[00:00:00] Speaker 02:
All righty.

[00:00:00] Speaker 02:
Our first case for argument today is 24-1309, BJ Energy Solutions versus Evolution Well.

[00:00:09] Speaker 02:
Mr. Robinson, please proceed.

[00:00:13] Speaker 03:
May it please the court.

[00:00:14] Speaker 03:
Eagle Robinson with Norton Rose Fulbright on behalf of Appellant BJ Energy Solutions.

[00:00:19] Speaker 03:
The board's final written decision should, at a minimum, be vacated and remanded.

[00:00:24] Speaker 03:
Should the court be so inclined, the lack of substantial evidence on necessary underlying factual findings also provide ample basis to outright reverse.

[00:00:32] Speaker 03:
This is true for four reasons.

[00:00:34] Speaker 03:
First, the board relied on hindsight testimony of BJ's expert as a linchpin of both sets of obviousness conclusions.

[00:00:42] Speaker 03:
Second, the board failed to satisfy its APA obligations in each of its obviousness grounds by failing to explain the reasoning behind the decisions that it made.

[00:00:52] Speaker 03:
Third, for the Sanborn-Nates combination, the board misapplied the legal standard for determining that Nates is an Al-Ghazard.

[00:00:59] Speaker 03:
And fourth, for both sets of obviousness grounds, the record lacks substantial evidence for the underlying factual findings necessary prior to the board's sets of obviousness grounds.

[00:01:12] Speaker 03:
Beginning with the board's reliance on Dr. King's testimony that the invention of the 049 patent is an option for fracking.

[00:01:23] Speaker 03:
Both parties agree that Dr. King was asked about figure one of the 049 patent.

[00:01:27] Speaker 03:
Figure one is not a prior art figure.

[00:01:29] Speaker 05:
How the board understood Dr. King's testimony is something we give deference to.

[00:01:33] Speaker 05:
Is that right?

[00:01:36] Speaker 03:
I'm sorry, Your Honor.

[00:01:36] Speaker 03:
I didn't catch the first part.

[00:01:37] Speaker 03:
Go ahead.

[00:01:38] Speaker 05:
How the board understood Dr. King's testimony is something that our court gives deference to.

[00:01:46] Speaker 05:
Is that right?

[00:01:48] Speaker 03:
Your Honor, EWS has certainly argued that the board was entitled to make a finding, that that testimony was a prior art perspective.

[00:01:57] Speaker 03:
But the court criticized the PTAB in New Basis.

[00:01:59] Speaker 04:
So we do give deference to the board's findings as to Dr. King's testimony?

[00:02:05] Speaker 03:
Had that finding been reasoned and explained, then perhaps there would be a basis for giving deference to it.

[00:02:11] Speaker 03:
The court in New Basis criticized the PTAB for a similar argument, that a finding should be allowed to be implicit.

[00:02:19] Speaker 03:
and said that there, that the board failed to explain the reasons for a conclusion.

[00:02:26] Speaker 03:
Here, the board fails to explain why or how it could have interpreted that testimony, addressing figure one, an embodiment of the claimed invention, how it could have interpreted that testimony as being from a prior perspective.

[00:02:40] Speaker 03:
There's no articulated basis for interpreting it in that way.

[00:02:43] Speaker 05:
Well, he gave that testimony, that deposition, in 2023, right?

[00:02:48] Speaker 05:
And we're talking about a priority date in 2013.

[00:02:51] Speaker 05:
Is there something in those 10 years in the art of, in the relevant art here that would lead one to wonder if maybe it was a pump motor pump is a suitable option in 23, but wouldn't have been a suitable option in 2013?

[00:03:09] Speaker 03:
Your honor, I would say that there is

[00:03:12] Speaker 03:
things missing from the ARC that would lead it to affirmatively believe that it was not a suitable option, specifically that there is not a single example in the record of a prior ARC system pump motor pump configuration that was capable of, much less suitable for, fracking.

[00:03:27] Speaker 03:
EWS makes a lot of the Jang reference with a J as being a fracking system that included a pump motor pump configuration.

[00:03:34] Speaker 03:
But both sides experts agree that that pump motor pump configuration was an ancillary element, that it was not capable of fracking.

[00:03:42] Speaker 03:
that the pumps that Jang actually used for fracking were not in that configuration.

