[00:00:05] Speaker 06: Mr. Lebowitz. [00:00:07] Speaker 06: I'm here to reserve minutes of talking to you. [00:00:11] Speaker 00: Yes, Your Honor. [00:00:12] Speaker 00: Thank you. [00:00:13] Speaker 00: Thank you, Your Honor, and may it please the court. [00:00:15] Speaker 00: Noah Lebowitz on behalf of appellant and patent owner, Kuzbeck Golf. [00:00:20] Speaker 00: Your Honor, as our briefing reflects, the final decision that we have in this case should be reversed for numerous reasons. [00:00:27] Speaker 00: I'd like to start, if I can, with the board's erroneous consideration of Club Champion's new testing theory in their reply. [00:00:37] Speaker 00: Per the statute, Club Champion should have, in its petition, identified the theories and grounds and evidence that supported its unpatentability case. [00:00:47] Speaker 00: And for an unpatentability case based on obviousness, which is what Club Champion put forward here, that includes motivation to combine and reasonable expectation of success. [00:00:57] Speaker 00: But the problem is, Your Honor, the board erred by allowing Club Champion to introduce a new theory on motivation to combine and reasonable expectation of success. [00:01:06] Speaker 06: Was it a new theory that was introduced, or was it just information, maybe even evidence in rebut? [00:01:13] Speaker 00: Well, no, Your Honor, I think it was a new theory. [00:01:16] Speaker 00: And the new theory was that in their petition, they relied on Birch. [00:01:22] Speaker 06: So you would agree that you can't present information in rebut? [00:01:26] Speaker 00: Yes, Your Honor. [00:01:27] Speaker 00: And I think some of the cases that this Court has decided after the briefing was closed, in this case, are instructive here. [00:01:34] Speaker 00: So for example, the Core Photonics v. Apple case, which Club Champion actually raised to the Court's way of supplemental authority, that decision has an analysis of both what it called a responsiveness restriction, but also a newness restriction. [00:01:51] Speaker 00: And as the court in photonics made clear, one question is responsiveness. [00:01:57] Speaker 00: And so any argument presented in reply needs to be responsive to what the patent donor put in the patent donor response. [00:02:03] Speaker 00: But even if it's responsive, you can't rely on new theories in reply. [00:02:10] Speaker 00: And this is the words of core photonics. [00:02:12] Speaker 02: Can I just get to this case? [00:02:16] Speaker 02: Yes. [00:02:16] Speaker 02: Didn't the petition say something about reasonable expectations of success in making this combination? [00:02:22] Speaker 00: So it did, Your Honor. [00:02:23] Speaker 00: But the argument on reasonable expectation of success and motivation to combine was based entirely on Birch, a different reference of a different type of connector. [00:02:33] Speaker 00: There was no discussion in the petition on testing. [00:02:38] Speaker 02: So this is the way that I guess I'm understanding this. [00:02:41] Speaker 02: And just correct me where I'm wrong. [00:02:44] Speaker 02: So I took it that the petition said, we've got these references. [00:02:49] Speaker 02: There's a motivation to combine, and there's a reasonable expectation of success. [00:02:55] Speaker 02: Birch kind of provides both of those. [00:02:59] Speaker 02: We're asserted a reasonable expectation of success. [00:03:02] Speaker 02: You come back, and you say, impactful in a response, there wouldn't have been a reasonable expectation of success. [00:03:09] Speaker 02: In fact, there would be serious performance deficiencies that we think would exist, and only testing would tell you. [00:03:15] Speaker 02: They come back and say, we're going to reply to [00:03:18] Speaker 02: to the performance deficiencies point, which is the point you make against reasonable expectation of success. [00:03:25] Speaker 02: And their testing is responsive to that assertion. [00:03:29] Speaker 02: That then eliminates, if you credit it, your performance deficiency point. [00:03:35] Speaker 02: But it leaves in place the reasonable expectation of success point that was in the petition. [00:03:41] Speaker 02: And that's one thing. [00:03:44] Speaker 02: And just finally, the board [00:03:47] Speaker 02: says, doesn't it, that it's going to rely, allow the testing only as rebuttal, not for the affirmative reasonable expectation of success. [00:03:58] Speaker 02: Why is, why is there some procedural or other problem in that? [00:04:02] Speaker 00: OK, let me address both of those, Your Honor. [00:04:04] Speaker 00: So first, the way Your Honor's recounted it, I'd say it's slightly different, which is that their theory on reasonable expectation of success and motivation to combine was based on not one of the references they put forward as one of their cited prior references, but based on Birch. [00:04:21] Speaker 00: And in response, we said Birch is a very different type of connector. [00:04:25] Speaker 00: the differences between Birch and their primary reference, Burroughs 269, would not lead one to take the problem that Birch identifies as this mismatch between shaft and hosel size, [00:04:42] Speaker 00: and apply that to their primary reference boroughs 269. [00:04:46] Speaker 00: There was no indication in the petition, no reliance on testing or anything like that. [00:04:52] Speaker 00: We didn't say there would necessarily be performance issues. [00:04:56] Speaker 00: What we said is that a person of ordinary skill in the art assessing this [00:04:59] Speaker 00: would believe that there may be performance issues and so wouldn't apply a very different connector of birch to the Burroughs 269 type connector. [00:05:09] Speaker 00: Especially modified in the way they did where you essentially remove the particular thing that Burroughs 269 says [00:05:17] Speaker 00: gives it structural rigidity and integrity, their modification would remove that. [00:05:24] Speaker 00: And so we said based on that, based on the language of Burrows 269, you wouldn't take from Birch the solution to this problem and apply it to Burrows 269. [00:05:33] Speaker 02: Then in reply, they're- Do you think that the board, am I remembering correctly that on the question of admitting the evidence in motion to strike or whatever it was, the board said we're going to consider it but for a limited purpose. [00:05:50] Speaker 02: Do you think that the board adhered to that limitation when it's discussion of the evidence? [00:05:58] Speaker 00: Right, so two points to that, Your Honor. [00:06:00] Speaker 00: So first, we think what the board said there was that it would actually, I think the board's words were, eviscerate. [00:06:08] Speaker 00: It would eviscerate the statutory restrictions if Club Champion were allowed to rely on this new testing evidence in their affirmative case. [00:06:18] Speaker 00: And so they're going to consider it just for reply. [00:06:20] Speaker 00: The problem is they didn't adhere to that. [00:06:22] Speaker 00: Or if they did, it was really a name only. [00:06:25] Speaker 00: Because if Your Honors look at, [00:06:27] Speaker 00: the board's final decision this is important in terms of this case if you look at the way they decided the case this is appendix page 45 on the affirmative case right they all the board's analysis was on the affirmative case on appendix 45 is they recite [00:06:45] Speaker 00: petitioners' arguments. [00:06:48] Speaker 00: At the end of that summary, there's a single sentence, one sentence, and all it says is, we find petitioners' motivation to combine evidence to be persuasive. [00:06:58] Speaker 00: There's no analysis or reasoned explanation [00:07:01] Speaker 00: As to the board's analysis there, there's nothing this court can possibly review to say that the board came to a correct or incorrect decision about their affirmative case on motivation to combine an expectation of success. [00:07:15] Speaker 04: Why can't we just read that sentence as adopting all of the reasoning and argument and evidence that was presented by the petitioner that it recounted? [00:07:25] Speaker 00: Well, they don't explain that, Your Honor, and they don't explain that they don't address any of the issues with that from the textual part of Boroughs 269, their primary reference, which talked about keeping the shaft going through the hovel all the way to the bottom. [00:07:41] Speaker 00: They don't address any of the issues with respect to petitioners' analysis on motivation or reasonable expectation of success. [00:07:49] Speaker 00: And then they just switch. [00:07:51] Speaker 00: to the rebuttal mode and then address everything else in terms of rebuttal to our arguments, which then they focus on the testing evidence to quote unquote rebut. [00:08:01] Speaker 00: But if all the board has to do in the affirmative case, right, if this distinction that they contrived between allowing club champion to rely [00:08:10] Speaker 00: on the testing evidence for rebuttal, but not for the affirmative case. [00:08:16] Speaker 00: How does that mean anything if analyzing the affirmative case, all the board has to say is we find it persuasive and then move to rebuttal. [00:08:24] Speaker 00: And that's what happened here. [00:08:27] Speaker 00: we believe sort of evinces the shift and the incorrect shift in putting the burden on TrueSpec to rebut the claim of obviousness rather than on Club Champion to come forward with an affirmative case on motivation and reasonable expectation of success. [00:08:44] Speaker 00: And the reason why is it really is a shift in theory. [00:08:48] Speaker 00: It's a different theory, in our view, to rely on Birch, which is a reference that has a completely different type of connector as showing motivation to combine and reasonable expectation of success, than it is to rely on testing a physical embodiment of their primary reference, Burroughs 269, and basing motivation to combine and reasonable expectation of success on that. [00:09:13] Speaker 00: If you're basing it on Birch, which is what their petition did, [00:09:17] Speaker 00: then this is what we meant in our brief when we said somebody presented with Birch would use Birch, because you have a connector. [00:09:27] Speaker 00: If that was the issue, and as the sports TQ Delta and other cases make clear, it's not enough for motivation to combine an expectation of success to just identify the problem. [00:09:39] Speaker 00: We don't dispute that Burke talks about this issue, this mismatch of shaft and hosel size, but the solution that Burke proposes with respect to its connector, the question is would a person of ordinary skill be motivated to apply that? [00:09:52] Speaker 00: to a very different connector in Burroughs, where Burroughs itself, I mean the language in Burroughs, we talked about it in terms of teaching away, we think it really couldn't be clearer that Burroughs discusses, and I'd cite your honors to Burroughs column three, lines 41 to 51, [00:10:12] Speaker 00: and seven lines 47 to 56, Burroughs talks about its secure and stable two-point connection, and it