[00:00:00] Speaker 02: Our second case is 23-1686 Everstore Merchandise versus Willis Electric. [00:00:07] Speaker 02: Okay, Mr. Babcock. [00:00:09] Speaker 00: Good morning, Your Honors. [00:00:10] Speaker 00: May I please the court? [00:00:13] Speaker 00: With me today is Barry Herman from Womble Bond Dickinson. [00:00:19] Speaker 00: We were here before you three years ago on this case. [00:00:23] Speaker 00: The technology at issue here is fortunately very simple. [00:00:27] Speaker 00: We essentially have [00:00:29] Speaker 00: Net lights that go over a Christmas tree or a bush. [00:00:33] Speaker 00: These are holiday lights. [00:00:36] Speaker 00: And within the net lights are electrical wires. [00:00:39] Speaker 00: Electrical wires contain polymer fibers. [00:00:43] Speaker 00: That's the technology. [00:00:44] Speaker 00: So pretty straightforward. [00:00:47] Speaker 00: As we all know, the name of the game is the claim. [00:00:51] Speaker 00: The focus of the earlier appeal and this appeal [00:00:56] Speaker 00: is the claim limitation that's addressed in the briefing. [00:01:01] Speaker 00: Namely, the claim limitation says each of the plurality of internally reinforced intermediate wires includes a plurality of conductors and one or more reinforcing strands. [00:01:16] Speaker 00: The limitation is in each of the claims of the patent and importantly in the three independent claims that issue on this appeal. [00:01:25] Speaker 00: It's important to note that the claim does not quantify the amount of copper or conductors in the strand. [00:01:34] Speaker 01: You're not challenging the board's ruling about increased durability. [00:01:43] Speaker 00: We're not. [00:01:44] Speaker 00: The petition had three bases, increased durability. [00:01:47] Speaker 00: As Judge Ranney mentions, there was also increased strength. [00:01:51] Speaker 00: than the increased cost. [00:01:52] Speaker 00: So this appeal and the previous appeal and this appeal focus on just that last reason to go by, increased cost. [00:01:58] Speaker 03: And just to be clear, you're not challenging the board's finding that the dependent claims are, they survive the review. [00:02:09] Speaker 03: So if you win this appeal, the dependent claims survive. [00:02:12] Speaker 00: no they don't survive because the only basis for the board's decision is based upon the independent claims. [00:02:19] Speaker 03: So if you look at the board's... You didn't brief the dependent claims, they have other limitations, and then in footnote four of your gray brief, you say this appeal is directed to the limitation you've talked about in the 03-7 patents 3 independent claims. [00:02:34] Speaker 00: Correct. [00:02:35] Speaker 03: So I understand you to have waived any challenge to the board's finding about the dependent claims. [00:02:40] Speaker 00: Respectfully, Your Honor, we did say that those dependent claims do not add anything patentable. [00:02:45] Speaker 00: If we look at the board's decision with regards to the dependent claims, they simply said, because the independent claims survive, the dependent claims necessarily survive for the same reasons. [00:03:02] Speaker 03: So I should have understood your briefing to seek reversal for all the claims. [00:03:08] Speaker 00: I think the proper course here, Your Honor, [00:03:10] Speaker 00: And I've thought about this more since the briefing is that reversal on the independent claims, because that's the key issue here that's on appeal. [00:03:17] Speaker 00: The only target that the board gave us in its decision was the reduced cost. [00:03:23] Speaker 00: So that's what we addressed in this appeal. [00:03:24] Speaker 00: There was no other discussion about the dependent claims in their decision. [00:03:28] Speaker 00: The board hasn't addressed the dependent claims. [00:03:30] Speaker 00: Not subsequently, Your Honor. [00:03:31] Speaker 00: The dependent claims we'd have to remand to have them addressed at the end of the limitation. [00:03:38] Speaker 00: I think that's probably the correct solution. [00:03:41] Speaker 00: Because the board didn't address the substance of those