[00:03:46] Speaker 05:
So what if we feel like we must give deference to the board on Dr. King's testimony?

[00:03:53] Speaker 05:
Then where does that leave us?

[00:03:56] Speaker 03:
Even if the board were to reach that conclusion, there are other bases for both vacating and for reversing.

[00:04:03] Speaker 03:
Specifically, in terms of APA obligations, as one example, the board explained that

[00:04:11] Speaker 03:
Patent owner BJ's motion to strike had merit, that it would not be relying on parts of the reply that were subject to that motion to strike.

[00:04:22] Speaker 03:
And then it explicitly did rely on parts of that reply that were subject to motion to strike.

[00:04:27] Speaker 03:
So that's one example where the board on its face in its final written decision has taken an action inconsistent with what it said it was going to do while not resolving the merits of what it said was a meritorious motion to strike.

[00:04:39] Speaker 03:
Now, that's one example, but it's relevant because the petition and EWS's expert did not support and the board did not provide reasoning.

[00:04:50] Speaker 05:
This is for the Zang-Stout combination, right?

[00:04:53] Speaker 05:
I don't think what you're arguing now about the motion to exclude, motion to strike, is as relevant to the other combination.

[00:05:03] Speaker 05:
In fact, I'm sorry.

[00:05:05] Speaker 05:
Zambor needs that combination.

[00:05:08] Speaker 03:
It is relevant to Sandborne Nates, specifically because the board explicitly said at page 626 of the appendix that it was dismissing patent owners' arguments for the same reasons set forth above for the Zang-Stout combination.

[00:05:21] Speaker 05:
I guess the point is that with the Sandborne Nates, the board found that Sandborne itself teaches using a motor with two pumps, right?

[00:05:35] Speaker 05:
That is what the board found.

[00:05:37] Speaker 05:
And it just became a question of, well, where are we going to orient the pumps vis-a-vis the motor?

[00:05:45] Speaker 05:
And so because of what Sanborn already teaches, then we don't have to worry so much about whether we would even select using a motor with two different pumps, which is, I guess, the problem you want to raise with the other combination.

[00:06:05] Speaker 03:
Your Honor, even in that instance, well, there are a number of issues with that Sanborn-Nates combination.

[00:06:12] Speaker 03:
First, if we focus just on this issue that you're asking about, that Sanborn suggests that a single motor can drive two pumps, Sanborn doesn't say how a single motor can drive two pumps.

[00:06:21] Speaker 03:
Sanborn says there are options known in the art.

[00:06:24] Speaker 03:
Well, the art is fracking systems.

[00:06:27] Speaker 03:
The board explicitly found that Nates is not in the field of Sanborn.

[00:06:30] Speaker 03:
So to the extent we look at that as a teaching suggestion or motivation, it's not referring

[00:06:36] Speaker 03:
to NAITS, which is not in the same field.

[00:06:39] Speaker 03:
If we go one step further to how do we actually drive two pumps with one motor, certainly if you're looking to known configurations in this fracking art, a pump motor pump is not in it.

[00:06:50] Speaker 03:
There is no example of a pump motor pump configuration being suitable for fracturing.

[00:06:54] Speaker 03:
It's just not there.

[00:06:56] Speaker 03:
And then if we look at what the board actually said about simplification, which is the only motivation that was credited, sorry,

[00:07:05] Speaker 03:
the only motivation in addition to the teaching suggestion motivation, which again referred to a different field than NAITS.

[00:07:11] Speaker 03:
If you look at simplification and what the board actually said, there's no benefit of simplification.

[00:07:16] Speaker 03:
What the board says is essentially eliminating a motor is a benefit in and of itself.

[00:07:23] Speaker 03:
But the board overlooks that we're not just taking away one of two motors.

[00:07:27] Speaker 03:
We have to replace that with a bigger motor.

[00:07:30] Speaker 03:
And so Sanborn, the board starts with one motor driving two pumps.

[00:07:34] Speaker 03:
And it says, well, you would simplify it by removing a transfer case.

[00:07:39] Speaker 03:
And in fact, what the board said at page 626 of the appendix is, we understand petitioner argue that directly driving each of the two pumps with one motor, rather than driving the pumps in another manner, such as serially, would eliminate the need for additional equipment that would otherwise be needed to drive two pumps.

