[00:00:00] Speaker 00:
Our last case this morning is Chalk Ninja versus iRobot Corporation, 2023, 1151.

[00:00:09] Speaker 00:
Mr. Tucker.

[00:00:11] Speaker 00:
Good morning, your honors.

[00:00:21] Speaker 01:
May it please the court?

[00:00:23] Speaker 01:
The board made two different errors below.

[00:00:25] Speaker 01:
First, the board misconstrued

[00:00:28] Speaker 01:
disposed within the round housing perimeter to add the modifier entirely without sufficient support.

[00:00:35] Speaker 01:
Under the proper construction, which does not include this modifier, there's no dispute that the BISSET prior art satisfies the limitation.

[00:00:42] Speaker 00:
Well, if the claims were to not meant entirely within, certainly in other portions of the claims, we see extending beyond.

[00:00:57] Speaker 00:
So isn't it clear that disposed within must mean entirely within?

[00:01:04] Speaker 01:
So I think, Your Honor, I was talking about the side brush element that is in also appears in claim 55.

[00:01:09] Speaker 01:
I don't think so.

[00:01:11] Speaker 01:
And I think the reason is because claim 55 and the other independent claim specify where both the side brush element and the primary brush or their cleaning head are.

[00:01:24] Speaker 01:
Those claims do not say where they are not.

[00:01:27] Speaker 01:
And I think to understand that point, what this broad comprising claim means, we have to consider the context of those two elements in the context of the 511 patent, as is described in the abstract, but also recited, for example, in claim 55.

[00:01:44] Speaker 01:
So the side brush certainly does need to extend beyond the perimeter, Judge Laurie, as you said.

[00:01:51] Speaker 01:
And this makes sense in the context of the function that the side brush.

[00:01:54] Speaker 01:
Well, that's expressing the claims.

[00:01:55] Speaker 01:
It's expressed in the claims and also makes sense in the context of the function that the side brush performs, as described, for example, in the abstract, where it sweeps outside the perimeter to sweep the debris into the path of the cleaning head.

[00:02:10] Speaker 01:
And then claim 55 says that it is swept inside the path of the cleaning head.

[00:02:16] Speaker 01:
And of course, the cleaning head or the primary brush need to be disposed within the perimeter in order to pick up that debris.

[00:02:24] Speaker 01:
They complete that function.

[00:02:25] Speaker 01:
They satisfy what they need to do in the context of the claim and the specification, even if that primary brush or cleaning head is also partially outside of the perimeter, so long as it is disposed within the perimeter.

[00:02:41] Speaker 01:
The cleaning head will collect

[00:02:43] Speaker 01:
the debris that was swept up by the side brush, as long as it is within, even if it is also partially without.

[00:02:49] Speaker 01:
And that was my point, Your Honor, is that I don't think the side brush limitation and the primary brush limitation are mutually exclusive, such that the side brush limitation requires the primary brush

[00:03:04] Speaker 01:
to be only within.

[00:03:05] Speaker 01:
The primary brush will still satisfy what it needs to do to collect that debris as long as it is at least partially within and not entirely within the perimeter.

[00:03:16] Speaker 03:
How about the side brush extending beyond?

[00:03:19] Speaker 03:
Does that mean some of it can be or has to be within the scope of the perimeter?

[00:03:27] Speaker 01:
Actually, in the preferred embodiment that's disclosed in Figure 2, the side brush is both outside of the perimeter and

[00:03:34] Speaker 01:
within the perimeter, your honor.

[00:03:35] Speaker 03:
So what if it was entirely outside the perimeter?

[00:03:39] Speaker 03:
Would it still meet the extending beyond requirement?

[00:03:43] Speaker 01:
I don't know how it could be physically attached to the vacuum and still fulfill the purpose of the side brush, which is, again, to sweep everything back into the perimeter.

[00:03:57] Speaker 01:
I think that it does need to be partially within the perimeter in order to, again, like I said, satisfy the context of that claim where it needs to sweep from the outside back into the inside to the path of the cleaning head.