dependent claims in their decision. [00:03:47] Speaker 00: We did not address those. [00:03:49] Speaker 00: Therefore, we didn't address those in our appeal, because we don't need to address. [00:03:52] Speaker 00: The only reason those claims were found to be patentable was because the independent claims were patentable. [00:03:59] Speaker 00: So because this issue, the patentability, the issue that rises or falls on this one issue reduced costs reasonably combined. [00:04:10] Speaker 00: If those claims fail for that reason, then the board has to go back and look at the dependent claims once again, and whether or not there's anything else in those claims that provides patentability. [00:04:22] Speaker 00: We think the answer is no. [00:04:24] Speaker 00: But the board didn't address that in their final written decision. [00:04:28] Speaker 00: So there's nothing for you to review. [00:04:31] Speaker 03: Help me on, I appreciate that, on the independent claims. [00:04:37] Speaker 03: Assume that I agree with you that there's not substantial evidence to support the board's finding about a lack of motivation to combine based on cost alone. [00:04:49] Speaker 03: Just assume that I agree with you on that. [00:04:52] Speaker 03: What would I then do with that? [00:04:54] Speaker 03: Would I remand to the board to consider [00:04:59] Speaker 03: if there is a motivation to combine affirmatively? [00:05:04] Speaker 03: Or would I say the only possible conclusion here is there is a motivation to combine? [00:05:10] Speaker 00: See, that's where we go, Your Honor. [00:05:11] Speaker 00: I think in this situation, where you have such a simple 103 analysis under KSR, you have the two references at issue, both Kamata and you have de Blenis. [00:05:22] Speaker 00: They both discuss cost reduction as important in this art. [00:05:27] Speaker 00: They're analogous arts. [00:05:31] Speaker 00: the bladis says very specifically you reduce copper reduced cost you put in polymer fibers a reasonable fact-finder could only reach the conclusion under KSR under the very flexible standard under KSR that it would have been obvious for a person of skill in the art to combine these references the only way the board actually was able to say it's not obvious is to raise the standard it seems to me that the board is saying that [00:06:01] Speaker 01: The problem here is that you failed to show or to provide any evidence as to what the actual cost reduction would be. [00:06:12] Speaker 01: No quantification. [00:06:14] Speaker 01: Was that correct? [00:06:16] Speaker 00: That's what they said, Your Honor. [00:06:17] Speaker 00: And that's why I started off with reading the claim, because the claim doesn't talk about how much copper, how much polymer fiber. [00:06:25] Speaker 00: It just simply says you have to have both. [00:06:27] Speaker 00: KSR just says, as long as you have the reason to combine, as long as you can show that it would be obvious to put polymer fibers with copper, and the reason is to reduce cost, you're done because the claim limitation is satisfied. [00:06:40] Speaker 00: What the board went on to say is, well, you didn't tell us how much copper would be reduced. [00:06:46] Speaker 00: How much? [00:06:47] Speaker 00: What's the quantity? [00:06:48] Speaker 00: How much would be necessary? [00:06:50] Speaker 00: And that's not in the claim. [00:06:52] Speaker 00: Therefore, as a matter of law, it's impermissible. [00:06:54] Speaker 01: What's the implication there? [00:06:59] Speaker 00: I think the board was to be candid I think the board was looking for a way to say they got it right the first time and [00:07:20] Speaker 00: The initial, the institution decision was very clear. [00:07:22] Speaker 00: The institution decision said, look, under KSR, you have two references. [00:07:28] Speaker 00: They both teach cost reduction. [00:07:31] Speaker 00: The latest 120 says specifically reduce copper, add polymer fibers to reduce cost. [00:07:38] Speaker 00: At the end of the institution decision, the board actually quoted KSR. [00:07:41] Speaker 00: It said when there's, I can quote it for