[00:00:00] Speaker 01:
We will hear argument next in number 221050, Assatec and Mark against Midal.

[00:00:09] Speaker 02:
Good morning, your honors, and may it please the court.

[00:00:12] Speaker 02:
The crux of this appeal is whether the petitioner stated a prima facie case of obviousness in its petition, as is required by the federal statute 35 USC 312.

[00:00:25] Speaker 02:
This court's decision in Wasica.

[00:00:28] Speaker 02:
and intelligent biosystems are clear that section 312 is applied strictly.

[00:00:33] Speaker 02:
And then if a petition fails to make out a prima facie case, then of obviousness in the petition, the petitioner cannot cure that deficiency in the reply brief.

[00:00:45] Speaker 02:
I don't think there's any dispute about anything that I just said.

[00:00:48] Speaker 03:
Do we review this for a question of law or an abuse of discretion to determine whether the petitioner

[00:00:55] Speaker 03:
whether the reply impermissibly added evidence and argument to its rebuttal.

[00:01:03] Speaker 02:
Your Honor, that's an interesting question.

[00:01:05] Speaker 02:
When you review the case law, I think if I could jump to the end, the analysis comes down to an error of law that was committed by the PTAB in this case, because they found that there was a prima facie case of obviousness in the petition when it's not there.

[00:01:21] Speaker 02:
But backing up.

[00:01:22] Speaker 03:
But that could be context dependent on, you know,

[00:01:24] Speaker 03:
given facts of the case and the particular arguments that were made and how they were argued, whether in fact there was an appropriate prima facie case made.

[00:01:32] Speaker 03:
I mean, there's no legal question unless it's literally an element was missing in the open petition.

[00:01:41] Speaker 02:
Your honor, I'm not trying to avoid the question.

[00:01:43] Speaker 02:
The case law is not necessarily clear on the question that you're asking.

[00:01:48] Speaker 02:
When it comes to the PTAB's application of its own regulations and rules, that's an abuse of discretion standard.

[00:01:56] Speaker 02:
I think one can argue that under 35 USC 312 and its application, that is a question of law that could be reviewed de novo, particularly in an obviousness.

[00:02:08] Speaker 02:
scenario like we have here because the conclusion that a petition stated a prima facie case of obviousness is a question of law.

[00:02:18] Speaker 02:
It's based on subsidiary facts, as Your Honor just pointed out, but it is ultimately a question of law.

[00:02:25] Speaker 02:
I can't cite you any case law that has sort of cleaved the baloney of that bin, but I think an argument can be made.

[00:02:33] Speaker 02:
But in this case, I don't think it necessarily matters because there was an erroneous decision or an implied decision that the petition stated.

[00:02:42] Speaker 02:
a prima facie case of obviousness when it did not.

[00:02:45] Speaker 02:
And I'm going to explain why.

[00:02:46] Speaker 01:
Let me just see if I understand this right.

[00:02:51] Speaker 01:
So the petition included a statement that an artisan would be, relevant artisan, would be motivated to reverse the flow in Batchelder.

[00:03:02] Speaker 02:
That's correct.

[00:03:03] Speaker 01:
And it also said one reason for that motivation is found if you look at the displacement pump.

[00:03:12] Speaker 01:
And it would be better for the life of that pump if cold water was going in rather than hot water was going in.

[00:03:19] Speaker 01:
What's missing, if I understand your argument right, is some further explanation of how you use that pump to reverse the flow.

[00:03:30] Speaker 01:
And that's not quite in the petition.

[00:03:32] Speaker 01:
And you said in your patent owner response, there's no how.

[00:03:36] Speaker 01:
And the reply comes in and says, there's a rotor in it.

[00:03:40] Speaker 01:
Move it this way instead of this way.

[00:03:42] Speaker 01:
Well, they change the direction and that will do it.

[00:03:46] Speaker 01:
Is that kind of, is that the state of the record?

[00:03:49] Speaker 02:
Your honor, I, yes, with perhaps one minor correction, uh, the petition stated that there would have been a motivation to reverse the flow in Batchelder.

[00:04:02] Speaker 02:
And we argued below that, that that motivation wasn't there, but we haven't appealed on that basis.

[00:04:09] Speaker 02:
All right.