[00:07:56] Speaker 03:
Petitioner provides examples of such additional equipment that would not be needed, including a transfer case, presumably

[00:08:03] Speaker 03:
to split power from a single motor into two pumps.

[00:08:05] Speaker 03:
We find this argument persuasive.

[00:08:08] Speaker 03:
The problem here is there's no comparison within Sanborn of eliminating a transfer case.

[00:08:12] Speaker 05:
In fact, if you look down on that same page with the board was getting at was we have to start with a premise with Sanborn.

[00:08:23] Speaker 05:
It already teaches the notion of having a motor driving two pumps.

[00:08:28] Speaker 05:
So now the next question is,

[00:08:30] Speaker 05:
Where are we going to put those two pumps in relation to the motor?

[00:08:33] Speaker 05:
There's two options, motor pump pump or pump motor pump.

[00:08:40] Speaker 05:
And then the board right there is basically agreeing with the petitioner that there's a lot of problems and extra complications when you do a configuration of motor pump pump.

[00:08:51] Speaker 05:
So that's why there'd be a stronger motive to do pump motor pump, which is your claimed invention.

[00:08:58] Speaker 03:
Respectfully, Your Honor, there's no basis to conclude that those are the only two options.

[00:09:03] Speaker 03:
The petitioner didn't establish that, and the record doesn't establish that.

[00:09:06] Speaker 03:
There are multiple options that are in the record for fracking.

[00:09:09] Speaker 05:
What would be another configuration?

[00:09:11] Speaker 03:
Well, within the... That's kind of like motor pump pump.

[00:09:17] Speaker 03:
So within a motor driving two pumps, there are serial configurations, there are parallel configurations,

[00:09:23] Speaker 03:
The only configuration that's not in the record for fracking is pump motor pump.

[00:09:27] Speaker 03:
But even within one pump driving multiple motors, there are multiple configurations that are possible.

[00:09:33] Speaker 03:
Notably here, the board said, we're going to eliminate a transfer case.

[00:09:36] Speaker 03:
But on that same page, paragraph 626, that was the simplification there.

[00:09:39] Speaker 03:
We're going to eliminate a transfer case.

[00:09:41] Speaker 03:
But on that same page, 626, the board credits a description from EWS's expert describing the same serial configuration that it's reportedly comparing to, and it doesn't include a transfer case.

[00:09:53] Speaker 03:
So there is no basis to say we're going to simplify this configuration by foregoing a transfer case.

[00:09:59] Speaker 03:
There are multiple configurations in the record that are not pump motor pump.

[00:10:04] Speaker 03:
And so the board is left with this simplification theory with Sanborn and Nates, two very disparate fields of saying we're going to forego this.

[00:10:13] Speaker 03:
But the comparison is a ghost.

[00:10:15] Speaker 03:
It's ephemeral.

[00:10:17] Speaker 03:
In one instance, it has a transfer case that we're going to forego in the same

[00:10:20] Speaker 03:
page that the board credits, it doesn't have a transfer case that we're going to forego.

[00:10:26] Speaker 03:
So the board doesn't have a reference point with which to compare.

[00:10:31] Speaker 03:
With that, I see that I'm into my rebuttal time.

[00:10:33] Speaker 03:
If you're honest and have any other questions, I'll be happy to answer them.

[00:10:36] Speaker 03:
Otherwise, I'll reserve the rest of my time.

[00:10:37] Speaker 02:
Sounds good.

[00:10:39] Speaker 02:
Thank you, Mr. Robinson.

[00:10:40] Speaker 02:
Mr. Darby?

[00:10:59] Speaker 00:
Good morning, and may I please support Kenneth Darby for the Appellee Evolution Well Services.

[00:11:04] Speaker 00:
We ask that you affirm the board's decision because it is thoroughly explained and amply supported by substantial evidence.

[00:11:10] Speaker 00:
I'll pick up on the Sanborn-Mates combination, what we left off the council's presentation.

[00:11:15] Speaker 00:
And Judge Chen, you're right on in terms of Sanborn expressly teaching and the board made a factual finding on this.

[00:11:22] Speaker 00:
As Sanborn teaches to drive multiple pumps with a single motor, and that's AA625,

[00:11:28] Speaker 00:
And so once we have that expressed teaching in the Sanborn reference, we look to the person of skill in the art to determine which configuration to use in order to do that.