[00:04:13] Speaker 01:
Speaking of surrounding claim language claim 56 depends from claim 55 and also supports not reading in this Inject injecting this modifier to be entirely within the round housing perimeter claim 56 further requires that there be a sub component of the cleaning head which is the primary brush assembly and further specifies that it is also a

[00:04:38] Speaker 01:
disposed within the housing perimeter.

[00:04:41] Speaker 01:
There would be no reason for claim 56 to say that if claim 55 already required that the entirety of the cleaning head be within the perimeter.

[00:04:52] Speaker 01:
There would be no reason to further specify that a subcomponent of the cleaning head is within the perimeter.

[00:04:59] Speaker 03:
How do we know that the cleaning head of 55 has to include a powered primary brush assembly?

[00:05:09] Speaker 03:
Isn't 56 narrowing 55 by making clear that the cleaning head itself has to at least have a powered primary brush assembly?

[00:05:19] Speaker 01:
It is, Your Honor, and we did not take the position that the entire claim is superfluous or redundant.

[00:05:26] Speaker 01:
We took the position that the phrase that the cleaning head has to be disposed within the housing perimeter is what would be redundant or superfluous.

[00:05:37] Speaker 01:
And I think the parties have exchanged some different cases on those points, but at least the Apple versus Amaranth

[00:05:43] Speaker 01:
case that we cited in our brief supports the position that it doesn't necessarily have to be the entire claim that is superfluous or redundant, but it could be a part of it.

[00:05:55] Speaker 01:
The claim construction maxim still applies even if you're rendering part of the claim element superfluous.

[00:06:00] Speaker 03:
So you agree that under the board's construction, claim 56 is not superfluous?

[00:06:07] Speaker 01:
Claim 56 itself is not entirely superfluous.

[00:06:10] Speaker 01:
I agree with you.

[00:06:12] Speaker 01:
But the portion

[00:06:13] Speaker 01:
of claim 56 that recites that the primary brush assembly is disposed within the housing perimeter, that portion of the claim is certainly superfluous or redundant.

[00:06:32] Speaker 01:
The board also, when it was analyzing this term, looked to one other part of the claim, which is the phrase freely turn when proximate to obstacles.

[00:06:43] Speaker 01:
and the board determined that that phrase further required absolute encapsulation of the primary brush or cleaning head within the perimeter.

[00:06:53] Speaker 01:
This is wrong for a number of reasons.

[00:06:57] Speaker 01:
It is entirely based on the board's unsupported assumption that, quote, freely turning in the claim requires a full 360 degrees.

[00:07:06] Speaker 01:
There's no support in the record for that.

[00:07:08] Speaker 01:
It's also based on the unsupported assumption that proximate to, which really just means near to, would require the vacuum to be right up, abutting up against an obstacle.

[00:07:20] Speaker 01:
So effectively, the board is reading this limitation to require a full 360 degree rotation

[00:07:26] Speaker 01:
went right near an obstacle.

[00:07:28] Speaker 01:
And there's no support in the specification or the claims for that.

[00:07:32] Speaker 01:
iRobot points to its expert report on this point at A5200 paragraph 108.

[00:07:39] Speaker 01:
But there is no disclosure or there's no opinion there about requiring 360 degrees or abutting up against an obstacle.

[00:07:52] Speaker 01:
I would like to just point out one other point about the dispute between the parties.

[00:07:59] Speaker 01:
I think there's been a counter argument that we are trying to inject a modifier of our own, either partially or substantially.

[00:08:06] Speaker 01:
I want to make clear that that's not our position.

[00:08:08] Speaker 01:
Our position is that the claims do not require any modifier.

[00:08:12] Speaker 01:
As such, they are broad enough to encompass partially, substantially, or entirely within.

[00:08:18] Speaker 01:
That's the plain language of the claims.

[00:08:20] Speaker 01:
And there's nothing in the specification to undo that.

[00:08:23] Speaker 01:
There's no definition in the specification that would require a narrower construction.