[00:04:10] Speaker 02:
Uh, so accepting that.

[00:04:12] Speaker 02:
There was a motivation to reverse the flow in Batchelder.

[00:04:15] Speaker 02:
The petition didn't make the statement about cooling and warming fluid flow, et cetera, that the court just made about pump 280.

[00:04:25] Speaker 02:
All the petition said, and it was only half a sentence.

[00:04:27] Speaker 02:
It wasn't even a complete sentence.

[00:04:29] Speaker 02:
There was a clause.

[00:04:30] Speaker 02:
And the petition said, quote, the flow direction could be facilitated by using the pump, open parentheses, e.g.

[00:04:38] Speaker 02:
displacement pump 280, disclosed in figure nine.

[00:04:42] Speaker 02:
in the upper right of Batchelder, and that's in the appendix of 537 and 38.

[00:04:47] Speaker 02:
That's all it said.

[00:04:50] Speaker 02:
Your Honor, our position is that's not sufficient.

[00:04:52] Speaker 02:
Now, I know that the solicitor is going to argue that it would have been obvious, just as Your Honor implied just a minute ago, it would have been obvious

[00:05:01] Speaker 02:
how to reverse the flow, et cetera.

[00:05:03] Speaker 01:
I'm sorry.

[00:05:04] Speaker 01:
I just want to be clear about something.

[00:05:06] Speaker 01:
Yes, sir.

[00:05:07] Speaker 01:
I thought the petition does say a posita would be motivated to modify patch holder to allow warm fluid to flow away from the pump rather than towards the pump.

[00:05:22] Speaker 01:
That's true, Your Honor.

[00:05:24] Speaker 01:
Okay.

[00:05:25] Speaker 01:
And you think that's not the same thing as identifying a benefit to the pump?

[00:05:33] Speaker 02:
Your Honor, perhaps I'm viewing overlapping issues very distinctly in a way the court is not.

[00:05:39] Speaker 02:
I agree that that's a motivation to reverse the fluid flow.

[00:05:43] Speaker 02:
And I agree that the petition said that Pump 280 could reverse the fluid flow.

[00:05:48] Speaker 02:
There's no dispute for me on that.

[00:05:51] Speaker 02:
The point is, and this is really the crux of the argument today, the petition said you could use the disclosed pump 280 to reverse the fluid flow, full stop.

[00:06:05] Speaker 02:
And it's clear in this court's decisions in Wasica,

[00:06:09] Speaker 02:
and intelligent biosystems.

[00:06:11] Speaker 01:
I just want a complete point, because it seems to me explaining how that would be done and whether there's a benefit or two different things.

[00:06:18] Speaker 01:
And I guess I didn't do it on page 541.

[00:06:20] Speaker 01:
A Posito would know that heat can negatively impact the life of a pump, such as Batchelder's pump.

[00:06:27] Speaker 01:
And that's in the context of saying it's better if cold water comes in instead of hot water.

[00:06:31] Speaker 01:
Your Honor, I agree with all of that.

[00:06:33] Speaker 01:
So it's just the how point.

[00:06:35] Speaker 01:
Well, two things.

[00:06:37] Speaker 01:
And I think the argument on the other side is, with a rotary pump, it's self-evident how.

[00:06:46] Speaker 02:
Your Honor, they've argued that.

[00:06:47] Speaker 02:
Their argument, if I could back up just one moment.

[00:06:51] Speaker 02:
The petition said a placida would have been motivated to reverse the fluid flow in batch elder, and you could use the disclosed pump 280 to do that.

[00:07:01] Speaker 02:
But it didn't say, number one, that Pump 280 would have to be modified from what's disclosed.

[00:07:07] Speaker 02:
And it didn't say how it would have been modified.

[00:07:10] Speaker 02:
So those are the two missing pieces that weren't in the petition.

[00:07:14] Speaker 02:
And I know that the solicitor and our adversary below was trying to belittle this argument, but it's clear under Wasaka and Intelligent Biosystems that it's not enough to simply rely on a prior art embodiment or a prior art reference and say,

[00:07:30] Speaker 02:
You could use this in a way that a posita would figure out in order to arrive at the claimed invention.