talks about those two points, and I'm quoting for Burroughs, two points spaced axially by the substantial length of the adapter, insert, and socket. [00:10:29] Speaker 00: So you have the shaft going into its connector, into the hosel, all the way from the top to the bottom, and Burroughs says that is what significantly enhances the structural rigidity and integrity [00:10:42] Speaker 00: of the interconnected components. [00:10:44] Speaker 00: So we understand that Birch points out the issue with that, but that a person of ordinary skill would be motivated to just chop off the shaft of Burroughs and leave a void in the connector, where Burroughs points to that exact thing as what enhances the structural rigidity and integrity of its connector. [00:11:06] Speaker 00: A person of ordinary school would not take that from Birch, which is what their initial argument on motivation to combine and expectation of success was, as opposed to, on reply, this new argument that if you test [00:11:22] Speaker 00: a physical embodiment of Borrows 269 that you then can, that a person of ordinary skill will know then. [00:11:28] Speaker 00: And by the way, that testing was done for the first time in this case. [00:11:31] Speaker 00: There was no indication that testing had ever, anyone at the time had ever done that kind of testing with respect to Borrows 269 and was done using modern test equipment. [00:11:42] Speaker 00: And so there's no indication that even at the time a person of ordinary skill could have come to the conclusions [00:11:49] Speaker 00: that petitioner put forward with respect to motivation and reasonable expectation of success to reach the invention at the time. [00:11:56] Speaker 00: I know I'm going to be getting very close to my rebuttal time, Your Honor, but I did want to talk just for a minute about the objective indicia and the nexus issue, because we think the board did err in a number of different ways with respect to nexus. [00:12:12] Speaker 00: First, the board refused to presume, to have a presumption of nexus, even though [00:12:17] Speaker 00: TrueSpec sells the FASFET connector, which is unquestionably a direct embodiment of the 899 patent. [00:12:26] Speaker 00: All of the components are there. [00:12:28] Speaker 00: It's sold with a sheet and a spec sheet that identifies the method. [00:12:32] Speaker 00: It is a direct and coextensive with the 899 claim, but the board refused to find a presumption of nexus. [00:12:40] Speaker 00: And we think that was error. [00:12:42] Speaker 00: Plus, the board divided the claims into what it called the old parts of the claim and the new parts of the claim. [00:12:51] Speaker 00: And found that the commercial success and Longfell needed to be based specifically on the novel aspects of the invention rather than the claim as a whole. [00:13:01] Speaker 00: And that's contrary to this court's decision in the WBIP v. Kohler case that specifically held proof of nexus is not limited only to when objective indicia is tied to the supposedly, quote, new features. [00:13:15] Speaker 04: Did you make a WBIP argument below to the board? [00:13:19] Speaker 04: I didn't see it in the briefing. [00:13:21] Speaker 00: I'm not sure we knew that the board was going to divide the claims that way, Your Honor. [00:13:27] Speaker 00: We certainly didn't think that that was what it was. [00:13:29] Speaker 04: Well, I thought the board just simply addressed the arguments that you raised, which was the convenience of the interchangeability of the club heads and the club shaft. [00:13:37] Speaker 00: Well, sure. [00:13:38] Speaker 00: But Your Honor, all the arguments we made were based on the claims, in the totality of the claims, with the particular connector that we use and that we sell. [00:13:47] Speaker 00: with respect to the FASFA connector. [00:13:49] Speaker 00: So that connector has all of the limitations of the claim, including what the board found was old in terms of the compression nut, in terms of the shaft adapter, the head adapter. [00:14:00] Speaker 00: All of that is part of the physical commercial embodiment of what's being sold. [00:14:05] Speaker 00: The board just didn't give the totality of that any weight and said, okay, well the only new thing here is [00:14:10] Speaker 00: is you're keeping the shaft outside of the hosel. [00:14:13] Speaker 00: But in reality, that only makes sense with the rest of the connector being sold. [00:14:19] Speaker 00: We're not saying we're the only connector that keeps the shaft outside the hosel, Birch does, but it's a very different type of connector. [00:14:27] Speaker 00: You can't divorce the physical embodiment from the result of that physical embodiment. [00:14:35] Speaker 00: Thank you, Aaron. [00:14:36] Speaker 00: Thank you. [00:14:46] Speaker 01: Good morning, and may it please the court. [00:14:48] Speaker 01: Bill Burgess on behalf of Club Champion. [00:14:52] Speaker 01: I'd like to respond to what the court's been asking my opponent about this morning, the testing evidence and the secondary considerations. [00:14:58] Speaker 01: Before I dive into one or the other, I think important context for both of them is just how narrow this dispute was. [00:15:04] Speaker 01: If you look at our brief at page 18, footnote 2, you see where in the record TSG does not dispute. [00:15:10] Speaker 01: The boroughs discloses all elements of claims 1, 2, 15, and 16. [00:15:15] Speaker 01: This is important because this case is only about the dependent claims 3, 5, and 19. [00:15:20] Speaker 01: And so if you