you. [00:07:44] Speaker 00: It says they quoted KSR and they said when a work is available in one field of endeavor, [00:07:50] Speaker 00: Design incentives and other market forces can prompt variations of it, either in the same field or a different one. [00:07:56] Speaker 00: If a person of ordinary skill can implement a predictable variation, 103 likely bars its patentability. [00:08:03] Speaker 00: And that's at appendix 446 to 47. [00:08:07] Speaker 00: Tellingly that probe and that discussion isn't in the Fowler decision They excise that because that conclusion is correct. [00:08:14] Speaker 00: You don't have to look at experts You don't have to look at any complicated analysis you read the two references themselves You look what they teach and and the the obvious this conclusion under KSR is readily apparent So but I thought your evidence [00:08:27] Speaker 02: suggested that the Kamada, there were two 22 gauge twisted wires and that the proposal here was to eliminate one of those two twisted wires, correct? [00:08:45] Speaker 00: You are correct, Your Honor. [00:08:46] Speaker 00: So we took a second... So that would on its face would be a 50% reduction in copper. [00:08:52] Speaker 00: So we took it a second step. [00:08:54] Speaker 00: Our first step is to say, look, quantification isn't necessary. [00:08:57] Speaker 00: We didn't need to show how much copper would be reduced, how much cost savings there would be. [00:09:02] Speaker 00: We just need to show that there would be a motivation to put copper and polymer strands together. [00:09:07] Speaker 00: You've met the claim limitation. [00:09:08] Speaker 00: You've satisfied KSR. [00:09:10] Speaker 00: It's obvious. [00:09:11] Speaker 00: But we went on to say, [00:09:14] Speaker 00: The board said they went through the entire record. [00:09:15] Speaker 00: There's no evidence of quantification. [00:09:17] Speaker 00: We said, first of all, quantification isn't required. [00:09:20] Speaker 00: But second of all, there is evidence of quantification. [00:09:23] Speaker 00: And we went through and we showed where the expert explained exactly what Judge Dyke said, which is instead of using a twisted pair of 22 gauge, you used one 22 gauge, that's a 50% reduction. [00:09:36] Speaker 00: We didn't give the board the 50% number. [00:09:39] Speaker 00: We just said, from [00:09:41] Speaker 00: 122 to 123. [00:09:43] Speaker 00: And our brief shows the amount of cross-section for 22 gauge wire, the amount of copper cross-section. [00:09:52] Speaker 00: So you can do the calculations to figure out exactly how much copper cross-section there is. [00:09:56] Speaker 00: But yes, there was evidence actually of the quantification of reduction if that were a requirement, which it's not. [00:10:06] Speaker 00: Because again, the claims don't require that quantification. [00:10:23] Speaker 00: And I'll just re-emphasize the comments, the expressed statements from Kamada, where it says, Kamada exactly teaches that the absence of electrical wires within the rope greatly reduces the cost, and there is no expensive copper within the rope. [00:10:47] Speaker 00: And that's at appendix 1466, Kamada, columns 11, [00:10:53] Speaker 00: lines 3 to 6 and 14 to 15. [00:10:56] Speaker 00: So you have Kamada saying, look, cost reduction is important, copper is expensive, let's reduce the amount of copper. [00:11:03] Speaker 00: You have the Bladis 120 saying, an object of the present invention is to provide a cable using just sufficient conductive material, typically copper, to ensure signal transmission. [00:11:18] Speaker 00: And it needs to be as inexpensive as possible to fabricate. [00:11:22] Speaker 00: Coppers becoming even more expensive. [00:11:25] Speaker 00: Important to find new cable structures that minimize. [00:11:27] Speaker 03: I want to be back to what I was asking you before about whether we should remand if we agree with you. [00:11:33] Speaker 03: You write in the gray brief, it's at your footnote six. [00:11:37] Speaker 03: You point out you've been here before. [00:11:39] Speaker 03: You've already been subjected to one remand. [00:11:42] Speaker 