[00:07:36] Speaker 02:
If that embodiment must be modified, or if that prior art reference must be modified, first of all, it has to be pointed out, and second of all, the how has to be explained as well.

[00:07:49] Speaker 02:
Neither of those things were done in the petition.

[00:07:51] Speaker 02:
There's only one clause, and it says exactly what I said just a minute ago.

[00:07:56] Speaker 02:
Their argument is, well, it would have been easy for

[00:08:00] Speaker 02:
person of skill and the art to figure that out, you would reverse the rotor, you would reverse the inlets and the outlets, and you would make corresponding changes in batch elder, but they didn't do that.

[00:08:09] Speaker 02:
And that's not sufficient under the law, Your Honor, and that is our argument.

[00:08:13] Speaker 02:
And if you look at the facts in Wassica, they're very analogous to what we're talking about here.

[00:08:20] Speaker 02:
In Wassica, the petition argued that claim six was obvious in view of an embodiment, and Ozalyn, they used a common working frequency.

[00:08:29] Speaker 02:
And then the petitioner also made a conclusory allegation, like here, that any difference between Oslin and claim six would have been obvious.

[00:08:40] Speaker 02:
But after the patent order response pointed out that Oslin wouldn't work the way it was disclosed, that you had to use a different frequency scheme in order to make Oslin work, then

[00:08:54] Speaker 02:
Well, actually, maybe the... I may have misspoke.

[00:08:56] Speaker 02:
The patent owner response said that the common working frequency disclosed in Oslin wouldn't work, and then the patent owner came in and the replying... Excuse me.

[00:09:07] Speaker 02:
I'm getting the parties mixed up.

[00:09:09] Speaker 02:
The petitioner came in and the replying argued, well, then you can look at this other provision, this other section that wasn't cited in the petition in Oslin, and you could use that to...

[00:09:23] Speaker 02:
a person of skill in the art would have realized that you could use a different frequency scheme in Auslan.

[00:09:29] Speaker 02:
And no harm, no foul, it's still the same argument.

[00:09:32] Speaker 02:
But this court in this decision said, no, that's not the same argument.

[00:09:37] Speaker 02:
That's a new argument.

[00:09:38] Speaker 02:
It actually said that's an entirely new theory.

[00:09:41] Speaker 01:
But we don't really have it.

[00:09:42] Speaker 01:
We have several cases, I guess, as you describe it, at least, Wasikov to be one, in which what comes in on reply is identification of a

[00:09:51] Speaker 01:
A portion of the previously cited prior art that had not yet been, that had not been relied on in the petition.

[00:09:59] Speaker 01:
And that's not what we have.

[00:10:01] Speaker 01:
We have, right, this is not even looking at a second piece of prior art.

[00:10:06] Speaker 01:
This is Batchelder and the displacement pump 280 is relied on in the petition and the direction of the fluid is discussed and how changing the direction would benefit that pump.

[00:10:20] Speaker 01:
This is the only thing that's missing is how do you make that pump change the direction?

[00:10:26] Speaker 02:
Two things, Your Honor.

[00:10:27] Speaker 02:
First of all, that pump 280 would have to be modified.

[00:10:30] Speaker 02:
That wasn't stated.

[00:10:31] Speaker 02:
And then number two, exactly the point you just made.

[00:10:34] Speaker 02:
And it's our position that under this court's precedent, that has to be explained because that's part of the prima facie case.

[00:10:41] Speaker 02:
And you can't fix that later with an argument that, oh, a person of skill in the art could have figured it out.

[00:10:47] Speaker 02:
This is how the modification would have been done.

[00:10:49] Speaker 02:
And the facts in Intelligent Biosystems are very similar.

[00:10:53] Speaker 02:
I'm running out of time, so I won't go through it.

[00:10:55] Speaker 02:
But to address another point that Your Honor just made, there are other cases in which in a reply brief or in the final written decision from the board, either the petitioner or the board would cite some new art.

[00:11:09] Speaker 02:
And there's an anachor decision that the solicitor has cited in the solicitor's brief to that effect.

[00:11:16] Speaker 02:
But in those cases, the ones I'm familiar with anyway, that prior art was cited to show the state of skill in the art, the knowledge of skill in the art, and how that would have impacted whatever combination was stated.