[00:11:39] Speaker 00:
And pump, motor, pump was one of the known configurations.

[00:11:42] Speaker 00:
There was some talk about the Jang reference with a J. Make no mistake, that is a reference about hydraulic fracturing.

[00:11:52] Speaker 05:
And so if I could point you- It's a different order of magnitude when it comes to the motor and the pump though, right?

[00:11:58] Speaker 00:
That's correct.

[00:11:58] Speaker 00:
It's not a fracturing setup that's like on a trailer that you would drive to a frac site.

[00:12:03] Speaker 00:
It's a downhill tool for fracking.

[00:12:06] Speaker 00:
And yet it's hydraulic fracturing nonetheless.

[00:12:08] Speaker 00:
And so when we ask ourselves, what would a person of skill in the art have known, would they have known about pump motor pump in the context of fracturing?

[00:12:15] Speaker 00:
They absolutely would have.

[00:12:17] Speaker 00:
And there's nothing in the law that would require it to have been exactly in the context of the patent.

[00:12:24] Speaker 00:
We would be talking about anticipation if that were the case.

[00:12:27] Speaker 00:
But what we have is we have a clear teaching in the art in Sanborn to drive multiple pumps with a single motor.

[00:12:34] Speaker 00:
We have a known configuration in terms of pump motor pump.

[00:12:37] Speaker 00:
which was used in all sorts of different contexts, including in hydraulic fracturing.

[00:12:42] Speaker 02:
And getting from one place to the other is the very sort of thing that we rely on the person's skill and the art to get us from A to B. Council's argument about Dr. King, I'm looking in particular at pages 2394 and 2395 of the appendix.

[00:13:01] Speaker 02:
I think that's the testimony they point to.

[00:13:04] Speaker 02:
What response do you have to their argument that Dr. King is testifying very much in a present voice is, would be, and not in a voice that recognizes that the time period that's relevant is the time of invention and not the present day?

[00:13:22] Speaker 00:
He is talking about the 049 patents, figure one.

[00:13:25] Speaker 00:
That's what he was asked about.

[00:13:26] Speaker 00:
And we were upfront with the board about that.

[00:13:28] Speaker 00:
We had a talk with them at the oral hearing, and we made that very point.

[00:13:33] Speaker 00:
Here's what happened.

[00:13:34] Speaker 00:
The pump motor pump configuration of the 049 patent, we asked him during deposition, do your drawbacks apply to figure one of the 049 patent, that pump motor pump?

[00:13:45] Speaker 00:
Yes, he said, they all apply.

[00:13:47] Speaker 00:
Okay, and is the pump motor pump configuration still fine?

[00:13:51] Speaker 00:
He says, yes, it's fine.

[00:13:53] Speaker 00:
Here, Judge Chinti, your earlier question, is there anything new that's happened between the 049 patent and the critical date and the present tense?

[00:14:03] Speaker 00:
I would submit that the answer is no.

[00:14:05] Speaker 00:
In fact, the 049 patent concedes that a lot of the technology is already known.

[00:14:09] Speaker 00:
But importantly, what the board did here is what we explained to them, which is if all of the drawbacks apply to 049 pump motor pump, and there's no distinction between the prior arc pump motor pump, that it's appropriate for the board as the fact finder to make a reasonable inference, which is if it's fine for 049, it's also fine for the prior arc pump motor pump.

[00:14:29] Speaker 00:
And so that's the reasonable inference that the board made.

[00:14:32] Speaker 00:
And I would submit that it's not a necessary component of the board's final written decision.

[00:14:38] Speaker 00:
And so I would also say that the court doesn't need to reach that issue necessarily in order to affirm the board.

[00:14:43] Speaker 00:
If you were to take those sentences about Dr. King's testimony and let's just say we wiped them out of the final written decision altogether and we just pretend they didn't exist, would the result be any different?

[00:14:54] Speaker 00:
we submit the answers no, because the board had already made the necessary factual findings.

[00:14:58] Speaker 00:
It already found a motivation.

[00:15:00] Speaker 00:
It already looked at the drawbacks and found that those weren't credible and that they were unavailing.

[00:15:04] Speaker 00:
And so again, we would submit that that's not a necessary part of the board's decision, and you don't actually need to reach it.

[00:15:12] Speaker 00:
But it's definitely a fact issue.

