[00:00:00] Speaker 02:
We have five cases on the calendar this morning, three from the Patent Office, one from the MSPD, and one from the Court of Federal Claims, which will not be argued and has been submitted on the briefs.

[00:00:16] Speaker 02:
Our first argued case is Rick Soler versus Hand Law Solutions, 2023-1508 and 1516.

[00:00:29] Speaker 02:
Mr. Bellamy.

[00:00:46] Speaker 04:
The board's final written decision contains two independent errors, an APA violation and an unsupported inherency finding.

[00:00:56] Speaker 04:
Each error separately warns reversal, and I'd like to address each in turn if I may.

[00:01:02] Speaker 04:
First, in finding a motivation to combine wrong and woo, the board reached beyond the arguments that were presented in the petition and crafted its own motivation to combine in violation of the APA.

[00:01:13] Speaker 04:
The motivation to combine in Hanwha's petition relied on a fundamental assumption that all three of the diodes in Hanwha's structure were housed in a single central junction box.

[00:01:25] Speaker 03:
Is your claim here this morning

[00:01:29] Speaker 03:
that we have an APA violation because you were not given the opportunity to address an argument?

[00:01:35] Speaker 03:
Or are you saying that the board's reasoning itself was incorrect?

[00:01:41] Speaker 04:
It's the former, Your Honor.

[00:01:43] Speaker 04:
It's an APA violation because RAC was not given an opportunity to address that argument.

[00:01:50] Speaker 04:
Now, as a result of that, and because the particular combination and motivation to combine that the board adopted was never argued by Hanra, then by nature of the fact that it was never argued, there was never any evidence presented to support that particular combination.

[00:02:07] Speaker 04:
So we would also say it's unsupported by substantial evidence.

[00:02:10] Speaker 01:
Council, I thought that you actually had the opportunity to respond to an oral argument.

[00:02:14] Speaker 01:
Did you respond to an oral argument?

[00:02:16] Speaker 04:
The first time that Hanwha ever raised the argument that it didn't matter whether or not the diodes were contained in a central junction box was at the oral argument.

[00:02:25] Speaker 04:
And that was insufficient opportunity for us to formulate responses.

[00:02:31] Speaker 04:
And obviously, we never had an opportunity to bring to bear expert testimony and other evidence on that particular argument.

[00:02:38] Speaker 04:
And we've cited case law in our briefing.

[00:02:41] Speaker 04:
I believe the Dell versus the Sotilon case that basically says it's not enough to bring it up for the first time at oral argument.

[00:02:50] Speaker 04:
Now, the reason this distinction matters between where the diodes are housed is that if all of the diodes in Huong are already positioned in their ideal locations as shown in figure two of Huong, then there's no reason to go to Wu for an improvement.

[00:03:07] Speaker 04:
And the relevant teaching of Wu is to take diodes that are already housed in a central junction box and spread those out so that they'll be closer to the respective solar cell strings.

[00:03:19] Speaker 01:
Do you agree that using junction boxes to house bypass diodes is well known in the prior article?

[00:03:25] Speaker 04:
Yes, Your Honor.

[00:03:26] Speaker 01:
And you also, I think, had some emissions to that effect or made those statements too?

[00:03:32] Speaker 04:
Yes.

[00:03:33] Speaker 04:
It was well known to put diodes in junction boxes.

[00:03:36] Speaker 04:
But the problem is it's a question of the motivation to combine.

[00:03:41] Speaker 04:
If Wong already has its diodes properly spaced, properly positioned adjacent to each respective solar cell string,

[00:03:50] Speaker 04:
then there's no reason to go to Wu to implement junction boxes.

[00:03:55] Speaker 04:
What the board did is the board found that Huang does not clearly disclose diodes contained in a central junction box.

[00:04:06] Speaker 04:
That should have been the end of the board's analysis, because that was the fundamental assumption in Hanwha's petition.

[00:04:14] Speaker 04:
That assumption was stated multiple times in the petition.

[00:04:19] Speaker 04:
It was stated multiple times in the declaration supporting the petition.

[00:04:23] Speaker 04:
That assumption was adopted in the institution decision.

[00:04:26] Speaker 04:
And it was the central dispute between the parties all throughout the briefing leading up to the oral argument.