[00:11:32] Speaker 02:
But it didn't change the fundamental underlying combination.

[00:11:37] Speaker 02:
It's just how somebody would have understood it.

[00:11:40] Speaker 02:
That doesn't negate the obligation of a petitioner to state that.

[00:11:45] Speaker 02:
the embodiment or the reference would have to be modified and how it would have been modified.

[00:11:55] Speaker 02:
Your honor, that summarizes our position.

[00:11:59] Speaker 02:
I have a couple of things to say about our second argument, unless one of your honors has any questions about our first argument.

[00:12:08] Speaker 02:
Thank you, your honor.

[00:12:14] Speaker 02:
It's hard to summarize this, but the PTAB made a decision that Asetex Products did not practice the claimed invention based on a misinterpretation of an arrow in a claim chart.

[00:12:29] Speaker 02:
And the claim chart that the PTAB cited

[00:12:34] Speaker 02:
Looking back at it in retrospect, the expert's arrow was ambiguous about where I pointed.

[00:12:39] Speaker 01:
I'm sorry, Your Honor.

[00:12:40] Speaker 01:
The point you just articulated that you were processing of articulating is a substantial evidence fact point.

[00:12:47] Speaker 02:
That's correct, Your Honor.

[00:12:49] Speaker 02:
This is a substantial evidence analysis.

[00:12:52] Speaker 02:
And I recognize that's a very tough mountain to climb or to clear.

[00:12:56] Speaker 02:
But we think that under the unique, and I hope these are unique facts in this case, that there is no substantial evidence.

[00:13:04] Speaker 02:
If there was only one claim chart, and that's the one that the APJ cited and put in their decision with an arrow that's pointing to the bottom of a groove, I think that we would not be standing here making this argument.

[00:13:19] Speaker 02:
But there are two other claim charts that completely corroborate everything that my colleague, who argued this case before the board.

[00:13:29] Speaker 03:
Where that arrow goes to the groove?

[00:13:33] Speaker 02:
Yes, Your Honor.

[00:13:34] Speaker 03:
and where the red line stops, there's a little hole there, right?

[00:13:39] Speaker 02:
Yes, well, if you look at this two-dimensional photograph, Your Honor, the end of the groove and that little hole are essentially in the same place, because it's a two-dimensional representation of a three-dimensional object.

[00:13:51] Speaker 02:
And then the cooling fluid is coming out of that hole?

[00:13:55] Speaker 02:
Your Honor, if I could, there's a ceiling that divides the upper part of the pump from the lower part of the pump,

[00:14:02] Speaker 02:
The groove that we have always said and was always understood is the passage that divides in a central location.

[00:14:09] Speaker 03:
Right, the expert never said the word groove.

[00:14:13] Speaker 02:
That's correct.

[00:14:14] Speaker 02:
The groove is the relevant passageway.

[00:14:16] Speaker 03:
I don't know where we get this word groove from because it's not technically in the record, right?

[00:14:23] Speaker 03:
Is this a lawyer term?

[00:14:25] Speaker 02:
At a minimum, it was mentioned during the whirl argument, and it's describing the structure.

[00:14:29] Speaker 03:
I understand that part, but I'm just trying to figure out, is the coolant coming out of the little hole?

[00:14:36] Speaker 02:
The coolant comes out of the little hole above the groove, and then it comes down to the groove, and the coolant comes through the groove, and it subdivides into two different directions.

[00:14:48] Speaker 02:
It splits into two flows on the inner ring alone.

[00:14:51] Speaker 03:
It's the hole that is in fluid communication with the upper chamber.

[00:14:56] Speaker 03:
Is that right?

[00:14:57] Speaker 02:
The hole is not in fluid communication with the lower chamber and that's the problem.

[00:15:01] Speaker 02:
With the upper chamber.

[00:15:04] Speaker 03:
That was my question.

[00:15:07] Speaker 03:
The fluid is coming from the upper chamber... I believe that's correct, Your Honor.

[00:15:11] Speaker 03:
Out through the little hole where the red line stops.

[00:15:17] Speaker 02:
Could you repeat that one more time, Your Honor?

[00:15:20] Speaker 03:
The fluid is first in the upper chamber.

[00:15:22] Speaker 03:
Correct.