[00:08:29] Speaker 01:
If there are no more questions about claim construction, I'd like to briefly touch on the second issue, which is that even under the board's construction, the board erred in finding that it wouldn't have been obvious to modify BISSET to have its brush bar be disposed entirely within the housing.

[00:08:48] Speaker 01:
And so on this point, so the Bissett configuration, the brush bar extends slightly beyond the housing.

[00:08:55] Speaker 01:
And on this point, we provided several pieces of evidence and argument for why one skilled in the art would find it obvious to shrink Bissett's brush bar and move it in between the wheels.

[00:09:07] Speaker 01:
One point was that another reference, the Toyota reference, disclosed a similar configuration to what our proposed modification was

[00:09:17] Speaker 01:
to Bisett.

[00:09:17] Speaker 01:
We said this twice in our petition and our experts said that twice, pointed that out twice to the board.

[00:09:23] Speaker 01:
A second reason was that Bisett's asymmetric protruding brush bar caused problems for both cleaning and for navigation.

[00:09:32] Speaker 01:
We explained with expert support that it would bump into the walls and it would also limit the number of navigational paths that the robot could take.

[00:09:41] Speaker 01:
And finally, we explained that with Bissett's asymmetric configuration, the wheel of one of Bissett's vacuums would advance in front of the protruding brush bar such that it would trample over the dirt.

[00:09:56] Speaker 01:
that that brush bar was trying to collect.

[00:09:59] Speaker 01:
And so it made sense to shorten the brush bar to alleviate that problem.

[00:10:04] Speaker 01:
Those were three pieces of evidence that the board ignored.

[00:10:07] Speaker 01:
And I know that it is a substantial evidence standard of review, but here the board's own opinion highlights that it ignored this argument and evidence.

[00:10:17] Speaker 03:
Where did you point to these three pieces of evidence in connection with the limitation that we're talking about

[00:10:26] Speaker 03:
and do it in a way other than making it seem like you were making merely a design choice argument?

[00:10:35] Speaker 01:
Sure, Your Honor.

[00:10:35] Speaker 01:
So the claims on appeal are claims 24 and 55.

[00:10:41] Speaker 01:
We proved claim one to be unpatentable, but the analysis for claim one ended up being very similar to claims 24 and 55.

[00:10:50] Speaker 01:
And so we referenced that analysis.

[00:10:53] Speaker 01:
But the points I'm going to point you to are in the context of claim one.

[00:10:58] Speaker 01:
But we made that argument with regard to claim one and then incorporated it over 25.

[00:11:04] Speaker 01:
I just want to give you that context.

[00:11:06] Speaker 01:
So we explained that the asymmetrical protruding brush bar, the second point I made was problematic for cleaning and navigation at A1025 to A1026.

[00:11:22] Speaker 01:
And we also cited Dr. Pryor's testimony at A, 1886 to 1888.

[00:11:27] Speaker 01:
That's 55 and 56.

[00:11:30] Speaker 01:
We then further explained at A1039 in the petition, supported by A1904, paragraph 74 of Dr. Pryor's declaration, that the asymmetrical brush bar could then be removed.

[00:11:46] Speaker 01:
The one that had been just shown to cause those problems could be removed after you added the side brushes.

[00:11:53] Speaker 01:
At A1039 and A1904, paragraph 74, we explained the point about the wheel trampling over the dirt.

[00:12:03] Speaker 01:
And at A1039, we also explained that Toyota disclosed a configuration similar to the modification we were making.

[00:12:11] Speaker 03:
Looking at all that, thought your contention was this is merely a simple design choice.

[00:12:17] Speaker 03:
Isn't that a fair reading of the contention you were making?

[00:12:20] Speaker 01:
So I don't think it's a fair reading.

[00:12:22] Speaker 01:
Because if you look at what the board said, it said, and this is a quote from A-19, it is not enough to simply state that the protruding brush bar is not necessary.

[00:12:33] Speaker 01:
Before that, it said, petitioner had not articulated a reason for changing business design.