03: Continue to sing-honging what you say would waste our resources, patent offices, be prejudicial to your client. [00:11:47] Speaker 03: I get all that. [00:11:49] Speaker 03: But is any of that legally? [00:11:51] Speaker 00: I think it is, Your Honor, to the extent that you can say, as a matter of law, a reasonable fact finder could not find that these claims are unobvious. [00:12:01] Speaker 03: But that's what we would have to say. [00:12:03] Speaker 03: We can't say, as a matter of law, it's debatable, but we feel badly for the client. [00:12:09] Speaker 00: You could say, if you would be very conservative, you could say, you applied the wrong standard. [00:12:19] Speaker 00: You elevated it, you required quantification. [00:12:23] Speaker 00: That's not correct on the KSR. [00:12:24] Speaker 00: KSR is more flexible than that. [00:12:26] Speaker 00: Go back and do it again. [00:12:28] Speaker 00: Remand, vacate everything, go back and redo it again. [00:12:33] Speaker 00: That's where the footnote comes from. [00:12:36] Speaker 00: We already said that. [00:12:37] Speaker 00: We already said that to them. [00:12:39] Speaker 00: Cost reduction, is that irrelevant? [00:12:41] Speaker 00: And rather than actually do a legitimate review of the record for cost reduction, [00:12:48] Speaker 00: They came back, elevated the standards, and said, look, you haven't met it. [00:12:51] Speaker 00: So we're going to be back here in three years talking about copper and polymer fibers with you guys again, with this court again. [00:12:58] Speaker 00: And that's not efficient for you, for the board, for us. [00:13:02] Speaker 00: So I think at a minimum, I would request, Everstar would request, that you reverse on the independent claims. [00:13:11] Speaker 01: I think you can. [00:13:14] Speaker 00: I think if you determine that no reasonable fact finder could find otherwise, that reading just the references themselves, De Blatis and Kamada, those teachings are so clear on cost reduction that a reasonable person who is still in your art reading the references wouldn't. [00:13:33] Speaker 01: That seems pretty complicated to me. [00:13:39] Speaker 01: isn't the problem here is just a question where the quantification is actually required under these claims? [00:13:47] Speaker 00: I don't think so, Your Honor. [00:13:49] Speaker 01: I mean, that's the question I'm saying. [00:13:51] Speaker 00: OK. [00:13:54] Speaker 00: I think that's a question. [00:13:55] Speaker 00: It's a legitimate question. [00:13:57] Speaker 00: But then reading the claim, it's not there. [00:13:58] Speaker 01: There's nothing about quantity in the claim. [00:14:01] Speaker 01: That's the question. [00:14:02] Speaker 01: And the board already answered it and said, yes, some sort of quantification is necessary. [00:14:08] Speaker 00: I think what they said was, they didn't point to the claims. [00:14:12] Speaker 00: They simply said, in order to do a combination, you needed to show us how you would incorporate dublateness into commodity, which is, of course, wrong. [00:14:25] Speaker 00: You don't have to bodily incorporate the two references. [00:14:28] Speaker 00: So that was wrong. [00:14:29] Speaker 00: And they said, and you need to show us how much copy would be reduced. [00:14:33] Speaker 00: Again, wrong, because the claims don't require that. [00:14:36] Speaker 00: So I think this court could say, [00:14:38] Speaker 00: The claims are clear. [00:14:39] Speaker 00: It's a legal question. [00:14:40] Speaker 00: It's a legal question. [00:14:41] Speaker 01: It's not a factual question. [00:14:44] Speaker 01: Not this issue. [00:14:45] Speaker 01: Right. [00:14:46] Speaker 01: But why would we go to a factual issue and not just address the legal issue? [00:14:51] Speaker 01: It seems that the board is saying that under the US law of obviousness, quantification here of some sort was necessary to have been shown or challenged. [00:15:03] Speaker 00: They certainly did that, and that's legal error. [00:15:08] Speaker 00: The easiest path for this panel to take is to say, legal error on the standard, go back and