[00:15:14] Speaker 00:
Interpreting the expert testimony, making reasonable inferences from it is the role of the fact finder, and it's a fact question to which the substantial evidence standard applies.

[00:15:24] Speaker 01:
So are you conceding that Dr. King's testimony was about the present day when he was talking about that there were some benefits to this combination?

[00:15:37] Speaker 00:
I wouldn't consider he's talking about present day.

[00:15:39] Speaker 00:
I do think he was talking about the 049 Patents Figure 1, and that's what we asked him about.

[00:15:43] Speaker 00:
And what we're saying, though, is that the board made a reasonable inference from there.

[00:15:47] Speaker 00:
It doesn't apply only to the 049 Patents Figure 1.

[00:15:49] Speaker 00:
It applies equally to the prior art as well, because there's no distinction between them.

[00:15:54] Speaker 00:
So if his drawbacks don't make pump motor pump unsuitable for 049, those same drawbacks also

[00:16:00] Speaker 00:
don't make the prior art unsuitable either.

[00:16:03] Speaker 00:
Both of them are fine.

[00:16:04] Speaker 00:
And that's the way the board interpreted the testimony.

[00:16:06] Speaker 00:
And that's the way the board drew reasonable inference from the testimony.

[00:16:09] Speaker 02:
Well, I mean, the question isn't, would it have made them unsuitable?

[00:16:13] Speaker 02:
The question is, what would a skilled artisan have understood at the time about them?

[00:16:16] Speaker 02:
Right?

[00:16:17] Speaker 00:
That's correct.

[00:16:18] Speaker 00:
Absolutely correct.

[00:16:19] Speaker 00:
So the point of the testimony... Your inference is fair.

[00:16:22] Speaker 02:
If these drawbacks are true with regard to 049, the same drawbacks are true, but not necessarily where those drawbacks known to a skilled artisan at the time.

[00:16:32] Speaker 02:
I think that... The motivation combined portion, right?

[00:16:35] Speaker 00:
I think that's fair, and I agree that we need to be taking the perspective of the skilled artisan.

[00:16:39] Speaker 02:
At the time of the invention.

[00:16:40] Speaker 00:
At the time of the invention, absolutely.

[00:16:43] Speaker 00:
And I think when we're looking at the testimony, it's really about

[00:16:47] Speaker 00:
undermine the credibility of these drawbacks being something that would render pump motor pump unsuitable.

[00:16:52] Speaker 00:
So when we ask ourselves, are these the kind of show-stopping drawbacks that would make it unsuitable, I think Dr. King is pretty clear that he doesn't think they are.

[00:17:02] Speaker 00:
And again, the board had already made findings on the drawbacks and found them unavailing and unpersuasive.

[00:17:07] Speaker 00:
And that was all setting aside Dr. King's testimony.

[00:17:10] Speaker 00:
It doesn't come into play at all, because there were drawbacks that we had, the back and forth about that.

[00:17:16] Speaker 00:
It was a battle of the experts on that.

[00:17:17] Speaker 00:
One of them was reliability.

[00:17:19] Speaker 00:
BJ Energy Solutions said you would need a bigger motor, and the bigger motor wouldn't be as reliable.

[00:17:23] Speaker 00:
That turned out to not be credible, because the experts hadn't looked at the underlying data.

[00:17:27] Speaker 00:
And there was no credible evidence on that, for example.

[00:17:29] Speaker 05:
So one concern with the board decision is that it refused to consider the patent owner's motion to exclude portions of your reply, as well as portions of your expert supplemental declaration, because the board said it wasn't going to consider any of those.

[00:17:50] Speaker 05:
So it didn't need to rule on the motion.

[00:17:53] Speaker 05:
And yet, at the same time,

[00:17:55] Speaker 05:
in the board decision in different places, it actually cites to and relies on some of that content that the Patent Honor sought to exclude.

[00:18:04] Speaker 05:
So it seems like there's some confusion here as to what the board's intentions were and whether there's a defect in the board's decision on that score.

[00:18:15] Speaker 05:
Can you comment on that?

[00:18:17] Speaker 00:
Absolutely.

[00:18:17] Speaker 00:
I think the answer to that question is that the board didn't rely on anything that BJ Energy Solutions complained about in terms of being impermissible, new argument, or evidence.