[00:04:32] Speaker 04:
But then, in the final written decision, the board essentially changed its decision, and it basically adopted a motivation to combine that was agnostic as to whether or not those diodes are contained in a central junction box.

[00:04:48] Speaker 04:
And that argument that the board adopted is basically a two-step argument.

[00:04:53] Speaker 04:
You start with Huang, which is agnostic according to the board as to where the diodes are located.

[00:04:59] Speaker 04:
You then go to the general knowledge in the art.

[00:05:03] Speaker 04:
as a motivation to put the diodes in a central junction box, and then you use that modified quong to go to woo to essentially cure that defect.

[00:05:13] Speaker 04:
That's what the board said in its final decision, but that was not the argument that was presented in the petition.

[00:05:18] Speaker 04:
That's a different obviousness argument.

[00:05:20] Speaker 04:
And because of that, we submit that the board violated the APA.

[00:05:26] Speaker 04:
If I may, I'd like to get to the second argument.

[00:05:30] Speaker 04:
The second independent error requiring reversal is the board's finding that a single assembly cross connector joining parallel sets of solar cell strings, as recited in claims 5, 6, and 13, is the so-called natural result of combining wong and woo.

[00:05:48] Speaker 04:
Now, the board acknowledges that neither Huang nor Wu discloses this feature.

[00:05:53] Speaker 04:
And so the board's natural result finding appears to be based on inherency.

[00:05:58] Speaker 04:
And yet Han-Long concedes in this appeal that it never presented an inherency argument to the board and never argued that a single assembly cross connector is necessarily present in the combination of Huang and Wu, which of course would be a requirement for an inherency finding.

[00:06:15] Speaker 04:
So to the extent that the board did make an inherency finding, and we submit that it did, there's no dispute between the parties here on appeal that that finding lacks substantial evidence.

[00:06:26] Speaker 04:
What Hamra contends is that the board didn't really mean to invoke inherency, but instead meant to say that the single assembly cross connector is a predictable variation of huang and hu based on common sense.

[00:06:40] Speaker 04:
Now, first of all, that is not what the board said.

[00:06:42] Speaker 04:
The board used the words natural result, which traditionally invokes inherency under this court's Inherency Case Law.

[00:06:49] Speaker 03:
The board on page 65 of the written decision says that

[00:06:54] Speaker 03:
Because both cross connectors terminate to a single bypass diode, a positor would naturally choose to fabricate them as a single assembly.

[00:07:04] Speaker 03:
Now, I don't see that as inherency.

[00:07:07] Speaker 03:
I think they're, and this is testimony, right?

[00:07:10] Speaker 03:
This is expert testimony?

[00:07:12] Speaker 04:
Yes, Your Honor.

[00:07:13] Speaker 03:
That's what they're referring to.

[00:07:14] Speaker 03:
Yes, Your Honor.

[00:07:15] Speaker 03:
So the positor would look at this bar coming like this, and then the other one coming, and then you have a junction box with the diodes there.

[00:07:25] Speaker 03:
So you look at that and say, why not just connect it and make one single bar?

[00:07:32] Speaker 03:
Under KSR, why is that reasoning incorrect?

[00:07:35] Speaker 04:
Well, first of all, Your Honor, there is no dispute that neither of the references has that structure.

[00:07:42] Speaker 04:
Remember, Quon has overlapping bus bars separated by the insulation layer.

[00:07:46] Speaker 04:
So that's not a single assembly cross connector.

[00:07:48] Speaker 04:
Wu also has separate electrically isolated connectors

[00:07:53] Speaker 04:
by insulation.

[00:07:54] Speaker 04:
So that's also not a single assembly connector.

[00:07:57] Speaker 04:
And there's no dispute from Han-Raw that when you combine those two, it's not a necessary result that you're going to get a single assembly cross connector.

[00:08:07] Speaker 04:
There's other ways to do it.

[00:08:08] Speaker 03:
As a matter of fact... But combining them into one single bar, that seems to be perhaps something that a posito would do just practical, using its practical sense.

[00:08:22] Speaker 04:
Well, that was certainly Hamra's argument, but there's no evidence of that.

[00:08:26] Speaker 04:
They couldn't find that structure anywhere in the prior art.

[00:08:29] Speaker 04:
And so this structure that they say is just a matter of common sense, they couldn't find it anywhere in the prior art.