redo. [00:15:14] Speaker 00: And what we're saying is here, it's so clear. [00:15:17] Speaker 00: It's so clear that these two references have a motivation to combine under KSR that no reasonable fact finder could reach a different conclusion. [00:15:25] Speaker 02: There's no contrary evidence on cost not providing a motivation. [00:15:29] Speaker 02: Nobody suggested that, right? [00:15:30] Speaker 00: Only if you look at expert testimony that I'm sure there are experts somewhere who said, oh, it wouldn't have been obvious. [00:15:36] Speaker 00: That's why I'm focusing on the references themselves. [00:15:38] Speaker 00: The expert didn't say cost wouldn't be sufficient. [00:15:41] Speaker 00: No, their expert acknowledged that cost is relevant. [00:15:44] Speaker 00: Cost is always going to be relevant in these kinds of products. [00:15:48] Speaker 00: And you have both references acknowledging that. [00:15:50] Speaker 00: So there's no reason for us to come back in three years and discuss why the board said cost, this is still not obvious. [00:15:58] Speaker 00: This panel can look at it super simple to acknowledge and say, yes, as a matter of law, no reasonable fact finder can say, [00:16:06] Speaker 00: These things, there would be no reason to combine them. [00:16:08] Speaker 00: At KSR, there's a reason to combine them. [00:16:10] Speaker 02: OK. [00:16:10] Speaker 02: I think we're out of time. [00:16:11] Speaker 02: We'll give you two minutes for a bottle. [00:16:12] Speaker 00: Thank you, Your Honors. [00:16:14] Speaker 02: Ms. [00:16:14] Speaker 02: Niles? [00:16:26] Speaker 04: Good morning, Your Honors. [00:16:27] Speaker 04: May it please the court, counsel. [00:16:29] Speaker 04: My name's Emily Niles, and I represent the appellee, Willis Electric. [00:16:32] Speaker 02: Okay, so the board seemed pretty unhappy that we reversed them the first time around. [00:16:37] Speaker 02: They didn't appear to be particularly sympathetic to doing what we told them to do. [00:16:44] Speaker 02: So why is it that there isn't a cost motivation to make this combination? [00:16:56] Speaker 04: The board's decision that there was no cost motivation is supported by substantial evidence in this case for multiple reasons. [00:17:04] Speaker 02: The witness never said that cost wouldn't be a motivation. [00:17:07] Speaker 02: Nobody said that cost isn't a motivation, right? [00:17:10] Speaker 04: To be a motivation, to combine references, it needs to be able to achieve the claimed invention with a reasonable expectation of success. [00:17:19] Speaker 04: And so here, with the generally applicable reasoning of potentially cost reduction, [00:17:25] Speaker 04: You have to show that you could have achieved the claim dimension with a reasonable expectation of success. [00:17:33] Speaker 04: Sure, cost reduction would be great. [00:17:37] Speaker 04: But if you reduce costs. [00:17:39] Speaker 02: So why isn't the combination that they proposed with the motivation of cost reduction sufficient to show obviousness? [00:17:46] Speaker 02: What's missing? [00:17:48] Speaker 04: What's missing is evidence that the combination would actually reduce the cost. [00:17:54] Speaker 02: Well, they presented undisputed evidence that it would. [00:17:59] Speaker 02: They showed that Kumada used the UL standard of a twisted pair, and the proposal is to have a single line reinforced by plastic. [00:18:12] Speaker 02: That would reduce cost, right? [00:18:15] Speaker 02: Your expert didn't say it wouldn't reduce cost, did he? [00:18:18] Speaker 04: Our experts [00:18:21] Speaker 02: Confirmed that this is a multi-dimensional analysis and so when you're reducing answer my question Did your experts say that the combination wouldn't result in cost reduction? [00:18:34] Speaker 04: Our expert opined that there the evidence is it doesn't show that it would definitively reduce cost Because when you're making an internally reinforced wire there are multiple components of that manufacturing process You're adding certain materials [00:18:49] Speaker 04: into the inside of the wire. [00:18:51] Speaker 04: There's other steps in the