[00:18:27] Speaker 05:
And so the motion to strike... Well, I thought the motion to the strike included some of your rebuttal on the question of this proposed combination would require a larger motor, which would have a much higher failure rate, and also at the disadvantage of having a single point of failure with only one motor as opposed to having two motors.

[00:18:46] Speaker 05:
And that was content that they wanted to exclude.

[00:18:51] Speaker 05:
The board promised it wasn't going to rely on any of your argument or evidence, and then, in fact, did rely on some of that argument and evidence.

[00:19:00] Speaker 05:
So therein is the problem.

[00:19:02] Speaker 00:
My recollection of the motion is that it

[00:19:06] Speaker 00:
It sought to strike large swaths of the reply and so on and so forth.

[00:19:12] Speaker 00:
But when you look at the arguments, the actual things that they complained about being impermissible and being new, I don't believe it was the items that the board relied upon.

[00:19:21] Speaker 00:
I recall them complaining about issues like cost savings and space savings and those sorts of things as being impermissibly new.

[00:19:29] Speaker 00:
I don't recall them arguing that the response, which was a responsive argument, they raised these new reliability concerns and we responded to those.

[00:19:39] Speaker 00:
I don't recall that being part of what they were asking to strike.

[00:19:43] Speaker 00:
Although, to your point, there were large sections of the reply that they

[00:19:47] Speaker 00:
that they sought to exclude, but I think what the board was doing here, and it was reasonable to do it this way, is if we're not going to rely on that which you're complaining about, the motion truly is moot.

[00:19:57] Speaker 00:
I understand that you've asked to basically strike the entirety of the reply.

[00:20:02] Speaker 00:
But the things you're complaining about aren't the things that they're relying on.

[00:20:04] Speaker 00:
I think that's what the board was saying.

[00:20:06] Speaker 00:
And I think that's what the board's faithfully did.

[00:20:07] Speaker 00:
I don't think they relied upon anything that BJ Energy Solutions actually said was new and improper.

[00:20:12] Speaker 00:
The response to the reliability issue, for example, and that's clearly a responsive argument, it wasn't a new theory of patentability or anything of that regard.

[00:20:20] Speaker 05:
I guess I'm wondering, is the Sanborn-Nates combination

[00:20:25] Speaker 05:
a cleaner combination in terms of getting away from this motion to strike motion to

[00:20:37] Speaker 00:
It can be.

[00:20:37] Speaker 00:
In terms of the responsive arguments, I think they would apply to both because they argued the drawbacks for both grounds to be fair.

[00:20:45] Speaker 00:
But in terms of some of the comparison and space constraints things, I think it's possible that those apply more to the Yang-Stout combination.

[00:20:53] Speaker 05:
I mean, Sanborn already has a single motor driving two pumps.

[00:20:57] Speaker 05:
So therefore, it's already there.

[00:20:59] Speaker 05:
You don't need to modify a prior art reference to get to a single motor and two pumps, which then creates the question of why would you ever

[00:21:08] Speaker 05:
have a single motor, it's already there.

[00:21:11] Speaker 00:
You're absolutely right about that.

[00:21:13] Speaker 00:
And there's the express finding by the board on the Sanborn combination.

[00:21:16] Speaker 00:
So to the extent it's cleaner in that way, I agree with you.

[00:21:19] Speaker 00:
There's not really a need to do very much comparison here because Sanborn doesn't have something that it's starting with.

[00:21:24] Speaker 00:
And there was a big argument below about the Jiang reference and whether it's two pump motor sets or whether it's pump motor pump, which that was our position below.

[00:21:32] Speaker 00:
But in Sanborn, we don't have that, to your point.

[00:21:33] Speaker 00:
There's the express finding.

[00:21:34] Speaker 00:
And so the idea that you have to compare it to something, I think, isn't there in the same way.

[00:21:39] Speaker 00:
And so I do think it's cleaner in that sense.

[00:21:41] Speaker 00:
A lot of the things complained about in the motion don't apply nearly as much to the Sanborn-Nates combination, to your point.

[00:21:48] Speaker 02:
Anything further?

[00:21:48] Speaker 00:
No.

[00:21:50] Speaker 00:
I will happily see the remainder of my time again.

[00:21:52] Speaker 01:
Actually, I'm sorry.

[00:21:53] Speaker 01:
I just have one question.

[00:21:56] Speaker 01:
The second combination, the Sanborn combination, invalidated fewer claims than the Zhang combination, right?