[00:08:35] Speaker 04:
And under this court's case law, even if you were to assume that what the board meant was common sense and not inherency, that's Hamra's argument.

[00:08:42] Speaker 04:
This court's case law does not stretch so far as to support that finding.

[00:08:48] Speaker 03:
Does our case law oppose that finding?

[00:08:52] Speaker 04:
In this situation, yes, you are.

[00:08:53] Speaker 03:
So your argument is that there has to be some of the structure that caused the motivation to combine has to reside in the prior art.

[00:09:07] Speaker 04:
Yes, Your Honor.

[00:09:08] Speaker 04:
This court has urged caution in situations like this, where the structure is admittedly not present in the prior art.

[00:09:14] Speaker 04:
There's no dispute it is not present in any of the references they submitted.

[00:09:18] Speaker 04:
In those types of situations... But did the poetry here create structure?

[00:09:24] Speaker 03:
That's the question.

[00:09:26] Speaker 04:
Well, the structure, in order for that structure to exist, the patent explains that it's not a foreground conclusion that you're going to have a single assembly cross connector.

[00:09:36] Speaker 04:
What makes it possible is the fact that the circuits on either side of that cross connector are essentially identical, they're mirror images of each other, and that's what allows you

[00:09:46] Speaker 04:
to use a single assembly cross connector and doing so has advantages and the patent explains what those advantages are.

[00:09:52] Speaker 04:
That single assembly cross connector, Wu could have done it, but didn't.

[00:09:57] Speaker 04:
Huang could have done it, but didn't.

[00:10:00] Speaker 03:
Zhang could have done it, but didn't.

[00:10:03] Speaker 03:
ordinary skill in the art and not look at that and say, this technology is not complex, and I can join these two bars and create a single bar with greater efficiency.

[00:10:17] Speaker 04:
Well, Your Honor, that certainly was Hamwah's argument, but the problem is, under this court's case law, in order to manifest a missing limitation,

[00:10:25] Speaker 04:
There has to be evidence that it was known in the art.

[00:10:29] Speaker 04:
So they cited a series of cases, which this court has said it is possible to use common sense to fill in a missing limitation under certain circumstances.

[00:10:40] Speaker 04:
But as we explained in our brief,

[00:10:41] Speaker 04:
In all of those cases, the limitation at issue actually was disclosed in the prior art, or it was admittedly well known in the prior art.

[00:10:50] Speaker 04:
And the missing limitation was simply an instruction to repeat a known structure or to reverse the order of steps.

[00:10:56] Speaker 04:
That's not the situation here.

[00:10:58] Speaker 04:
Here, the structure is completely missing in the prior art, and Harwan never argued that it was well known.

[00:11:03] Speaker 03:
There was no argument that it was a well known structure.

[00:11:06] Speaker 03:
Do you have case law that there's no motivation where

[00:11:09] Speaker 03:
The structure is completely missing from our case law.

[00:11:12] Speaker 04:
I would say a remedy and here where which I think of the leading cases again We're not saying that it's impossible to to use common sense to to find a missing limitation, but those cases

[00:11:25] Speaker 04:
advocate for caution.

[00:11:27] Speaker 04:
And those cases put up guardrails in terms of what you have to do if you're going to try to rely on common sense.

[00:11:33] Speaker 04:
And one of those guardrails is, first of all, it can't be a limitation that's central.

[00:11:37] Speaker 04:
It only should be used for peripheral or non-important limitations, I think is what Hewer said.

[00:11:43] Speaker 04:
Here, that limitation is the only limitation in claim five.

[00:11:46] Speaker 04:
So of course, it's central to that claim.

[00:11:48] Speaker 04:
It's the only thing in that claim.

[00:11:50] Speaker 04:
And there was no evidence presented that this limitation was well known.

[00:11:55] Speaker 04:
They didn't make that argument.

[00:11:55] Speaker 01:
Do you think that Conloy did not rely on an inherent obvious sensibility before the PTAC?

[00:12:02] Speaker 04:
Well, they did not.

[00:12:03] Speaker 04:
They clearly did not.

[00:12:04] Speaker 04:
Our position was that the board, essentially Sue Espante, adopted an inherency-type argument in finding that it would be the natural result of combining these references.