process. [00:18:52] Speaker 04: And so while reducing copper reduced the cost of copper, it does not necessarily reduce the cost of the internally reinforced wire. [00:19:01] Speaker 04: And we see in the record that there's an admission from Everstar's expert that, indeed, internally reinforced wires, he would expect them to be more expensive. [00:19:13] Speaker 03: Is there a fact dispute, though, about the amount of copper [00:19:18] Speaker 03: Does your expert ever say, I think you just suggested your expert, does not say that the combination would use less copper than Kumada alone, right? [00:19:28] Speaker 03: It just seems obvious, one copper wire instead of two. [00:19:32] Speaker 03: That much is undisputed, is that correct? [00:19:36] Speaker 04: Not necessarily, Your Honor, because [00:19:39] Speaker 04: What their experts do is piece together the size of the wire that they say would result from the combination. [00:19:46] Speaker 04: But in doing that, they're looking at the later UL standards, which would apply the 22. [00:19:52] Speaker 02: They're saying that the UL standard that applied at the time of Kenwata [00:19:58] Speaker 02: required two twisted copper wires and that the proposal is to reduce that by half and to use plastic reinforcement. [00:20:10] Speaker 02: So you're saving copper, right? [00:20:12] Speaker 04: You're saving copper. [00:20:13] Speaker 04: Yes, your honor. [00:20:16] Speaker 03: Okay, but then help me. [00:20:17] Speaker 03: I don't understand the answer to my question then. [00:20:21] Speaker 03: There is or is not a fact dispute on this record about whether the combined [00:20:27] Speaker 03: embodiment would reduce copper, reduce the amount of copper necessary. [00:20:33] Speaker 03: Is that disputed, or can we take that as undisputed? [00:20:39] Speaker 04: I think it's undisputed that just in itself, there could be reduced copper. [00:20:45] Speaker 04: But that does not mean that there would be automatically a reduction in cost. [00:20:52] Speaker 03: because of possibly other components that would be necessary to make the combination [00:21:13] Speaker 04: So I want to be clear, Your Honor, that those numbers were not presented in Everstar's arguments. [00:21:19] Speaker 04: And so the board didn't have those quantifications before them below. [00:21:23] Speaker 03: But everything they argued from was in the record before the board, correct? [00:21:28] Speaker 03: The evidence was in the record. [00:21:31] Speaker 04: The calculations were not in the record. [00:21:33] Speaker 04: There's no support. [00:21:34] Speaker 03: The calculations are very simple math, are they not? [00:21:37] Speaker 04: And that was their burden to prove and to show to the board. [00:21:40] Speaker 04: And they failed to do that. [00:21:41] Speaker 03: So at the end of the day, is your answer to my question that we can take it as agreed that there is less copper used in the combination than there was in the prior art, anything that wasn't Kamado alone? [00:21:57] Speaker 03: Or should we view that as fact dispute? [00:22:00] Speaker 04: I think that should be viewed as a fact dispute. [00:22:03] Speaker 04: And it's something the board looked at, considered their expert evidence. [00:22:07] Speaker 02: You're contradicting yourself. [00:22:09] Speaker 02: You said a moment ago that there was no question about the combination resulting in a reduction in copper. [00:22:17] Speaker 02: Are you taking that back? [00:22:19] Speaker 04: What I'm trying to explain, Your Honor, is that when you're looking at changing the wire and the wire sizes the way that they're suggesting doing, [00:22:29] Speaker 04: If you just take out a 22 AWG wire and have one of those wires, yes, there is less copper when you have one wire as opposed to two. [00:22:42] Speaker 04: That's right. [00:22:42] Speaker 04: And I accept that. [00:22:45] Speaker 04: But here, you also have to have more. [00:22:47] Speaker 04: And so there's a fact dispute about you have to have more of the materials to have internally reinforced it. [00:22:57] Speaker 04: Yes, Your Honor. [00:22:58] Speaker 02: Not