[00:22:04] Speaker 00:
I believe the two sets, so there are two sets of grounds.

[00:22:08] Speaker 00:
We sort of merged them together because there were extra tertiary references that were added into the combinations.

[00:22:14] Speaker 00:
But there's one set of grounds that's Yang, Stout.

[00:22:17] Speaker 00:
There's another set of grounds that's Sam or Nates.

[00:22:20] Speaker 00:
They both, if you take them as sets of grounds based on those sort of baseline references, they cover the same claim sets.

[00:22:30] Speaker 00:
All right.

[00:22:30] Speaker 00:
Let me just confirm that.

[00:22:31] Speaker 00:
I didn't think that was the case.

[00:22:38] Speaker 01:
And the reason I ask is I just wonder whether it makes any difference to you If there are extra claims in the Zang stout combination Whether any of those extra claims actually matter to you.

[00:22:52] Speaker 00:
I Think they're the same and so I point you to a 639 and 640 This is the table at the end of the board's final written decision and one of the things I have highlighted here is claim 10 it's because

[00:23:06] Speaker 00:
Claim 10 is actually on the next page.

[00:23:08] Speaker 00:
It's on 640 as being taken care of in the Sanborn Nates grounds.

[00:23:14] Speaker 00:
So I think in both sets of grounds, it's claims 1 through 3, 6 through 8, 10, 12, 13, 15, and 18 through 20.

[00:23:23] Speaker 00:
All right.

[00:23:23] Speaker 00:
Thank you.

[00:23:26] Speaker 00:
Absolutely.

[00:23:27] Speaker 00:
Thank you, Council.

[00:23:27] Speaker 00:
Absolutely.

[00:23:28] Speaker 02:
Thank you.

[00:23:30] Speaker 02:
Mr. Robinson?

[00:23:46] Speaker 03:
Undisputed documentary evidence says, quote, there's very little design criteria or construction details that could be directly transferred between Sanborn's pumps and Nates' compressors.

[00:24:00] Speaker 03:
Analogousness is the hook to get from Sanborn to Nates.

[00:24:04] Speaker 03:
And the board expanded one or more problems that the inventors were faced with to any design choice that the inventors were faced with.

[00:24:12] Speaker 03:
Specifically, the board focused in on the flex couplings.

[00:24:15] Speaker 03:
The problem with using the flex couplings to get to Nates to get the pump motor pump configuration is that nothing in the record suggests that you need those flex couplings in this context until you get to a pump motor pump configuration.

[00:24:30] Speaker 03:
And so that's why that analogousness standard made a difference here is that you start with

[00:24:38] Speaker 05:
The red brief points out that during the prosecution history, the applicant added the flex coupling limitations to overcome a prior art rejection.

[00:24:49] Speaker 05:
And that, according to the notice of allowance, was the basis for why the examiner allowed the claims.

[00:24:55] Speaker 05:
Is that right?

[00:24:55] Speaker 03:
That is a partial characterization.

[00:24:59] Speaker 03:
So what happened was the applicant added flex couplings to distinguish a piece of prior art that did not have a pump motor pump configuration.

[00:25:09] Speaker 03:
The applicant then added the direct coupling for the pump motor pump configuration.

[00:25:14] Speaker 03:
And it was that combination of two things that was able to overcome the Gambier reference, which, to your honor's point about sort of one motor driving two pumps being known, Gambier had one motor driving two pumps.

[00:25:26] Speaker 03:
It was not a pump motor pump configuration.

[00:25:28] Speaker 03:
And it did not include those flex couplings.

[00:25:31] Speaker 03:
And so what we have here in the 049 patent is that flex couplings become

[00:25:39] Speaker 03:
useful in this pump-motor-pump configuration to deal with misalignment.

[00:25:44] Speaker 03:
There is nothing in the record that suggests that there was any need for flex couplings before you get to the pump-motor-pump configuration.

[00:25:51] Speaker 03:
And so to use flex couplings to get to NATES to get the pump-motor-pump configuration is exactly what the board has done and it illustrates the fallacy with how the board has applied that standard for analogous art.

[00:26:09] Speaker 03:
The board expressed in its institution decision skepticism about the predictable results finding and appears to have come around to adopting that based on Dr. King's testimony.