[00:15:23] Speaker 03:
Then it comes down into the lower chamber.

[00:15:28] Speaker 02:
Through the groove.

[00:15:28] Speaker 03:
And it's coming out through that little hole.

[00:15:31] Speaker 03:
Your Honor, when it's transitioned... It's not like this groove is like one big slot hole where coolant is just rushing out of the entire groove from the upper chamber.

[00:15:46] Speaker 03:
fluid from the upper chamber is coming from that little hole.

[00:15:51] Speaker 03:
Your honor, I would disagree with that.

[00:15:53] Speaker 02:
And the testimony and... Well, I don't know if there's testimony.

[00:15:57] Speaker 02:
Well, it wasn't fully... Maybe not that word.

[00:16:00] Speaker 03:
It wasn't word, maybe.

[00:16:02] Speaker 02:
This point was not fully developed in the record here, but to answer the court's question, the fluid comes into the upper chamber, and by the way, the... And it comes down to the lower chamber.

[00:16:13] Speaker 02:
through that groove.

[00:16:14] Speaker 03:
The groove is the transition hole.

[00:16:16] Speaker 03:
What is connected to the upper chamber?

[00:16:21] Speaker 03:
It's that little hole, right?

[00:16:23] Speaker 02:
The little hole does empty into the upper chamber, but the fluid comes from the upper chamber to the lower chamber through that long groove.

[00:16:31] Speaker 02:
But first through the little hole.

[00:16:33] Speaker 03:
It's coming from the little hole.

[00:16:35] Speaker 03:
If you want to tell me, then after it leaves the little hole, it somehow fills up that entire groove.

[00:16:41] Speaker 03:
Well, that's your argument, and that's fine.

[00:16:44] Speaker 03:
But it actually is the little hole from which the coolant is coming through from the upper chamber.

[00:16:55] Speaker 02:
Your honor, I would change the preposition to say it comes into the upper chamber.

[00:17:03] Speaker 03:
Oh, the fluid is going from the lower chamber to the upper chamber through that little hole?

[00:17:10] Speaker 03:
No, Your Honor.

[00:17:11] Speaker 02:
It's the opposite.

[00:17:11] Speaker 02:
It's coming down.

[00:17:12] Speaker 02:
Exactly.

[00:17:14] Speaker 02:
From the little hole.

[00:17:16] Speaker 02:
Your Honor, it comes out through the little hole into the upper chamber, and then the fluid goes... I'm sorry.

[00:17:23] Speaker 03:
It comes from the little hole into the upper chamber?

[00:17:27] Speaker 03:
That's not right.

[00:17:28] Speaker 03:
Yeah, take five.

[00:17:34] Speaker 03:
seconds.

[00:17:37] Speaker 02:
That's what I'm trying to say.

[00:17:38] Speaker 02:
All right.

[00:17:40] Speaker 02:
My colleague and I completely agree.

[00:17:44] Speaker 02:
No, Your Honor.

[00:17:46] Speaker 02:
Perhaps I'm not making myself clear.

[00:17:48] Speaker 02:
The transition from the upper chamber to the lower chamber is that group.

[00:17:53] Speaker 02:
That's where the fluid enters the lower chamber.

[00:17:57] Speaker 03:
that's what comes into the upper chamber through that that will hold a little house from it's coming from the up upper chamber get its coolant to the lower chamber through that little hole this is why you don't win on substantial evidence yet clearly convinced us that the board is wrong if you if you had a playing card so something with

[00:18:23] Speaker 01:
with to it, not a needle.

[00:18:26] Speaker 01:
You put the needle through the hole.

[00:18:28] Speaker 01:
Can you put a playing card through between the upper and the lower chambers?

[00:18:34] Speaker 02:
You could through the groove.

[00:18:36] Speaker 01:
So the groove is actually fully open on top and bottom between upper and lower.

[00:18:42] Speaker 02:
Well, actually that, I don't think that's correct because the groove has an entrance point.

[00:18:47] Speaker 02:
It's a complicated device, your honor.

[00:18:49] Speaker 02:
And it's not fully in that record, but

[00:18:52] Speaker 02:
The fluid enters the groove on one side and... It enters the groove through the little hole.

[00:19:02] Speaker 02:
No, Your Honor, it doesn't.