copper, right? [00:22:59] Speaker 03: Right. [00:22:59] Speaker 03: OK, so we're back to it's undisputed for our purposes that there is less copper in the combined, in the combination that they're relying on. [00:23:10] Speaker 04: There's less copper, but there's a factual dispute as to whether there's actually. [00:23:13] Speaker 03: So just give me an idea of where I can see evidence of that factual dispute, because presumably you're here to tell me I need to, at most, remand to the board to resolve this fact dispute. [00:23:25] Speaker 03: I'd like to see where that fact dispute is in the record. [00:23:38] Speaker 04: So multiple of the experts testified about that factual dispute as to the cost and the multi-dimensional aspect of that. [00:23:53] Speaker 04: Dr. Brown testified about the multi-dimensional design issues. [00:23:57] Speaker 04: That's at Appendix 2309. [00:23:58] Speaker 04: Everstar's expert acknowledged them. [00:24:02] Speaker 02: 2309? [00:24:04] Speaker 04: Yes, Your Honor. [00:24:09] Speaker 04: And Dr. [00:24:45] Speaker 04: You look at page 47 in the top right corner. [00:24:51] Speaker 04: It's discussing the cost issue. [00:24:53] Speaker 04: And from lines approximately 4 to 22, he testifies about the multi-dimensional design issues and how the material choice and design choices could impact cost. [00:25:08] Speaker 02: OK, but he doesn't say that the cost of making the change would be such that it would deter somebody from doing it. [00:25:23] Speaker 04: I think that goes back to the fact that... No, no. [00:25:26] Speaker 02: Yes, no. [00:25:28] Speaker 04: Not in this specific section. [00:25:30] Speaker 02: I think it's... Well, is there some other specific section where he says that? [00:25:37] Speaker 04: Not specific to cost. [00:25:38] Speaker 04: What he testifies to is that a person of ordinary skill in the art would not have been motivated to change the design from something that was consistent and acceptable under the UL standard to something that was not consistent [00:25:53] Speaker 04: with the UL standard. [00:25:57] Speaker 02: In determining the obviousness, you don't worry about regulatory requirements. [00:26:02] Speaker 02: We've said that repeatedly with respect to FDA requirements. [00:26:07] Speaker 02: You can have an invention which might not have received regulatory approval. [00:26:15] Speaker 02: You can't say that somebody hasn't invented something because the current regulations might not allow it. [00:26:24] Speaker 04: True, Your Honor, but here you have to show that there is a motivation that would arrive at the claimed invention and that there would be a reasonable expectation of success. [00:26:35] Speaker 04: At that time, the evidence in the record showed that there wasn't an expectation of success under the current UL standards. [00:26:43] Speaker 02: What case says that you don't have a reasonable expectation of success because there might need to be a regulatory change to implement the invention? [00:26:55] Speaker 04: My argument is not that there isn't a case that says that, Your Honor. [00:26:58] Speaker 02: A lot of pharmaceutical companies are pretty unhappy with that standard. [00:27:02] Speaker 04: But looking at the evidence that's in the record, Everstar has not put forth sufficient evidence that this combination would have had a reasonable expectation of success, that the motivation would have resulted in a reasonable expectation of success to even be in dispute at this point. [00:27:18] Speaker 03: I thought the only thing that was in dispute was motivation to comply. [00:27:23] Speaker 04: I disagree, Your Honor. [00:27:25] Speaker 04: The board's determination of obviousness was about whether a person of ordinary skill in the art would have that reason, whether they would have been motivated. [00:27:33] Speaker 04: And in order to be actually motivated to do something, especially when we're talking about a generally applicable rationale. [00:27:40] Speaker 01: You couched that rationale on the basis that there was no showing of the quantity of costs to be had. [00:27:48] Speaker 01: That's the basis decision