[00:26:23] Speaker 03:
Dr. King's testimony was not without error, was not without effect.

[00:26:28] Speaker 03:
It was referenced in the board's findings for Sanborn-Nates, the same dismissal of the drawbacks.

[00:26:36] Speaker 03:
Now, this problem with the board's failure to weigh the benefits and the drawbacks is the benefit is purportedly simplification.

[00:26:45] Speaker 03:
But there is no reference against which anything is being simplified.

[00:26:51] Speaker 03:
There is no serious configuration that has a transfer case that we're now going to avoid.

[00:26:56] Speaker 03:
It's just not in the petition.

[00:26:58] Speaker 03:
In fact, again, on page 626 of the appendix, the board credits

[00:27:03] Speaker 03:
Mr. Marsher's description of a series configuration to address reliability, that doesn't include a transfer case.

[00:27:12] Speaker 03:
And so there is no frame of reference from which to simplify Sanborn with Nates.

[00:27:19] Speaker 02:
Can't we understand the board's simplification to simply be the reduction in the number of parts?

[00:27:25] Speaker 02:
Eliminating the needs of parts necessarily results in simplification.

[00:27:32] Speaker 03:
The problem is we don't have any frame of reference with those parts to eliminate.

[00:27:35] Speaker 02:
It's a wrong number.

[00:27:37] Speaker 02:
The board found that there would be a reduced number of components necessary.

[00:27:43] Speaker 02:
Isn't that simplification?

[00:27:46] Speaker 03:
Well, one, there's no frame of reference from which to conclude that parts are being reduced.

[00:27:51] Speaker 03:
Two, no, that's not a basis to conclude that something is being simplified.

[00:27:56] Speaker 02:
I think most mechanical engineers would disagree with that.

[00:28:00] Speaker 02:
And even if they wouldn't disagree, I think that under the differential standard of review, if you can eliminate the need for component parts in something, you've simplified it.

[00:28:11] Speaker 03:
Your Honor, I'm going to refer back to Zhang's doubt because it helps illustrate this point really well.

[00:28:16] Speaker 03:
Zhang simplifies to one pump motor set, one pump motor set.

[00:28:20] Speaker 03:
When you eliminate one of those motors, you have to put a pump onto the first motor, which results in a more complex structure of one motor driving two pumps.

[00:28:30] Speaker 03:
Rather, even though it's fewer motors, it's a more complicated structure.

[00:28:34] Speaker 03:
And that's exactly what our expert testified to.

[00:28:36] Speaker 02:
But that's a question of fact.

[00:28:38] Speaker 02:
And we refer to the board for its fact findings about whether that change resulted in a simplified system or not.

[00:28:47] Speaker 03:
You know, I see that I'm past my time.

[00:28:49] Speaker 03:
May I briefly answer and conclude?

[00:28:50] Speaker 03:
Of course.

[00:28:52] Speaker 03:
All right.

[00:28:53] Speaker 03:
So I think the best place to point you to here is the petition.

[00:28:56] Speaker 03:
The petition doesn't just say simplification.

[00:28:59] Speaker 03:
It says simplification to save space and improve reliability, which is what Zang says.

[00:29:03] Speaker 03:
We're not simplifying for the sake of simplifying.

[00:29:05] Speaker 03:
We want benefits.

[00:29:06] Speaker 03:
The board didn't credit.

[00:29:07] Speaker 03:
And in fact, at 214 and its institution decision, rejected that the district's shown an extra.

[00:29:13] Speaker 02:
That's not relevant.

[00:29:13] Speaker 02:
We're not reviewing an institution decision.

[00:29:15] Speaker 02:
In fact, we don't even have the power to review it.

[00:29:16] Speaker 02:
We're reviewing an FWD.

[00:29:19] Speaker 03:
The point is, all of the benefits that were reportedly attributable to simplification were rejected by the board, leaving simplification as a- When?

[00:29:28] Speaker 02:
When were they rejected by the board?

[00:29:30] Speaker 02:
Not in the final written decision?

[00:29:31] Speaker 03:
They were not credited in the final written decision.

[00:29:34] Speaker 03:
Presumably, because they outright rejected them in the institution decision.

[00:29:38] Speaker 02:
That's a presumption I'm not going to make.

[00:29:45] Speaker 02:
Well, fair enough, John.

[00:29:47] Speaker 02:
Thank you.