[00:12:40] Speaker 01:
I submit that those statements by the board demonstrate that it did not substantively engage with our argument, either directly or implicitly, because it characterized it as just a design argument and simply stating that the brush bar was unnecessary when we did more than that.

[00:12:59] Speaker 01:
And I think the provisor tech versus Weber case that we cited at Bluebrief 37 shows that that is error.

[00:13:08] Speaker 01:
Unless there are questions, I'll reserve what time I have.

[00:13:10] Speaker 01:
We will save it for you.

[00:13:12] Speaker 01:
Thank you.

[00:13:24] Speaker 02:
Thank you, Judge Larian.

[00:13:25] Speaker 02:
May it please the court, John O'Quinn, on behalf of iRobot.

[00:13:28] Speaker 02:
The board properly construed claims 24 and 55 of the 511 patent.

[00:13:35] Speaker 02:
to require that the primary brush or the cleaning head be entirely inside the round boundary created by the housing perimeter.

[00:13:42] Speaker 02:
Shark Ninja's arguments to the contrary on appeal about the meaning of the term disposed within the perimeter are inconsistent with this court's precedence on claim construction, including the Seminole Phillips decision, as well as the ordinary meaning of the claim terms as used in the context of the specification, particularly when juxtaposed with other terms, as you were referring to earlier, Judge Laurie.

[00:14:04] Speaker 02:
Shark Ninja's further arguments on appeal about obviousness under the board's construction are not grounded in the arguments that it actually presented below in its petition, much less the record evidence.

[00:14:15] Speaker 02:
The board, for its part, however, addressed the arguments that Shark Ninja actually developed, and it properly rejected them.

[00:14:21] Speaker 02:
And substantial evidence supports the board's decision that Shark Ninja failed to prove factually that a skilled artisan would have been motivated to modify the prior art

[00:14:31] Speaker 02:
to arrive at the invention claimed in claims 24 and 55.

[00:14:35] Speaker 02:
And that decision should be affirmed.

[00:14:37] Speaker 02:
Now, I'm happy to start with claim construction.

[00:14:40] Speaker 02:
If the court has questions about that, I'm also happy to go straight to the issue of motivation.

[00:14:45] Speaker 03:
On the claim construction, what do you say to the contention that side brushes extending beyond

[00:14:57] Speaker 03:
They don't really support you, the argument that we heard today.

[00:15:01] Speaker 03:
But that distinction you want to make between disposed within and extend beyond doesn't really have the weight that you have contended it does.

[00:15:09] Speaker 02:
Sure.

[00:15:09] Speaker 02:
So Judge Stark, I think first, just to take a step back, our fundamental position is that the term disposed within a perimeter means arranged inside a boundary.

[00:15:20] Speaker 02:
and that the use of the term within is being used to create a relationship within as a preposition.

[00:15:25] Speaker 02:
It's used to create a relationship with the round perimeter.

[00:15:29] Speaker 02:
And in that type of boundary relationship, the ordinary meaning in context would be that it needs to be entirely on the inside.

[00:15:37] Speaker 02:
Now, I think that the use of the term extending beyond with respect to a different attribute, that is the side brushes,

[00:15:46] Speaker 02:
They may or may not be mutually inconsistent.

[00:15:49] Speaker 02:
I'm not arguing that they have to be, nor did the board have to find that they were in order for them to support its position.

[00:15:55] Speaker 02:
But I think what's very, very telling is that every single example in the specification, in showing, in referring to, in identifying the primary brush or the cleaning head, it is described as being schematics according to the present invention that are entirely inside.

[00:16:12] Speaker 02:
In contrast, that is entirely inside a structural envelope

[00:16:16] Speaker 02:
in contrast to the side brushes, which clearly and explicitly in the specification extend beyond the structural envelope.

[00:16:28] Speaker 02:
In fact, my colleague made the point that what they need to do, and the specification says this, they need to sweep material that are outside the perimeter, outside the periphery.

[00:16:39] Speaker 02:
That's the language of the specification.

