?

[00:17:39] Speaker 01:
Sure.

[00:17:40] Speaker 04:
Just so that we have them.

[00:17:41] Speaker 01:
Yes.

[00:17:42] Speaker 01:
So I'll start at the top.

[00:17:43] Speaker 01:
I apologize.

[00:17:44] Speaker 01:
So the board, I'm sorry, the examiner said it again.

[00:17:46] Speaker 01:
At 1036, 1040, 1045, 1052, 1057, 1063,

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And then in the examiner answer at 1161.

[00:18:01] Speaker 03:
To be clear, those are all examiner statements, not the board.

[00:18:04] Speaker 01:
Yes.

[00:18:05] Speaker 01:
I'm sorry.

[00:18:06] Speaker 01:
It was the examiner and the board adopting those.

[00:18:08] Speaker 01:
And it's the same statement.

[00:18:10] Speaker 01:
The examiner is repeating herself.

[00:18:13] Speaker 04:
Just as a general matter, is it fair to say that the examiner's answer can do the double duty as both an answer in the litigation and also a finding by the examiner if there's no separate finding by the examiner?

[00:18:29] Speaker 01:
if there's no separate finding.

[00:18:30] Speaker 04:
In other words, if the examiner in the course of the examination never actually said, I find X, but in the examiner's answer, when an appeal is taken, says X is the case, does that count for purposes of determining that the examiner has made a finding that the board can accept?

[00:18:52] Speaker 04:
Or that it's deemed to be accepted when the board doesn't reject it?

[00:18:58] Speaker 01:
For starters, I would say that didn't happen here.

[00:19:00] Speaker 01:
But I would say, I think that because there's an opportunity for the applicant to respond, as I stand here today, I'm not sure there's an issue with that.

[00:19:13] Speaker 01:
Because again, it's not as if the examiner is getting the last word in there.

[00:19:17] Speaker 04:
So there's still an opportunity.

[00:19:18] Speaker 04:
Well, I understand that.

[00:19:20] Speaker 04:
But generally, if a finding is made

[00:19:25] Speaker 04:
an hearing examiner or whatever, under the APA.

[00:19:29] Speaker 04:
And that finding is then challenged.

[00:19:33] Speaker 04:
You look to the finding in the proceeding before, you don't necessarily look to the briefing that was done in support of that finding.

[00:19:42] Speaker 04:
So my question is, in this particular situation where it's not the agency counsel, but it's the examiner, him or herself, who actually writes the brief

[00:19:53] Speaker 04:
in support of the examiner's findings, is it fair to say the examiner can, for the first time, make a statement in the brief that counts as a finding by the examiner?

[00:20:05] Speaker 04:
Or does the examiner have to be... you have to look back at the rest of the examination to find such a finding?

[00:20:13] Speaker 04:
It's a long question, but I think... No, no, I understand.

[00:20:15] Speaker 01:
I'm just thinking about the answer.

[00:20:17] Speaker 01:
I want to be clear that that did not happen here.

[00:20:19] Speaker 01:
That is not the situation in this case.

[00:20:20] Speaker 01:
This was all in the examiner's final office action and then also in the examiner answer, so I want to start with that.

[00:20:27] Speaker 01:
But to answer your question, I think that it, again, because it's the examiner,

[00:20:35] Speaker 01:
I know it's weird because briefing has now been happening, but I think it's still allowable for the examiner to do that because... I looked for authority on that, didn't find anything.

[00:20:45] Speaker 01:
Well, I'm not sure as I stand here with your hypothetical that I have any that comes to mind, but I want to just reiterate that is not what happened here.

[00:20:53] Speaker 01:
This was in the final office action.

[00:20:55] Speaker 01:
Also said again in the examiner answer, but it was in the final office action.

[00:20:59] Speaker 01:
All those sites that I read with the exception of the last one come from the final office action.

[00:21:06] Speaker 01:
So again, with respect to the references being combined, there was no issue with Takazawa, there was no problem with the motivation, and the board properly, under the board's proper construction of resident, Takazawa satisfies that limitation.

[00:21:27] Speaker 01:
I don't know if there are other questions about the other references.

[00:21:29] Speaker 03:
As a general matter, their argument seems to be that the board, if not the examiner, used the patent as a guide to, with hindsight, put together a whole bunch of references in order to invalidate their claims.

[00:21:45] Speaker 03:
What's your response just to that hindsight charge?