take boroughs and the chef doesn't enter the hosel, you have claims 3, 5, and 19. [00:15:25] Speaker 01: The question for the PTAB was the narrow question whether a skilled artisan looking at burrows would be motivated to keep the shaft outside the hazel and reasonably expect success. [00:15:34] Speaker 01: It wasn't just Birch, but Birch answers that question remarkably clearly. [00:15:38] Speaker 01: You know what the cases say about motivation to combine, it can come from a design need, the nature of the problem to be solved, that sort of thing. [00:15:43] Speaker 01: Birch answers it explicitly. [00:15:45] Speaker 01: At appendix 1437 paragraph 20, it tees up the diameter mismatch problem and the outside the hazel solution. [00:15:51] Speaker 01: importantly at appendix 1437 to 38 paragraph 28 birch says you trim the shaft to compensate for the connector making the whole club longer this was a trade-off it's not just known in the art generally it is explicit in the art so TSG didn't dispute [00:16:06] Speaker 01: our mapping of the priority to burrows can't dispute what Birch actually says. [00:16:09] Speaker 01: It makes two narrow categories of arguments. [00:16:12] Speaker 01: One is secondary considerations, and one is what they say are affirmative reasons not to combine. [00:16:17] Speaker 01: And that's all our reply was responding to. [00:16:19] Speaker 01: This wasn't a new period of motivation to combine a reasonable expectation of success. [00:16:24] Speaker 01: Their argument was that if you trim the shaft of burrows, it is a true fact of science that shortening the shaft would affect whip and launch angle because it alters the weight distribution of the club. [00:16:35] Speaker 01: And you can see this in their patented response at appendix 423. [00:16:38] Speaker 01: They don't say a person would believe this or expect it or predict, but there's no way to know. [00:16:42] Speaker 01: They say keeping the shaft outside the hosel would leave a gap in the hosel board that would alter the overall weight and distribution of the assembled club. [00:16:49] Speaker 01: And they go on, I'm not going to read the whole paragraph. [00:16:52] Speaker 01: Another way you know this is Appendix 2128. [00:16:54] Speaker 01: In response to a question about testing, Burroughs says, he knew that any changes to weight would affect the way the ball flies. [00:17:02] Speaker 01: We knew that if we added a plug, it would have added weight. [00:17:04] Speaker 01: It would have changed the characteristic of the ball flight. [00:17:07] Speaker 01: We knew anything you add in that stack to add weight changes everything. [00:17:10] Speaker 01: This is him responding to our questions about why he didn't do the testing himself. [00:17:14] Speaker 01: In our reply, we had three responses to that. [00:17:17] Speaker 01: First was that weight versus solving the diameter mismatch is a known trade-off, especially in light of prior outside the Hossel connectors. [00:17:24] Speaker 01: You can see that primarily at appendix 524 to 525 of our reply. [00:17:28] Speaker 01: You can also see this in Mr. Burroughs' testimony at 2117, where he admits [00:17:34] Speaker 01: our view, the best reading of that testimony, that this is a trade-off. [00:17:37] Speaker 01: He says there are prior art connectors that do outside the Hossel connections, but the weight distribution and things that were important to Mr. Burroughs were not important to these prior art people. [00:17:45] Speaker 01: It was a trade-off. [00:17:46] Speaker 01: We also say TSG is wrong technically, wrong about the science, wrong about the two-point connection, and wrong that changing the weight distribution of Burroughs would high acceptably affect the club. [00:17:57] Speaker 01: You can see this at appendix 525 to 527. [00:18:00] Speaker 01: You can see this at appendix 1522, which is our Vincent's second expert declaration, where he has an illustration and explains why they're wrong on the science. [00:18:09] Speaker 01: And then when the testing comes in is to confirm our response to their assertion about a true fact of science. [00:18:15] Speaker 01: We say testing confirms that they are wrong. [00:18:18] Speaker 01: And you can see that at appendix 1524, paragraph 32, which introduces the testing. [00:18:23] Speaker 01: Basically, our expert is saying, the testing confirms everything I've just said up until now without mentioning testing. [00:18:29] Speaker 01: And then in Appendix 1551, paragraph 81 is where the testing evidence starts. [00:18:32] Speaker 01: And again, he prefaces that with a note that this is about confirming. [00:18:37] Speaker 01: So it wasn't a new theory. [00:18:39] Speaker 01: My opponent said something about teaching away. [00:18:42] Speaker 01: Appendix 49, the board addresses that and says, we see nothing in boroughs that arises to the level of teaching away. [00:18:50] Speaker 01: pointed something about the structure of the board's opinion. [00:18:53] Speaker 06: I have a question. [00:18:55] Speaker 06: I have a concern about testing. [00:18:59] Speaker 06: It seems to me that it's a slippery slope because it's an entrance or a hindsight. [00:19:10] Speaker 06: Would you agree to that? [00:19:14] Speaker 01: I'm not sure I understand the question. [00:19:19] Speaker 01: I think the board was careful to avoid misuse of the testing. [00:19:23] Speaker 01: Its order admitting the testing for a limited purpose acknowledges that there is a danger in the board's view that this could be used for an improper