[00:12:17] Speaker 04:
Now, in their briefing, they concede that we never made an inherency argument.

[00:12:21] Speaker 04:
And that's fine.

[00:12:22] Speaker 04:
We agree with that.

[00:12:22] Speaker 04:
They never made an inherency argument.

[00:12:24] Speaker 04:
What they're saying is when the board used that terminology, natural result, it was really talking about common sense.

[00:12:31] Speaker 04:
And so in our reply brief, we explained that even under a common sense doctrine, this court's case law does not stretch far enough to support that type of fine.

[00:12:40] Speaker 02:
Counsel, you're into your battle time.

[00:12:42] Speaker 02:
You could continue or save it.

[00:12:44] Speaker 04:
I'd like to reserve my time, Your Honor.

[00:12:45] Speaker 04:
Thank you.

[00:13:00] Speaker 00:
May it please the court Mark Selwyn for Hanwha.

[00:13:03] Speaker 00:
The board's decision to find the challenge claims of the 060 patent obvious in view of Wang and Wu was fully supported by the prior art, the entirety of Hanwha's briefing, including the petition and the declaration of Hanwha's expert Dr. Kimball.

[00:13:19] Speaker 00:
Unable to dispute that substantial evidence supports the board's factual findings and its multiple expert credibility determinations, REC advances a... What's the substantial evidence as to this last issue we were discussing with your friend from the other side?

[00:13:33] Speaker 00:
Certainly, Your Honor.

[00:13:37] Speaker 00:
Dr. Kimball's declaration with respect to the combination of Wang and Wu describes how that combination would predictably result in a single assembly, in other words, both cross connectors terminating at the same bypass diode, and why the combination would predictably result

[00:13:54] Speaker 00:
in a single assembly and illustrates the combination in modified figure three.

[00:14:00] Speaker 00:
Dr. Kimball also explained in his declaration that combining two cross connectors as one assembly was simpler.

[00:14:08] Speaker 00:
That's an appendix 443 paragraph 98.

[00:14:11] Speaker 00:
He also explained in his declaration why the single assembly would have been located along the center line of the module and how the center line placement provides a short, direct connection between the bypassed diodes in close proximity.

[00:14:25] Speaker 00:
That term single assembly, interestingly, doesn't appear in the specification.

[00:14:30] Speaker 00:
There is one apparent reference to it at column four, lines 47 through 51, which reads, in one embodiment, the cross connectors 203 of some or all the solar cell units within the assembly

[00:14:41] Speaker 00:
are combined as one central cross-connector assembly and placed substantially in the center line.

[00:14:47] Speaker 00:
In other words, the specification provides the same description as Dr. Kimball for how to fabricate the single assembly, namely that two separate cross-connectors can be combined as one assembly.

[00:14:59] Speaker 00:
This court has stated on multiple occasions that KSR's predictable variation motivation is particularly applicable in cases of simple mechanical technology, and this case also certainly presents such a circumstance.

[00:15:16] Speaker 03:
In order to have accommodation, as you're describing it, does the

[00:15:24] Speaker 03:
have to reside or be disclosed in any of the priority?

[00:15:30] Speaker 00:
No, this court has been very clear on that and we would cite the court to its BEA aerospace fee CDC&D zodiac case.

[00:15:38] Speaker 00:
This court's decisions don't require the reference and obviousness combinations to explicitly disclose the disputed limitation provided that there is evidence, which there is in

[00:15:48] Speaker 00:
here that the limitation would be a predictable or common-sense result of the combination.

[00:15:54] Speaker 00:
And that was our theory, predictable result.

[00:15:57] Speaker 01:
I just want to clarify a question.

[00:16:01] Speaker 01:
What did you point to Appendix page 443?

[00:16:05] Speaker 01:
Did you mean 4443?

[00:16:05] Speaker 01:
I just didn't see Appendix page 4443 in my appendix.

[00:16:07] Speaker 01:
I just wanted to make sure.

[00:16:07] Speaker 00:
I apologize.

[00:16:09] Speaker 00:
I believe 4443.

[00:16:10] Speaker 00:
I misstated.

[00:16:13] Speaker 00:
Your Honor, in the BE aerospace decision, the court rejected the argument that the references in the prior combination needed themselves to disclose this missing limitation.