[00:16:42] Speaker 02:
for example, at appendix 50 column 825, appendix 50 column 860, into the envelope in order to pick up debris.

[00:16:53] Speaker 02:
And so that means that the primary brush

[00:16:56] Speaker 02:
which is what has suction that is included with it or the cleaning head.

[00:17:02] Speaker 02:
You don't even have to have a cleaning brush.

[00:17:04] Speaker 02:
You could just have a cleaning head with suction.

[00:17:06] Speaker 02:
It needs to be within the perimeter because that is the path that the debris is being swept into.

[00:17:10] Speaker 02:
So I'm not saying that it's dispositive or that any one of the pieces of evidence

[00:17:15] Speaker 02:
from the intrinsic record that the board relied on was dispositive.

[00:17:18] Speaker 02:
But I think that juxtaposition of something that extends beyond versus something that is referred to as being disposed that is arranged within a perimeter is powerful evidence that the board got it exactly right.

[00:17:32] Speaker 03:
How about the claim 55 versus claim 56 and whether some part of 56 is superfluous?

[00:17:40] Speaker 03:
Is that how we should analyze it or should we just be content in saying everybody concedes it's not entirely superfluous, so how does it help the petitioner?

[00:17:52] Speaker 02:
Judge Stark, I think it would be one thing if claim 56 itself was entirely superfluous, if claim 56 was entirely redundant

[00:18:02] Speaker 02:
You typically claim differentiation, the principles of claim differentiation.

[00:18:06] Speaker 02:
We generally say you don't read it that way unless you absolutely have to.

[00:18:09] Speaker 02:
But what you have is, yes, there is admittedly some repetition at the end of claim 56.

[00:18:14] Speaker 02:
It's the same language that you see in claim 55.

[00:18:18] Speaker 02:
It's the same language, frankly, that you see in claim 24 that's being cut and paste and appearing in multiple places.

[00:18:25] Speaker 02:
I think this court in simple error made it clear that differentiation or the rule against superfluity is not an inflexible rule.

[00:18:34] Speaker 02:
Instead, claims must always be read in light of the specification.

[00:18:38] Speaker 02:
And here, I think that when you look at the repetition, there's a certain amount of repetition that's going to apply under either construction.

[00:18:47] Speaker 02:
So for example,

[00:18:48] Speaker 02:
There's been a lot of focus on the language about disposed within the round housing perimeter.

[00:18:57] Speaker 02:
But then you have the other part, and position to engage a floor surface.

[00:19:00] Speaker 02:
And that seems like that would be equally repetitious once you have added a primary brush

[00:19:05] Speaker 02:
to the cleaning head.

[00:19:07] Speaker 02:
And frankly, given their own admissions at the hearing, that even under their view of disposed within, that it's got to be essentially substantially disposed within, not something that's sticking out just a little bit, seems like their own construction would also result in there being repetition either way, because it's kind of hard to imagine.

[00:19:33] Speaker 02:
And if you look

[00:19:34] Speaker 02:
If you look at the figure, for example, Figure 5A, it's page 16 of our red brief, it's really hard to imagine what it would look like to have a brush within a cleaning head that would be entirely outside the perimeter.

[00:19:51] Speaker 02:
It would be like a giraffe's neck sticking out of the dish-like subject.

[00:19:57] Speaker 02:
They themselves have said that they don't

[00:20:01] Speaker 02:
that their construction means they can only stick out a modest amount.

[00:20:07] Speaker 02:
They admitted that to the board at the hearing.

[00:20:09] Speaker 02:
So again, I think under the Supreme Court's decision in Ali versus BOP, this court's decision in simpleware and others, the fact that there may be some repetition is not something that should trouble the court.

[00:20:20] Speaker 02:
There's a lot of repetition that finds its way into claims.

[00:20:23] Speaker 02:
And you can see similar repetition in claims 24 and 25 in talking about the side brushes.

[00:20:28] Speaker 02:
But it doesn't render the dependent claim

[00:20:31] Speaker 02:
meaningless, and when you look at the specification as a whole, it certainly makes sense to read it exactly the way that the board did.