purpose. [00:19:33] Speaker 01: It agrees with TrueSpec Golf to a limited extent that [00:19:38] Speaker 01: To the extent the testing connects to our expert's initial declaration, the thing it connects to the most is this one paragraph. [00:19:45] Speaker 01: And if you're using the testing to supplement this one point and this one paragraph, that would be problematic. [00:19:51] Speaker 01: But then the board goes on, on the next page, and says, and to avoid that problem, we're going to accept it for this limited purpose, limited purpose of rebutting their affirmative assertion that if you change anything at all about boroughs that affects the weight, then the person for the mayor's study ought to do that. [00:20:07] Speaker 04: piggyback on Judge Reyna's question. [00:20:09] Speaker 04: I guess the question is, would present-day testing, does that really tell us anything about what a skilled artisan at the time of the invention, I don't know, going back 10 years or so, what that person would have thought at that time? [00:20:28] Speaker 04: And is it possible that therefore trying to use present-day testing [00:20:35] Speaker 04: is doing some kind of hindsight bootstrapping and thereby not really answering the relevant question, which is what would skilled artists ten years ago have actually thought about whip? [00:20:53] Speaker 01: I agree with the concern in the question and my point is we weren't offering it for that and the board wasn't using it for that. [00:21:02] Speaker 01: Their assertion wasn't 10 years ago no one would have believed this or no one would have predicted it. [00:21:07] Speaker 01: Their assertion mainly at appendix 423 of their patented response is what would happen. [00:21:13] Speaker 01: This is a true fact of science. [00:21:14] Speaker 01: If you shorten the shaft it will throw off the weight distribution of the golf club. [00:21:18] Speaker 01: And this is them trying, because they can't deny the mapping of burrows to the other elements, and they can't deny what Birch says, they're trying to read Birch narrowly. [00:21:25] Speaker 01: Or sorry, they're trying to read burrows narrowly. [00:21:26] Speaker 01: They're saying, you wouldn't change anything about burrows, because all these considerations in burrows are important. [00:21:32] Speaker 01: It's you showing the show. [00:21:33] Speaker 04: I guess the idea is burrows said, this wouldn't work. [00:21:40] Speaker 04: And then you came back with testing evidence, and basically impeaching burrows as assertion, saying, [00:21:47] Speaker 04: No, it actually does work. [00:21:50] Speaker 04: See? [00:21:51] Speaker 04: Is that what you're essentially saying? [00:21:54] Speaker 01: I think I'd put it slightly differently. [00:21:56] Speaker 01: Burroughs is saying not just that you wouldn't do it because of what we happened to know 10 years ago, but just he's saying you couldn't. [00:22:08] Speaker 01: This is a golf club. [00:22:09] Speaker 01: Weight distribution is important. [00:22:10] Speaker 01: And Burroughs says, my invention relates to top of the line stuff. [00:22:14] Speaker 01: And it's two Burroughs, which he says at the bottom of 2117, the PGA pros uses invention and all that. [00:22:21] Speaker 01: And so what he's saying is that because of the nature of his invention, anything that throws off the weight distribution is just unacceptable. [00:22:30] Speaker 02: You're talking here about Burroughs the Witness. [00:22:34] Speaker 01: Yes, Burroughs the Witness, Burroughs the Declarant. [00:22:38] Speaker 01: This is all that was responding to. [00:22:40] Speaker 01: He was saying this is a true fact about science, not a prediction, not something that may or may not have been known ten years ago. [00:22:48] Speaker 01: And again, as I said at the outset, the one difference between these claims and Burroughs is just short in the shaft. [00:22:55] Speaker 01: And they're saying you wouldn't shorten the shaft because that's an unacceptable change in weight. [00:22:59] Speaker 01: We looked into it. [00:23:00] Speaker 01: We said they're wrong on the science. [00:23:02] Speaker 06: Now, what's the problem when the shaft becomes unstable or it affects performance? [00:23:09] Speaker 01: I think what Burroughs said in his declaration, their point is that the overall balance. [00:23:14] Speaker 01: He said a bunch of things, which we rebutted. [00:23:17] Speaker 01: To this point, what he said was it affects the weight distribution. [00:23:20] Speaker 01: Anything you change in the stack, I think he says at the bottom. [00:23:23] Speaker 01: And that affects performance. [00:23:25] Speaker 01: According to Mr. Burroughs, yes. [00:23:27] Speaker 01: If you have, you start with a Burroughs connector where the shaft is all the way in the hosel and you retract it so the shaft comes outside the hosel. [00:23:34] Speaker 05: So the testing results should be directed only to performance issues. [00:23:40] Speaker 01: That's what the board accepted our testing for is limited direct response to a specific thing Mr. Burroughs said in his declaration. [00:23:51] Speaker 01: I think the question brought out the board's analysis up to that point up to appendix 45 underscores how narrow the dispute is and [00:23:58] Speaker 01: Finds our arguments our affirmative case about motivation to combine and reasonable expects a expectation of success to be persuasive This wasn't a new theory. [00:24:07] Speaker 01: It was in the board correctly founded theory It was a direct response to something they said in their patent owner