[00:21:48] Speaker 01:
Sure.

[00:21:48] Speaker 01:
There was no hindsight here.

[00:21:50] Speaker 01:
And under in regard side, as long as the examiner cites a reason for combining the references, that in and of itself shows that there is no hindsight.

[00:21:58] Speaker 01:
This was based on what the references were teaching.

[00:22:02] Speaker 01:
And if you look through the final office action, the examiner will identify the limitation, the combination of the references, and said it was motivated for this reason.

[00:22:11] Speaker 01:
The reason it seems disparate, and there are all these, because there are multiple limitations that were being argued.

[00:22:15] Speaker 01:
There were the holster limitations that had various iterations, and then there was the resident limitation.

[00:22:20] Speaker 01:
And so the examiner took them apart to say, here's where the references meet this, here's the motivation to combine.

[00:22:26] Speaker 01:
Here's where the references meet this limitation, here's the motivation to combine.

[00:22:29] Speaker 01:
But under, in regard to that, if you have the examiner stating, here are the reasons why we're combining these references, there is not a use of hindsight.

[00:22:39] Speaker 01:
And here there was

[00:22:40] Speaker 01:
no hindsight.

[00:22:40] Speaker 01:
We didn't look to the patent to find a reason to combine the references.

[00:22:45] Speaker 02:
At the outset of your argument, you did address, I think, at least to some level, the resident construction.

[00:22:51] Speaker 02:
But could you directly address kind of that distinction that opposing counsel was drawing with respect to repair versus recharge in terms of the resident construction that I heard today, at least?

[00:23:03] Speaker 02:
Sure.

[00:23:04] Speaker 01:
So my reaction to that

[00:23:07] Speaker 01:
difference of repair versus recharge, I would just start by saying that is not something that is within the claim language.

[00:23:15] Speaker 01:
That distinction, it literally says resident on the mobile workstation.

[00:23:19] Speaker 01:
It doesn't say resident on the mobile workstation until we need to repair it.

[00:23:23] Speaker 01:
It doesn't say resident on the mobile workstation during the time of recharge.

[00:23:28] Speaker 01:
That distinction

[00:23:31] Speaker 01:
doesn't influence the construction because it's not a part of the claim language.

[00:23:34] Speaker 01:
You look to the claim language.

[00:23:35] Speaker 01:
You look to the specification.

[00:23:37] Speaker 01:
And there's nothing in there.

[00:23:39] Speaker 01:
Even the part of the spec that said, may be charged by plugging in, that's a certain embodiment within the specification.

[00:23:46] Speaker 01:
It may be charged.

[00:23:47] Speaker 01:
It doesn't mean it cannot be charged any other way.

[00:23:50] Speaker 01:
And so there's nothing in the patent that says that that backup battery cannot be replaced.

[00:23:57] Speaker 01:
So that would be my response to that.

[00:24:00] Speaker 01:
If there are no further questions, I yield my time and respectfully ask that the court affirm the board's decision.

[00:24:07] Speaker ?:
Thank you.

[00:24:09] Speaker ?:
Thank you.

[00:24:10] Speaker 01:
Any rebuttal?

[00:24:12] Speaker 00:
Yes, Your Honor.

[00:24:14] Speaker 00:
Quickly, you asked a moment ago about a citation for the Appellant Innovate, Appendix 1094 at the top

[00:24:26] Speaker 00:
of the page we specifically mentioned, Takazawa.

[00:24:30] Speaker 00:
And we state on the fourth line, we say, because a person of ordinary skill would not have been motivated to combine the references to arrive at the claimed invention.

[00:24:39] Speaker 00:
So Innovate raised the issue.

[00:24:42] Speaker 00:
It's not waived.

[00:24:43] Speaker 00:
As well, I wanted to address the lingering question about resident and how it should be construed.

[00:24:50] Speaker 00:
It is our argument that it should be construed in light of the 607 patent, not in light of Takazawa, the prior art.

[00:24:56] Speaker 00:
To support that, figure 12 at appendix A27 shows 106.

[00:25:03] Speaker 00:
The teachings of the patent show it mounted inside a housing 30 on the control board.

[00:25:12] Speaker 00:
That's why

[00:25:13] Speaker 00:
If you look to this patent in the 607, the construction should be changed at the one word at the end, as we talked about on appendix 16 from the board.

[00:25:22] Speaker 00:
It should not be replaced.

[00:25:24] Speaker 00:
It should be recharged.