[00:20:42] Speaker 03:
And what about the freely turning point?

[00:20:47] Speaker 03:
Did the board have evidence for its finding that

[00:20:53] Speaker 03:
the primary brush would have to be entirely within in order for the device to freely turn?

[00:20:59] Speaker 02:
So this is the board's decision at pages 8 and 10 of the appendix.

[00:21:03] Speaker 02:
It cites the patent owner response, which is appendix 1309, which in turn cites our expert that addressed this issue, which is appendix 5200.

[00:21:13] Speaker 02:
So yes, the board had substantial evidence before it.

[00:21:16] Speaker 02:
The board also may have referred to the language in claim 55

[00:21:21] Speaker 02:
But the specification makes the same point.

[00:21:24] Speaker 02:
If you look at Appendix 47, Column 2, Lines 3 through 5, and Appendix 49, Column 5, Line 60, the specification itself talks about what they're trying to do is to come up with a device that can affect a, quote, wide range of turning maneuvers, e.g.

[00:21:44] Speaker 02:
sharp turns, gradual turns, turns in place, spin on a die.

[00:21:48] Speaker 02:
And that's in the specification itself, and I think that supports the board's approach with respect to Claim 55.

[00:21:55] Speaker 02:
And of course, the board's reference to Claim 55 in assessing its interpretation not only of other parts of Claim 55, that is the relationship about a perimeter and what it means and what the utility of having a round housing perimeter would actually be is, of course, consistent with this court's decision in Phillips 415 F3rd at 1313

[00:22:18] Speaker 02:
1314, but of course you can look at other claims to help get context for language that appears in multiple claims.

[00:22:27] Speaker 03:
I don't have any other claim construction questions.

[00:22:29] Speaker 02:
Thank you.

[00:22:31] Speaker 02:
Turning to the issue of obviousness, and really the only issue that is on appeal is their request for

[00:22:39] Speaker 02:
a remand for the board to, as they argue, to consider their arguments.

[00:22:47] Speaker 02:
The board properly rejected the design choice arguments that they actually made.

[00:22:53] Speaker 02:
And you can see those arguments are actually made at appendix 1308 and 1309.

[00:22:58] Speaker 02:
And the board did so based on the facts.

[00:23:00] Speaker 02:
And it didn't overlook any arguments.

[00:23:03] Speaker 02:
And the argument that they're making now is to suggest that they had wholesale incorporated

[00:23:08] Speaker 02:
other sections within their petition and to argue those with respect to Claim 24 and Claim 55 when they really were different arguments.

[00:23:23] Speaker 02:
And in fact, the only reference to the earlier argument that they are making in sections appendix 1021 to 1026 of their petition

[00:23:35] Speaker 02:
just stands for the modest proposition that a person would have been motivated to add brushes.

[00:23:39] Speaker 02:
Understood.

[00:23:40] Speaker 02:
That's what the board agreed with them on that with respect to claim one.

[00:23:43] Speaker 02:
But they then try to take the arguments they made about why you would be motivated to add a brush and then say, ah, well, those same arguments meant that you would be motivated to get rid of the sidebar altogether.

[00:23:55] Speaker 02:
That is not the argument that appears in their petition.

[00:23:57] Speaker 02:
In fact, the use of the word substitute

[00:23:59] Speaker 02:
appears for the first time in their reply brief, and that is not the reasoning that the board followed with respect to its analysis of claim one.

[00:24:09] Speaker 02:
It didn't think that a person, or didn't say the person of ordinary skill in the art would be motivated to substitute side brushes to do away with what was the primary advantage of the Bisset reference, which itself was a Dyson vacuum cleaner design to allow you to have suction all the way up to the wall, all the way up to

[00:24:29] Speaker 02:
to the baseboard.

[00:24:31] Speaker 02:
And so the three pieces of evidence that my colleague referred to today are simply not points that they argued below.

[00:24:37] Speaker 02:
They did not argue first that Toyota was a source of motivation.