response. [00:24:14] Speaker 01: We looked into it We explained why it was wrong We explained why this was a known trade-off in the prior art and then we did testing to confirm that they were wrong on the science if anything we might have been a little bit too thorough on that point that this was a [00:24:24] Speaker 01: a side issue that they raised that had no central relevance to anything and we looked into it and we rebutted it and the board didn't act outside of its discretion. [00:24:33] Speaker 02: Can you turn to the secondary considerations and I think principally we heard an argument about error this morning that is about error in not applying the presumption of nexus. [00:24:47] Speaker 02: Yes. [00:24:49] Speaker 02: If I've omitted something that you want to respond to on the secondary [00:24:53] Speaker 02: considerations, please do. [00:24:54] Speaker 02: That's what I remember. [00:24:56] Speaker 01: No, I think that was the point about Nexus. [00:25:00] Speaker 01: I would start by saying that [00:25:02] Speaker 01: You don't even need to reach presumption of nexus because the board gave alternative findings. [00:25:05] Speaker 01: The board has nine pages of analysis from appendix 29 to 37, and it's in two sections. [00:25:10] Speaker 01: In appendix 34, the first full paragraph, the board said, not only did I find no nexus, but I looked at their evidence and found that it was unpersuasive. [00:25:17] Speaker 01: So this is just like the B.E. [00:25:18] Speaker 01: aerospace case we cite in our brief, which is 709 federal appendix 695. [00:25:24] Speaker 01: So the board didn't address nexus. [00:25:25] Speaker 01: I'm sorry. [00:25:25] Speaker 03: There are evidence on nexus. [00:25:27] Speaker 03: The board doesn't have to find it persuasive if there's a presumption, does it? [00:25:33] Speaker 01: So I think I might have jumbled a word in there. [00:25:37] Speaker 01: The board found no nexus in the first part of its analysis. [00:25:40] Speaker 01: And then it looked at its secondary considerations, their supposed commercial success. [00:25:45] Speaker 01: And Wong felt needed in that sort of thing and said, on its own, this evidence is unpersuasive. [00:25:50] Speaker 01: The unpersuasiveness of that evidence, even if you presume nexus, is an independent basis to affirm. [00:25:55] Speaker 01: That's what I was trying to say. [00:25:56] Speaker 01: And I think I might have garbled my words. [00:26:00] Speaker 01: This is like the BE aerospace case. [00:26:03] Speaker 01: This court said the court didn't address nexus at all, but the court affirmed. [00:26:07] Speaker 01: For purposes of our analysis on appeal, we assume that a nexus exists. [00:26:11] Speaker 01: And then this court affirmed because substantial evidence supported the board's weighing. [00:26:14] Speaker 01: Another example of the same thing is the shoes by firebug case versus stride right. [00:26:18] Speaker 01: 962 F 1362 or 1372. [00:26:22] Speaker 02: Putting that aside, which may be sufficient for the disposition of secondary considerations, can you address the asserted error in not finding nexus? [00:26:36] Speaker 01: Sure. [00:26:36] Speaker 01: I think that my opposing counsel's arguments focused on the presumption of nexus and one of your questions [00:26:45] Speaker 01: I think as your questions brought out, this was the board answering the way they argued this case. [00:26:52] Speaker 01: The board quotes their Patent Owner response for where they say the nexus lies and they made two arguments. [00:26:58] Speaker 01: They said there is a nexus, the success of the status fit connector is due to the outside the hosel connection and they said it's because you don't have to [00:27:08] Speaker 01: make any alterations to the heads and the shafts. [00:27:10] Speaker 01: And everything the board says in that part is entirely appropriate with respect to presumption of nexus. [00:27:17] Speaker 01: The no need for modification point, it's not in the claims, and that's proper rebuttal on the question of co-extensiveness, which is relevant to the presumption of nexus. [00:27:25] Speaker 01: And the rest of it is just the board looking at it, looking at the simple point that nexus is about whether the supposed [00:27:35] Speaker 01: commercial success or industry praise or that sort of thing is tied to what's new and in the claims. [00:27:40] Speaker 01: And there's a reference to WBIP. [00:27:42] Speaker 01: I agree with Judge Chen's question. [00:27:43] Speaker 01: They didn't make a WBIP argument below, but WBIP says a few different things about commercial success. [00:27:49] Speaker 01: It says it may be linked to an individual element, or in other circumstances, it could be linked to the inventive combination of known elements. [00:27:55] Speaker 01: These are fact questions. [00:27:57] Speaker 01: This is A29, F30, 1332. [00:27:59] Speaker 01: It says, these are highly fact-dependent questions, not resolvable by appellate-created categorical rules. [00:28:04] Speaker 01: In this case, what was going on with the presumption of nexus was simply the board looking at their arguments and explaining why they're unpersuasive. [00:28:11] Speaker 01: The outside the House limitation, again, this is a really narrow dispute because they don't dispute our mapping of boroughs to the broader claims. [00:28:17] Speaker 01: This is only about the outside the House limitations. [00:28:20] Speaker 01: And this was their argument for why there was a nexus. [00:28:22] Speaker 01: And the board's comments on that, I thought, were