[00:16:24] Speaker 00:
And there the missing limitation was a second recess to receive passenger seat supports.

[00:16:30] Speaker 00:
And the court there upheld, quote,

[00:16:32] Speaker 00:
The board's conclusion that the challenge claims would have been obvious because modifying the assertive prior art combination to include what was then the missing limitation was nothing more than a predictable application of known technology.

[00:16:47] Speaker 00:
And that was our theory.

[00:16:47] Speaker 03:
This is the only, the statement that we're looking at on page appendix 4443.

[00:16:53] Speaker 03:
This is the substantial evidence that you cite to support your argument?

[00:16:59] Speaker 00:
That was part of the substantial evidence in support of the combination of the two.

[00:17:03] Speaker 03:
This statement, because of both cross connectors, that's it?

[00:17:07] Speaker 00:
No.

[00:17:07] Speaker 00:
The evidence is that 441 through 443, that's Dr. Kimball's declaration,

[00:17:13] Speaker 00:
paragraphs 91 and 99, in which he explains, among other things, why when you have the two cross connectors terminating at the same bypass diode, the predictable result is that you would have that as a single cross assembly.

[00:17:28] Speaker 00:
That's the identical thing that the specification itself describes for how to fabricate a single assembly when you have two cross connectors.

[00:17:36] Speaker 00:
It's one or it's two.

[00:17:38] Speaker 00:
When you have the two cross connectors terminating at the same point,

[00:17:41] Speaker 00:
That's clearly, to use Dr. Kimball's words, simpler.

[00:17:44] Speaker 00:
It's simpler, it's predictable.

[00:17:46] Speaker 00:
That's exactly what the specification describes as how you would fabricate those two.

[00:17:53] Speaker 00:
With respect to the alleged APA issue, I point, Your Honors, in particular to the fact that the Board's obviousness rationales are the same as those advanced in Hanwha's petition and in Hanwha's reply.

[00:18:07] Speaker 00:
More particularly,

[00:18:08] Speaker 00:
on pages 26 and 27, 29, and 32 of the board's decision.

[00:18:14] Speaker 00:
The board adopted the same rationales for motivation to combine that Hanwha articulated in its petition and in its reply.

[00:18:21] Speaker 01:
And as the board- Some of the pages of the petition reply that are applicable because the close accounts of the committee's first raise their oral arguments.

[00:18:29] Speaker 01:
I just want to make sure I can see those things as well.

[00:18:33] Speaker 00:
Of Hanwha's reply?

[00:18:35] Speaker 01:
The reply in the petition, you were pointing out that things were raised beforehand.

[00:18:39] Speaker 01:
Our present counsel argued that it was just raised at the law argument.

[00:18:43] Speaker 01:
I just want to be able to address that.

[00:18:44] Speaker 00:
Understood.

[00:18:45] Speaker 00:
Hanwha affirmatively stated the rationales for its motivation to combine Wang and Wu in its petition.

[00:18:51] Speaker 00:
And that combination wasn't predicated on the presence of the bypass diodes within Wang's junction box.

[00:18:57] Speaker 00:
Hanwha devoted eight pages of its petition, its appendix 547 to 553 and 557 to 559, to describing why a skilled artisan would have been motivated to modify Wang-Siller module to implement the multiple junction boxes of Wu, including how Wu, at paragraphs 22 and 25, expressly taught several benefits, to quote the board's decision,

[00:19:22] Speaker 00:
of housing bypassed diodes in separate junction boxes rather than a single junction box and how, again to quote the board's decision, having read Wu, a posita would have understood that using multiple junction boxes would also benefit the solar cell assembly of Wang.

[00:19:40] Speaker 00:
The first paragraph of the motivation to combine section of Han Wai's petition began by explaining why the two are analogous.

[00:19:48] Speaker 00:
Same components, same purpose, and the board's decision expressly agreed with Hanwha's reasoning regarding Wang and Wu as analogous are with shared objectives.

[00:19:59] Speaker 00:
That's at page 27 of the board's decision.

[00:20:01] Speaker 00:
So that's one place that there's identity between the arguments and Hanwha's motivation to combine exists expressed in the petition and what the board found.

[00:20:11] Speaker 00:
So clearly they had noticed because it was the same.