[00:24:41] Speaker 02:
The entirety of their argument, again, is appendix 1038 to 1039.

[00:24:45] Speaker 02:
It relies on paragraphs 72 to 77 of their expert prior.

[00:24:53] Speaker 02:
And their points were, number one, that the protrusion from Bisset is no longer necessary, that number two, debris would disadvantageously contact the wheels, and that three, Bisset's brush bar and configuration is simply a design choice, and the primary brush could be located within the wheels.

[00:25:15] Speaker 02:
This is similar to Toyota's configuration.

[00:25:18] Speaker 02:
And the two references to this is similar to Toyota's configuration are the sum of substance of what they say about Toyota with respect to its primary brush.

[00:25:26] Speaker 02:
There's no discussion about Toyota as motivating it.

[00:25:29] Speaker 02:
It is simply false and misleading when they say that they argued the say, quote, in combination with Toyota's centrally located brush bar, page 46 of their opening brief, there is no such combination in the petition.

[00:25:44] Speaker 02:
And the idea that this is, quote, similar to Toyota, that that's supposed to suggest to the board that Toyota would motivate something, I think is asking the board, as this court recently observed, to act as an archaeologist, to go digging through the record and find things that they didn't really argue in the first place.

[00:26:04] Speaker 02:
And the fact is, simply saying this is similar to Toyota, at most, stands for the proposition that a person of ordinary skill in the art could have done it.

[00:26:15] Speaker 02:
not that they would have been motivated to do it.

[00:26:18] Speaker 02:
And this court, of course, in case after case, such as the in touch decision, Belden, TQ Delta,

[00:26:25] Speaker 02:
and others has made clear that it's not enough to show that a person of ordinary skill in the art could do something, but they, in fact, must show that they would have been motivated to do it.

[00:26:37] Speaker 02:
In this case, the board reasonably found in appendix 19 that there was functional significance.

[00:26:42] Speaker 02:
The adding of suction outside the perimeter served a purpose, and the idea that you were going to take this away for no reason other than design choice

[00:26:52] Speaker 02:
is not enough to motivate.

[00:26:54] Speaker 02:
Now, what are the other two things that my colleague pointed to?

[00:26:59] Speaker 02:
He says that, well, Besay's bar caused problems.

[00:27:04] Speaker 02:
They did not argue that.

[00:27:05] Speaker 02:
That is not in the relevant part of their petition.

[00:27:09] Speaker 02:
And in fact, it's not even what they argued in the part of the petition that they are now trying to recast.

[00:27:16] Speaker 02:
where they're trying to recast their arguments about adding side brushes into arguments about substituting or modifying besay.

[00:27:23] Speaker 02:
The only point that was being made both in the petition and by their expert, and that the board accepted with respect to claim one, is that yes, once you have added side brushes, you've got more choices.

[00:27:35] Speaker 02:
You've got more options.

[00:27:37] Speaker 02:
They were arguing you would add side brushes to both sides.

[00:27:40] Speaker 02:
And the board said, well, sure, that once you've added side brushes to both sides, then it's easier to navigate because you can sweep on one side or you can sweep on the other side.

[00:27:47] Speaker 02:
You don't just have a bar on one side.

[00:27:50] Speaker 02:
That makes it easier.

[00:27:51] Speaker 02:
There are advantages to adding things.

[00:27:54] Speaker 02:
But they're now trying to recast these as points about wholesale substitution or removal, taking away the functional benefit that the say's protrusion provided.

[00:28:05] Speaker 02:
And that's not something that they argued below in the pertinent parts of their petition.

[00:28:10] Speaker 02:
It's not something that their expert argued below either.

[00:28:14] Speaker 02:
And then that leaves their third piece of evidence, which was the wheels disadvantageously contacting the dirt.

[00:28:20] Speaker 02:
And respectfully, this is an utterly conclusory one-sentence phrase that appears in their expert's report with no explanation.

[00:28:31] Speaker 02:
in their petition.

[00:28:32] Speaker 02:
I'm sorry, I see I'm past my time.