entirely appropriate. [00:28:26] Speaker 01: I'm not sure if that fully answers your question or not. [00:28:28] Speaker 02: Well, I guess, I don't know if this is different from what we've just been discussing. [00:28:35] Speaker 02: We see often the argument for nexus based on the idea that the product embodies the pattern, and that's clearly insufficient. [00:28:44] Speaker 02: The key question is whether it's coextensive, which is a question about whether there is more [00:28:54] Speaker 02: typically is the question, whether there is more of the product than is identified in the claim. [00:28:58] Speaker 02: Was there a dispute about that? [00:29:01] Speaker 02: Was it FASFIT? [00:29:02] Speaker 02: Is that the name of the product? [00:29:04] Speaker 01: I believe FASFIT is the name of the product that we're talking about. [00:29:08] Speaker 02: Did you have an argument that FASFIT has features in it that are not claimed here? [00:29:16] Speaker 01: I don't think that was our argument. [00:29:18] Speaker 01: I mean, I think we disputed the no need for modification point, and to me that's a co-extensive argument. [00:29:25] Speaker 01: But other than that, I don't recall that we argued that Fez, that any commercial success was due to other factors. [00:29:34] Speaker 01: Our primary argument was [00:29:36] Speaker 01: there is actually no commercial success, and their evidence of commercial success is really far removed from the invention data. [00:29:41] Speaker 01: I mean, that goes to the weighing. [00:29:42] Speaker 01: That's what the board says in Appendix 34 to 37. [00:29:45] Speaker 01: It didn't come up in the opening, but you think the board's criticisms are entirely appropriate, including the evidence that cites those criticisms, and that's a sufficient basis to affirm. [00:29:55] Speaker 01: But to answer your question directly, I think our main argument on coextensiveness was about whether you actually [00:30:04] Speaker 01: What was about the FASFIT and the idea that you don't necessarily need to modify the head of the shaft? [00:30:11] Speaker 06: There was some discussion as to the Harvey reference being an antiquated reference. [00:30:19] Speaker 06: I think it was 80 years old. [00:30:20] Speaker 06: Does that really pose a problem here? [00:30:22] Speaker 01: I don't think it does primarily because our primary reference was Burroughs, and that discloses most of the elements. [00:30:28] Speaker 01: So this isn't a case like Leo, where the primary references were from 1978, 1986, and this is a 2000 patent. [00:30:35] Speaker 01: Our primary reference was Burroughs. [00:30:36] Speaker 01: It's from 2005. [00:30:38] Speaker 01: And the only difference between Burroughs and these claims is you take the shaft outside the hosel. [00:30:42] Speaker 01: They had two grounds. [00:30:43] Speaker 01: One was Burroughs alone, and the other was Burroughs in light of Hartley. [00:30:46] Speaker 01: And the main point of Hartley is just that it is directed to the same problem and discloses very similar structures. [00:30:53] Speaker 01: And there it just said, first compiling on, we'd said in 1997 club makers are treatists, and the board cites this too, which mentions Hartley by name in 1997 as relevant to modern day club design. [00:31:04] Speaker 01: This is ultimately a fact question, and the board's consideration of Hartley is supported by substantial evidence. [00:31:09] Speaker 01: OK. [00:31:09] Speaker 06: I think we have your answer. [00:31:11] Speaker 06: OK. [00:31:11] Speaker 06: Thank you. [00:31:15] Speaker 00: Thank you, Your Honor. [00:31:18] Speaker 00: Your Honors, I'd like to start with the point Council is making with respect to the testing evidence rebutting Mr. Burroughs' testimony. [00:31:27] Speaker 00: And if Your Honors look in the appendix, this is appendix 5834. [00:31:32] Speaker 00: It's paragraph 32 of Mr. Burroughs' declaration. [00:31:37] Speaker 00: What Mr. Burroughs says is, this I'm quoting in paragraph 32, for example, a posita would have expected that a club assembled using a temporary connector [00:31:48] Speaker 00: like the 269 patent, but without the shaft fully inserted into the haze of oil, would perform very differently from and would not actually reflect the performance of a club assembled from the same club head and shaft, etc. [00:32:01] Speaker 00: Mr. Burroughs's declaration is framed entirely in terms of what a person of ordinary skill in the art would expect. [00:32:07] Speaker 00: from having the Boroughs 269 reference in front of them. [00:32:11] Speaker 00: It wasn't some scientific argument with respect to this has to happen. [00:32:15] Speaker 04: Was Boroughs also deposed? [00:32:17] Speaker 00: Boroughs was also deposed. [00:32:18] Speaker 04: OK. [00:32:20] Speaker 04: I recall opposing counsel referring to the deposition test. [00:32:23] Speaker 00: Correct, John. [00:32:24] Speaker 00: And at his deposition, he was asked different questions about what would happen under certain scenarios. [00:32:30] Speaker 00: And in some cases, he said, well, we wouldn't know that. [00:32:33] Speaker 00: I wouldn't know that unless you tested things. [00:32:36] Speaker 00: So for them to then say, OK, well, now we're going to go out and test the modification that was a modification that Mr. Burroughs never made, never tested, but the modification that they put forward, which is, [00:32:49] Speaker 00: where you have those 269 that has the shaft going all the way through the hosel, we're just going to cut the shaft out and leave a void