[00:25:25] Speaker 00:
That's what we covered in the specification.

[00:25:27] Speaker 00:
That's why the teaching.

[00:25:28] Speaker 00:
And that's why it's important to say that you cannot just take this off in ordinary use.

[00:25:33] Speaker 00:
It's mounted to a control board.

[00:25:35] Speaker 00:
But previously you told us that it could be replaced.

[00:25:39] Speaker 00:
Under repair circumstance, yes, Your Honor.

[00:25:43] Speaker 04:
I just don't know why the term resident, you're not saying resident means it's permanently affixed to the device without any possibility or need to take it away from the device or out of the device.

[00:26:02] Speaker 04:
You're agreeing to that.

[00:26:04] Speaker 04:
So what's the arm, or perhaps you're not.

[00:26:06] Speaker 00:
No, Your Honor, we're saying that it is permanently affixed by mounted.

[00:26:10] Speaker 04:
Right.

[00:26:12] Speaker 04:
It could be permanently affixed by mounting, and you could take it out every week, presumably.

[00:26:18] Speaker 04:
My question keeps coming back to the same point, which is you're not saying it's permanently resident, as in it never moves.

[00:26:29] Speaker 04:
It stays there, right?

[00:26:31] Speaker 04:
We're saying that the patent teaches that it's mounting.

[00:26:34] Speaker 04:
Yes or no?

[00:26:34] Speaker 04:
You're not saying that it's stuck there for good, right?

[00:26:43] Speaker 00:
Your Honor, we are saying that it is stuck there when the term mounted and the phrase in the patent teaches that it's mounted inside a control housing, housing that's shown here on Figure 12.

[00:26:55] Speaker 04:
But it's not always stuck there for the life of the entire structure.

[00:27:02] Speaker 04:
Until the structure finds its way into a junkyard, it'll have that same replacement battery no matter what.

[00:27:08] Speaker 04:
That's not what you're saying.

[00:27:09] Speaker 00:
That is what we're saying.

[00:27:10] Speaker 00:
If it's not malfunctioning, it is stuck there as mounted.

[00:27:15] Speaker 04:
But the if it's not malfunctioning is a major exception to the idea that it's there permanently.

[00:27:23] Speaker 04:
That's what I'm troubled by.

[00:27:25] Speaker 00:
Do you understand my question?

[00:27:27] Speaker 00:
I understand.

[00:27:28] Speaker 00:
I've attempted to put forth our best argument on that issue.

[00:27:31] Speaker 00:
I wanted to make one concluding comment with regard to the office's comments that the board stated its own reason it did not.

[00:27:43] Speaker 00:
And in fact, if you look at page 51 of their brief, the citations, again,

[00:27:48] Speaker 00:
in the appendix are actually to the examiner's statement.

[00:27:51] Speaker 00:
So the board, we believe, failed because it didn't meet this court's precedent and evasive to state its own reasoning.

[00:27:58] Speaker 03:
This is just on the Takazawa motivation to combine, right?

[00:28:01] Speaker 00:
Yes, Your Honor, and Takazawa with any of the other references as well.

[00:28:05] Speaker 00:
And the reason why that's very important is that if you look to the examiner's statement, the examiner in the first re-exam actually allowed

[00:28:16] Speaker 00:
the patent over Takazawa, claim 14, over Takazawa, planer 1 and 2, and even had Wong in its possession in the first re-exam.

[00:28:27] Speaker 00:
That is very critical because in the record at A518, it shows that the examiner under the first re-exam had those in its possession.

[00:28:37] Speaker 00:
And then on page 519, it says, with regard to claim 14,

[00:28:47] Speaker 00:
it says here that the examiner agrees that the prior art does not teach this limitation and as such it's allowable.

[00:28:55] Speaker 00:
So if we're looking to the examiner

[00:28:57] Speaker 00:
we're just comparing for the court.

[00:28:59] Speaker 00:
The fact that this is the second re-exam, the four-way rejection that wasn't addressed by the board, which again is error, shows that they avoided that because the lack of motivation to combine wasn't there.

[00:29:13] Speaker 00:
And they were afraid of the four-way reference because the examiner actually allowed it under the first re-exam.

[00:29:18] Speaker 02:
Thank you.

[00:29:19] Speaker 02:
Thank you, Your Honor.

[00:29:21] Speaker 02:
That concludes this argument.

[00:29:22] Speaker 02:
This case is taken under submission.