[00:20:14] Speaker 00:
The petition goes on and explains how implementing glue separate junction boxes would have simplified Wang's solar cell assembly by eliminating the need for these complicated bus bars in the insulating layer.

[00:20:28] Speaker 00:
That rationale for the motivation to combine didn't depend on the location of the bypass diodes in Wang.

[00:20:34] Speaker 00:
And the petition and our expert's declaration went a step

[00:20:37] Speaker 00:
further, and it showed a modified figure three of Wang to illustrate how incorporating Wu's multiple separate junction boxes with its diodes into Wang would work and would be advantageous, and the board expressly agreed with that as well on Appendix 27.

[00:20:56] Speaker 00:
That's another place that the motivation to combine was disclosed

[00:21:00] Speaker 00:
in the petition, repeated in the reply, argued at the hearing, and responded to by REC in its patent owner response, in its reply, and again at the hearing.

[00:21:13] Speaker 00:
I'll give you a third place where there's a motivation to combine.

[00:21:15] Speaker 00:
The petition at 549 and 550, appendix 549 and 550, and Dr. Kimball's declaration in paragraphs 78, 79, and 90,

[00:21:26] Speaker 00:
explained that there were multiple benefits associated with having separate junction boxes and wangs designed, in particular, reducing resistive losses due to two things, shortening the bus bars within the assembly and also shortening the cables between adjacent solar modules.

[00:21:43] Speaker 00:
That was in the petition.

[00:21:45] Speaker 00:
It was again in

[00:21:46] Speaker 00:
Hanwha's reply was argued at the hearing.

[00:21:49] Speaker 00:
It was responded to vigorously by REC.

[00:21:53] Speaker 00:
In fact, if you look at REC's patent owner response, it had multiple arguments that didn't turn at all on the location of the diodes in Wang.

[00:22:03] Speaker 00:
It argued that a skilled artisan wouldn't be motivated to combine Wang and Wu and offered many reasons that the design philosophies, in REC's words,

[00:22:12] Speaker 00:
the two references, that they were purportedly incompatible.

[00:22:16] Speaker 00:
For example, RAC argued that, quote, a posita would have appreciated that Wang's single junction box offered

[00:22:26] Speaker 00:
offered several advantages compared to multiple junction boxes.

[00:22:30] Speaker 00:
That argument didn't turn at all on the location of diodes in Wang.

[00:22:34] Speaker 00:
RAC argued that Episcita would have kept Wang's single junction box.

[00:22:38] Speaker 00:
That argument didn't turn at all on the location of the diodes in Wang.

[00:22:43] Speaker 00:
And I can go on.

[00:22:44] Speaker 00:
The fact is, when the arguments were made at the oral argument, and we explained the oral argument, how the motivations to combine

[00:22:52] Speaker 00:
as set forth, were taking Boo's multiple junction boxes with its diodes and incorporating it into Wang, as shown in modified figure three, and it was agnostic as to the location of the diodes within Wang.

[00:23:06] Speaker 00:
There was no expression of surprise by REC.

[00:23:09] Speaker 00:
There was a vigorous counterargument that reiterated everything that had been in their patent owner response and reiterated in their certify.

[00:23:18] Speaker 01:
What is your response to opposing

[00:23:26] Speaker 00:
It's not.

[00:23:28] Speaker 00:
The argument that they're referring to about natural result

[00:23:32] Speaker 00:
is taking out of context that expression.

[00:23:35] Speaker 00:
Neither the board nor Hanwha ever mentioned inherent obviousness or inherency, and the board didn't apply that concept in finding the combination of Wang and Wu teaches a single assembly central cross connector.

[00:23:48] Speaker 00:
In fact, if you look at that statement within the board's decision, there are nearly four pages of relevant analysis.

[00:23:55] Speaker 00:
This is at pages 34 through 37.

[00:23:58] Speaker 00:
of the board's decision that preceded the reference to the board's statement that a single assembly is the natural result of combining the references teaching.

[00:24:06] Speaker 00:
And that analysis followed a traditional KSR obviousness analysis, which is the analysis that was set forth in Hanwha's petition.

[00:24:16] Speaker 00:
Right before the reference to natural results on page 37, the board said that it found persuasive Hanwha's expert testimony that based on the wang and wheel combination, a posita would naturally choose to fabricate the cross connectors as a single assembly.