in the very spot that Barlow refers to as needing structural rigidity and integrity. [00:33:04] Speaker 00: The argument that we put forward was that a person of ordinary skill would not have a motivation to do that and would not have a reasonable expectation of success in doing that. [00:33:16] Speaker 00: And this after the fact testing does admit to hindsight. [00:33:19] Speaker 00: and does, we think, admit to sort of the way the board did it, shifting the burden. [00:33:24] Speaker 00: It's not a, you know, council set it up as there's this binary choice between shaft in the hosel, shaft outside the hosel. [00:33:31] Speaker 00: And the only thing that's different here is the shaft is outside the hosel. [00:33:35] Speaker 00: But the reality is there's many, and the director reflects this, [00:33:38] Speaker 00: there's many different design choices that go in different directions and competing directions with respect to designing one of these connectors. [00:33:46] Speaker 00: So simply saying we're going to keep the shaft outside the hosel, the question is, well, how does that affect the rest of the design? [00:33:53] Speaker 00: And where you have a design like Burrows 269 with the shaft intentionally put into the hosel, [00:33:58] Speaker 00: Just saying, well, the only difference is we're going to take the shack outside the hosel. [00:34:02] Speaker 00: That doesn't reflect the way a club designer and a designer of these connectors would approach the problem, which is what Mr. Burroughs was discussing in his declaration and at his deposition. [00:34:14] Speaker 00: I would also just talk about the secondary edition just for another moment because I think Your Honor's question with respect to the presumption of nexus really hit it on its head. [00:34:29] Speaker 00: There was no argument here on coextensiveness. [00:34:32] Speaker 00: The FASFIT is coextensive. [00:34:33] Speaker 00: That was the argument that we put forward. [00:34:35] Speaker 00: There's evidence of that in the record in terms of what it looks like and how it functions. [00:34:40] Speaker 00: This isn't like the FASFIT was a component of some larger product that's being sold. [00:34:47] Speaker 00: It is exactly the connector that's discussed in the 899 patent. [00:34:51] Speaker 00: And so then to say, we're not going to presume nexus, but we're going to then look at the evidence, well, that the presumption then affects the way the board, the lens through which the board views the rest of the evidence on commercial success. [00:35:06] Speaker 00: And in addition to the error on presumption, the board erred in this case in... Can a product be co-extensive with a method claim? [00:35:17] Speaker 04: Yes, Your Honor, we believe we can. [00:35:20] Speaker 04: method of assembling a golf club, right? [00:35:23] Speaker 00: Correct. [00:35:23] Speaker 00: It's a method of assembling a golf club. [00:35:25] Speaker 04: And the product is just the connector itself. [00:35:29] Speaker 04: It's not the golf club head. [00:35:32] Speaker 04: It's not the golf club shaft. [00:35:34] Speaker 04: It's just the connector. [00:35:37] Speaker 00: That's true, Your Honor. [00:35:38] Speaker 04: So I guess, you know, maybe theoretically, yes, a product can represent co-extensiveness with a claimed method, but I would imagine there's other times where it wouldn't. [00:35:51] Speaker 00: Well, there may be times around it where it's not, but certainly there's no rule that I know that a product can't be coextensive with the method. [00:35:58] Speaker 00: And especially in this situation, if you look at the product, as we put in below and here, and review the method, that is exactly the components that are discussed in the 899 patent are all there. [00:36:11] Speaker 00: And they all function exactly the way the 899 patent lays out in the method. [00:36:16] Speaker 00: So it's not a code sense of this issue, and the board's analysis on this point, and the board decided this case before this court's decision in the Kimores case, which we cite in our briefing as well, discussing the [00:36:31] Speaker 00: One of the things the board did here is basically say we're not going to give very much weight to the commercial success arguments because there was no discussion of market share. [00:36:41] Speaker 00: First of all, that's factually incorrect. [00:36:43] Speaker 00: There was discussion of market share. [00:36:45] Speaker 00: But second of all, the market share, this court decided that you don't need market share evidence in order for commercial success to be an appropriate consideration. [00:36:56] Speaker 00: And the board was just looking for context. [00:37:02] Speaker 00: But if you read the board's decision here, what they said was, we didn't put in evidence of market share, and therefore that's the end of the inquiry, essentially. [00:37:13] Speaker 00: And the market share point, it wasn't just [00:37:16] Speaker 00: 85,000 connectors, we had evidence that it takes about 150 connectors to open a store. [00:37:21] Speaker 00: And so 85,000 connectors is more than 500 individual club fitting stores. [00:37:27] Speaker 00: And there was evidence that 109 club fitters on the golf digest list of top club fitters used the FASFIT. [00:37:35] Speaker 00: And there were articles about club connects and how important it is to the golf industry. [00:37:39] Speaker 00: So this was not devoid of context. [00:37:41] Speaker 00: It was error by the board in the way they considered the evidence. [00:37:43] Speaker 05: Do you want to conclude?