[00:28:35] Speaker 02:
May I finish this?

[00:28:35] Speaker 00:
You can certainly finish your sentence.

[00:28:37] Speaker 02:
Thank you, Judge Laurie.

[00:28:40] Speaker 02:
It's in the petition without any explanation.

[00:28:44] Speaker 02:
And I would point you to their brief here on appeal.

[00:28:48] Speaker 02:
There's no developed argument whatsoever about why this is a problem and why retreating it into the inside as opposed to moving it to the front or somewhere else or doing any other number of things

[00:29:00] Speaker 02:
would have been what a person of ordinary skill in the art would be motivated to do.

[00:29:04] Speaker 02:
And so with the court's indulgence, my very last point would be to say that is exactly the kind of conclusory expert testimony that this court has rejected in cases like TQ Delta and others.

[00:29:14] Speaker 02:
And unless the court has further questions, I thank the court for its time.

[00:29:18] Speaker 00:
Thank you, counsel.

[00:29:20] Speaker 02:
Thank you, Judge Blory.

[00:29:20] Speaker 02:
Tucker has a little rebuttal time.

[00:29:27] Speaker 01:
Thank you, Your Honor.

[00:29:30] Speaker 01:
Start with claim construction.

[00:29:31] Speaker 01:
I agree with Mr. O'Quinn that not one of these pieces of evidence are dispositive.

[00:29:37] Speaker 01:
And I think the problem here is that iRobot is the one asking for the narrower construction than the plain meaning.

[00:29:43] Speaker 01:
And so they need to point to something dispositive.

[00:29:45] Speaker 01:
On the plain meaning, we appear to disagree as to what the scope of that plain meaning is.

[00:29:51] Speaker 01:
We'd point the court to the cases that we said in our brief, such as Duncan Parking and Rembrandt, that found that the plain meaning of within

[00:29:58] Speaker 01:
even disposed within doesn't require entirely within.

[00:30:03] Speaker 01:
On the freely turning point, on the requirement that freely turning must be 360 degrees and proximate to an obstacle requires abutting an obstacle, there is no evidence and the part that Mr. O'Quinn pointed to, appendix 5200,

[00:30:19] Speaker 01:
Paragraph 108 is the exact part I pointed to in my opening brief.

[00:30:23] Speaker 01:
It doesn't talk about 360 degrees.

[00:30:25] Speaker 01:
It doesn't talk about abutting an obstacle.

[00:30:28] Speaker 01:
Even spinning on a dime in the specification doesn't disclose spinning a full 360 degrees when you're right up next to an obstacle.

[00:30:38] Speaker 01:
On the obviousness point, we did address each of Claims 55 and 24 and explain how those arguments from Claim 1 relate to those claims.

[00:30:47] Speaker 01:
For example, Claim 55 at Appendix 1074, that's the discussion of Claim 55 relating back to Claim 1.

[00:30:59] Speaker 01:
We also did point to Toyota when making the modification to visit.

[00:31:05] Speaker 01:
At Appendix 1039, twice, we said this is similar to Toyota's configuration.

[00:31:12] Speaker 01:
The fact of the matter is, as disclosed at Appendix 1022, Toyota discloses this primary brush bar right in the middle of

[00:31:21] Speaker 01:
the circumference of the vacuum and right in between the wheels.

[00:31:25] Speaker 01:
This is not a difficult modification that was being made.

[00:31:29] Speaker 01:
It is a simple mechanical design.

[00:31:32] Speaker 01:
Toyota disclosed exactly the modification we were making to BISSET.

[00:31:36] Speaker 01:
And whether we're fighting over if this was a combination or a modification, it can't be disputed that we relied on Toyota for the modification itself.

[00:31:47] Speaker 01:
I see that I'm over my time.

[00:31:48] Speaker 01:
If there are any questions, I'm happy to answer them.

[00:31:50] Speaker 00:
Thank you to both counsel.

[00:31:52] Speaker 00:
The case is submitted.

[00:31:53] Speaker 00:
And that concludes today's arguments.