[00:19:02] Speaker 03:
Well, this one's not in, so I don't understand.

[00:19:05] Speaker 02:
It enters the upper chamber through the little hole and then from the... It's okay.

[00:19:11] Speaker 03:
I won't belabor the point.

[00:19:14] Speaker 02:
All right.

[00:19:15] Speaker 02:
Your Honor, we should win on the first point for sure.

[00:19:17] Speaker 02:
I didn't get to fully elaborate on why we think there's a... I'm way over time.

[00:19:27] Speaker 02:
Thank you, Your Honor.

[00:19:34] Speaker 00:
Good morning, Your Honors, and may it please the Court

[00:19:39] Speaker 00:
The petition here set forth a sufficient prima facie case of obviousness, and the reply brief properly elaborated on that exact obviousness ground in response to ASTEC's arguments in its patent owner response.

[00:19:52] Speaker 00:
Specifically, the board did not err in finding, as set forth in the petition, that one of skill and the art would have modified batch elder

[00:20:00] Speaker 00:
to reverse the liquid flow in the system using the displacement pump that was identified in the petition as figure nine.

[00:20:09] Speaker 01:
And that together with something about benefiting the pump by doing that is the end of the petition on that.

[00:20:20] Speaker 01:
It never says, here's how you do this with the pump.

[00:20:25] Speaker 01:
You've changed the direction of the rotor.

[00:20:28] Speaker 01:
That's not in the petition.

[00:20:29] Speaker 00:
The petition doesn't say, you know, you have to hook up the pump and reverse the rotor.

[00:20:35] Speaker 00:
No, it does not.

[00:20:36] Speaker 00:
The petition says you can use the displacement pump because there's no directionality to the channels.

[00:20:41] Speaker 00:
It can go either way.

[00:20:42] Speaker 00:
And it talks about the motivation to do that because of the pump's life.

[00:20:47] Speaker 00:
And it also talks about how one would have a reasonable expectation of success because it was a well-known technique to move liquid.

[00:20:53] Speaker 03:
But then the question comes down to, was it an impermissible modification of the obviousness theory?

[00:21:00] Speaker 03:
When on reply, the petitioner said, oh, well, here's the modifications you would need to do to the displacement pump in order to get the reverse flow of coolant in that shelter.

[00:21:13] Speaker 04:
Why isn't that a modification of ASEC?

[00:21:16] Speaker 00:
It's not a modification.

[00:21:17] Speaker 00:
It was a response to ASEC's arguments that you would need this wholesale reconfiguration.

[00:21:22] Speaker 00:
And the response is, well, when you actually talk about the displacement pump is instead of the centrifugal pump that they addressed in their patent owner response.

[00:21:30] Speaker 00:
I don't know exactly what ASEC means by the modification to the displacement pump.

[00:21:35] Speaker 00:
The reply said the modification is you put it into the system.

[00:21:39] Speaker 00:
You have to have the inlet and the outlet so the water flows through the system.

[00:21:42] Speaker 00:
That's not a modification to the pump.

[00:21:44] Speaker 00:
It's just putting the pump into the system.

[00:21:46] Speaker 00:
And then you reverse the rotor to reverse the liquid's flow.

[00:21:51] Speaker 00:
And that reply brief is a permissible response to

[00:21:55] Speaker 00:
that argument in the... Right.

[00:21:58] Speaker 01:
I don't, I guess, have any doubt about that.

[00:22:00] Speaker 01:
But as we explained in core photonics recently, there are two quite distinct limitations on the reply.

[00:22:09] Speaker 01:
One, it has to be responsive.

[00:22:11] Speaker 01:
This is undeniably responsive.

[00:22:13] Speaker 01:
That's not the point in dispute.

[00:22:14] Speaker 01:
The point in dispute is the other one, whether the reply introduced something that was impermissible to introduce on reply because it wasn't sufficiently in the petition.

[00:22:26] Speaker 01:
And that, we said, is actually reviewed as a matter of law.

[00:22:31] Speaker 00:
Right.

[00:22:31] Speaker 00:
So for the review, the standard review, it's true.

[00:22:36] Speaker 00:
If the argument is that it's the board relied on

[00:22:40] Speaker 00:
a ground that was not in the petition that is reviewed de novo.