[00:24:32] Speaker 00:
The board also cited to KSR's guidance that a posita is a person of ordinary creativity, not an automaton, to support the statement in question.

[00:24:42] Speaker 00:
And in that statement in question, the board was agreeing with Hanwha and its expert that a single assembly cross connector is the predictable and obvious result of combining prior references under KSR's flexible framework.

[00:24:58] Speaker 00:
And if the panel has no further questions, we would ask for affirmance.

[00:25:04] Speaker 02:
And we will save your remainder

[00:25:08] Speaker 02:
for a conditional cross appeal if there's something to respond to.

[00:25:13] Speaker 02:
Thank you, Your Honor.

[00:25:14] Speaker 02:
Mr. Bellamy.

[00:25:24] Speaker 04:
Thank you, Your Honor.

[00:25:24] Speaker 04:
Just a few points.

[00:25:30] Speaker 04:
Mr. Sullivan pointed to portions of the petition in response to your question, Judge Cunningham, as to where they raised this argument that it could be agnostic as to where the diodes are placed.

[00:25:44] Speaker 04:
And he pointed first to Appendix 557.

[00:25:47] Speaker 04:
I would like to actually go there, because this really helps prove our point, Appendix Page 557, which is part of their petition.

[00:25:57] Speaker 04:
And here is the argument for the second junction box containing the second bypass diode.

[00:26:02] Speaker 04:
In the middle of the bottom paragraph, it says, as described, Wong teaches a solar cell assembly that uses a single junction box in the center of the panel to house all three bypass diodes.

[00:26:15] Speaker 04:
Wu also explains that housing bypass diodes in separate junction boxes rather than a single junction box has several benefits.

[00:26:24] Speaker 04:
So right there is the crux of their argument.

[00:26:27] Speaker 04:
They say Huang has three diodes in a central junction box, and Wu teaches a way to improve that by spreading those three diodes out in the separate junction boxes.

[00:26:37] Speaker 04:
At the oral argument, they changed

[00:26:39] Speaker 04:
And they said, actually, it doesn't matter.

[00:26:41] Speaker 04:
Now, Mr. Selwyn claimed that we expressed no surprise when that happened.

[00:26:45] Speaker 04:
That's also incorrect.

[00:26:46] Speaker 04:
And I would like to refer you to the transcript, page 1397.

[00:26:50] Speaker 04:
The surprise that was expressed was contained beginning at line six on appendix 1397, where we stated to the board after hearing this new argument of theirs that it doesn't matter, we said the second problem with this argument they're trying to make is that it's contrary to their ground.

[00:27:08] Speaker 04:
The ground in the petition is Wong plus Wu, and now suddenly they're trying to reach past Wu into the prior art and grab unnamed anonymous other references under the guise of, well, this was common and so forth.

[00:27:19] Speaker 04:
So we absolutely did express surprise when we heard that new argument that it doesn't matter.

[00:27:26] Speaker 04:
And lastly, with respect to the single assembly cross connector, I heard Mr. Selwyn explain that their expert's testimony tracked what is stated in the patent in terms of why it would be a good idea to use a single assembly cross connector.

[00:27:45] Speaker 04:
And that really puts a finger on the problem here.

[00:27:47] Speaker 04:
What's happening here is the use of hindsight.

[00:27:50] Speaker 04:
That is the slippery slope when you start manifesting missing limitations simply through the say-so of an expert without ever showing that that limitation actually exists somewhere in the prior art and without any acknowledgement or agreement between the parties that it was a well-known feature in the prior art, which would be, for instance, the case in the Phillips decision or in the aerospace decision that he cited earlier,

[00:28:17] Speaker 04:
that recess was in the prior art, and the only thing that the claim required was you basically repeat it.

[00:28:24] Speaker 04:
You have two recesses.

[00:28:25] Speaker 04:
This is a different animal altogether.

[00:28:27] Speaker 04:
Here, that single assembly cross connector is nowhere in the prior art, and we don't believe this court's case law would support such a finding.

[00:28:35] Speaker 02:
Thank you, counsel, and since there's nothing more about it, then that concludes the argument.

[00:28:40] Speaker 02:
The case is submitted.

[00:28:41] Speaker 04:
Thank you, Your Honor.