[00:22:45] Speaker 01:
That doesn't purport to simplify the task of deciding what is a new ground and what is something less than a new ground.

[00:22:55] Speaker 00:
So in Waseca, an intelligent biosystem, there was very clear this court found that the ground was new and pointed to new evidence in the prior art.

[00:23:04] Speaker 00:
So there was a different part of the prior art that was pointed to in order to make the obviousness ground.

[00:23:10] Speaker 00:
In Waseca, it was you had to look

[00:23:11] Speaker 00:
It wasn't just that any of these modifications would be obvious to you.

[00:23:14] Speaker 00:
Then they actually, in the reply, went to parts of the prior art to point out why there would be the modification.

[00:23:21] Speaker 00:
And in intelligent biosystem, it was now not only would you use the conditions of the prior art for the sequencing method, but now you had to modify those conditions.

[00:23:33] Speaker 00:
they said in the reply, you wouldn't use the conditions that they pointed to in the petition here.

[00:23:37] Speaker 00:
The petition pointed to Batchelder's figure to reversing it using the displacement pump.

[00:23:44] Speaker 00:
And everything about what is put in the reply is what one of Skill in the Art would know about in terms of putting a pump in a system and reversing the liquid flow.

[00:23:54] Speaker 00:
I mean, it's clear from both Batchelder's disclosure as well as ASTEC's own patent where they all list pumps that you can use in your cooling system

[00:24:03] Speaker 00:
But none of them provide a user's manual on how to put a pump into a system or where the screws need to go.

[00:24:20] Speaker 00:
be put because, as the board found, this was all within the knowledge and abilities of one of Skill in the Art to make these modifications.

[00:24:27] Speaker 00:
And a petition doesn't have to put in every single step that one of Skill in the Art would know how to do to make a notification.

[00:24:36] Speaker 00:
Otherwise, you're going to end up with an unwieldy petition that the patent owner can always point to something that wasn't the particular, you didn't tell me where to put that screw, I don't know how.

[00:24:46] Speaker 00:
And there's no evidence in the record that one of skill in the art wouldn't know and wouldn't have a reasonable expectation of success in reversing the liquid flow in this system.

[00:24:57] Speaker 00:
So that's why I think even if on a de novo review, the prima facie case was sufficient in the petition and the reply of permissible response.

[00:25:05] Speaker 04:
What if the petition didn't identify the displacement pump 280

[00:25:10] Speaker 04:
And then the patent owner said, well, they don't explain at all how in the world you would reverse the flow.

[00:25:17] Speaker 03:
And then on the ply, the petitioner said, oh, well, it just so happens the reference has displacement pump 280.

[00:25:26] Speaker 04:
This is what you would use, and this is how you would use it in order to accomplish the motivated objective to reverse the coolant flow.

[00:25:35] Speaker 03:
Would that be?

[00:25:37] Speaker 00:
The closer case, and I think as the board found here with the viscosity pump, because in their reply they pointed down for the first time to the viscosity pump and said you could change the liquid viscosity pump.

[00:25:49] Speaker 00:
And the board said no, that that in fact was pointing to new evidence.

[00:25:52] Speaker 00:
The board didn't rely on that.

[00:25:53] Speaker 00:
They said the petition pointed to the displacement pump.

[00:25:56] Speaker 00:
I think you could make an argument that just pointing to Batchelor and its different pumps in general that perhaps that would be sufficient.

[00:26:04] Speaker 00:
That's not the case here.

[00:26:05] Speaker 00:
The petition specifically set forth the displacement pump.

[00:26:09] Speaker 00:
If they had an opportunity to respond to that combination in their patent owner response and explain why one of the skill and guard wouldn't have been able to do it.

[00:26:16] Speaker 00:
And they didn't actually put that in their patent owner response.

[00:26:20] Speaker 00:
So I think if there wasn't the displacement in the petition, you could, they would have a very strong argument that that was sort of new evidence that was pointed to in the reply.

[00:26:30] Speaker 00:
But because the displacement pump is in the petition and there's discussions about how one of skill in the art knows how to move liquid around a cooling system in order to dissipate heat.

[00:26:43] Speaker 00:
And Chen, I think it's Chen, was another reference that was relied on.

[00:26:47] Speaker 00:
for the ability of one of the skill and the art to perform these methods, that they were well-known techniques, that is sufficient in a petition for the prima facie case of obviousness.

[00:26:57] Speaker 04:
What if there were 20 things you had to do to the pump in order to achieve the goal of reversing flow?

[00:27:06] Speaker 04:
Then would that be a situation where

[00:27:09] Speaker 04:
In the context of that kind of modification, it was so complicated and complex.

[00:27:16] Speaker 04:
That's really not something permissible to save for reply, and it needed to be in the petition?

[00:27:23] Speaker 00:
I think it would depend on the knowledge of the person of skill and the art.

[00:27:26] Speaker 00:
And if all of those 20 steps are something that one of skill and the art would naturally do when they change a pump, perhaps there are 20 steps.

[00:27:34] Speaker 00:
I'm not exactly sure.

[00:27:37] Speaker 00:
then it would be the patent owner and their burden in their response to point out why that wasn't something within the skill and the art, and how they wouldn't have a reasonable expectation of success because of, for whatever reason, these modifications were not known here to the skilled artisan with an engineering degree and two years of experience in cooling systems.

[00:28:01] Speaker 00:
So I think it could be a case where there weren't too many steps, but it would depend again on the state of the art and the knowledge of a skilled artisan.

[00:28:12] Speaker 00:
Can you talk about the second issue?

[00:28:13] Speaker 01:
Of course, Your Honor.

[00:28:15] Speaker 01:
If you have anything to enlighten us on what is actually happening in this pump?

[00:28:20] Speaker 00:
So I don't know what's happening in this pump exactly.

[00:28:22] Speaker 00:
I know.

[00:28:24] Speaker 00:
You don't want to say enough said.

[00:28:26] Speaker 00:
That's possibly enough said.

[00:28:27] Speaker 00:
I will point out that if you look in their patent owner response, they did point to figure nine as the embodiment of their products.

[00:28:38] Speaker 00:
And in that case, the inlet 15

[00:28:42] Speaker 00:
is dead center and not close to the, nowhere close.

[00:28:46] Speaker 00:
It's a little hole.

[00:28:47] Speaker 00:
It's a little hole.

[00:28:48] Speaker 00:
And if you look in their specification, there's no, the discussion of a groove is not related to the inlet to 15.

[00:28:55] Speaker 00:
It's called an inlet tube and it is referred to in a way that you would think that it's a little hole.

[00:29:02] Speaker 00:
There is no statement about a groove or any of that.

[00:29:04] Speaker 00:
The channels are what moves the liquids from the little hole to the other passageway.

[00:29:10] Speaker 00:
where it goes back into the upper chamber.

[00:29:12] Speaker 00:
That's as much as my understanding of how this works.

[00:29:15] Speaker 01:
So in particular, we don't have enough reason to think that this line-shaped thing is like a coin slot.

[00:29:24] Speaker 00:
I don't know one way or the other.

[00:29:26] Speaker 00:
And nothing in the expert report tells, tells me or the board anything other than what the arrow and the little hole that points to identifying it as the first passageway.

[00:29:40] Speaker 00:
If there are no more questions, we'd ask this court to affirm the board's decision.

[00:29:44] Speaker 00:
Thank you.

[00:29:45] Speaker 00:
Thank you.

[00:29:52] Speaker 02:
I could clarify on the second issue, but I think I'm fighting a pill on that one.

[00:29:56] Speaker 02:
I would simply like to point out that there's no dispute that Pump 280, as disclosed in the bad shelter reference, would not reverse the fluid flow.

[00:30:08] Speaker 02:
That shall there no where discusses reversing the fluid flow.

[00:30:12] Speaker 02:
And that's critical to everything that council just said.

[00:30:15] Speaker 02:
And reversing the rotors and the configuration, et cetera, the pump 280 to reverse the fluid flow is a lot more complicated than just adding a screw.

[00:30:24] Speaker 02:
Unless your honors have any other questions, I'll submit.

[00:30:27] Speaker 02:
Thank you.

[00:30:28] Speaker 02:
Thank you.

[00:30:29] Speaker 01:
Thanks to all council cases submitted.