on that, not reasonable success. [00:27:54] Speaker 04: I think we're talking about similar issues there. [00:27:57] Speaker 04: Because the board was looking for evidence that there would actually be a cost reduction such that you would achieve the claimed offension, that there really was a motivation. [00:28:06] Speaker 04: And so they're not requiring a quantification in the evidence. [00:28:10] Speaker 04: They're saying they're looking for some evidence of the reduced cost. [00:28:15] Speaker 02: And that doing that. [00:28:16] Speaker 02: You agree that the record shows that there would be reduced cost by the combination. [00:28:21] Speaker 02: That's sufficient, right? [00:28:22] Speaker 04: I disagree that the record shows that there would be reduced costs for the reasons we talked about in terms of copper versus an entire internally reversed wire. [00:28:32] Speaker 03: I think there were multiple experts you were going to point to because, as Judge Dike points out, I don't know that Mr. Brown actually said enough here to put into view whether the cost would actually be lesser or not lesser in combination. [00:28:49] Speaker 03: Did you have something else you could point us to? [00:28:51] Speaker 04: Dr. Fantoni acknowledged this issue. [00:28:55] Speaker 04: I believe it is Appendix 2417. [00:28:57] Speaker 04: 2417? [00:28:57] Speaker 04: Yes, 2417 through 2418. [00:29:03] Speaker 04: He recognized the multidimensional issue. [00:29:05] Speaker 03: Does he recognize the multidimensional issue means there's a factor sheet over whether the cost could actually increase under the combined Kumano-Dublotis environment? [00:29:21] Speaker 04: I think that gets to the issue that their experts did not sufficiently opine on what the impact of the cost would be. [00:29:28] Speaker 04: Sure, that's a great goal. [00:29:33] Speaker 04: But if you reduce cost to the extent that there is insufficient durability, insufficient strength, [00:29:38] Speaker 04: You can't pass the UL standard. [00:29:40] Speaker 02: It's not. [00:29:41] Speaker 02: What case is it that suggests that when you provide a motivation, you have to rule out other conflicting motives? [00:29:49] Speaker 02: I'm not aware of any case that says that. [00:29:55] Speaker 04: Well, the obviousness analysis is a flexible one. [00:29:57] Speaker 04: So the board can look at evidence that there is motivation. [00:30:01] Speaker 02: What can you suggest that the burden is on someone trying to show obviousness? [00:30:05] Speaker 02: That they have to show that there aren't other considerations that might cut the other way. [00:30:13] Speaker 04: I don't think that they have to show that there aren't other considerations. [00:30:17] Speaker 04: But the board can consider all of those considerations and weigh them. [00:30:22] Speaker 04: And here the board correctly weighed the different considerations. [00:30:26] Speaker 04: And especially where there's a generally applicable rationale of cost, it requires [00:30:31] Speaker 04: evidence to support that in order to guard against Hindstain, which is really the issue here, where Everstart's experts are looking at Willis Electric's invention in the 037 patent and the later UL standards and justifying their analysis for the combination based on those later inventions and later standards that became accepted in the industry. [00:30:54] Speaker 03: If I think you've conceded that the amount of copper would be reduced in the Kamada-DuGuin combination, which I think you have conceded, it seems to me I can't affirm. [00:31:10] Speaker 03: My choices are either to remand or to reverse, because that concession seems inconsistent with how the board saw this case. [00:31:20] Speaker 03: Am I wrong about that? [00:31:21] Speaker 04: I disagree, Your Honor, because the board found that there wasn't sufficient evidence of a reduced cost. [00:31:26] Speaker 04: In theory, did the different references talk about reduced cost? [00:31:30] Speaker 04: Yes. [00:31:31] Speaker 04: But Everstar failed to show that that was a real reason supported by evidence that a person of ordinary skill in the art would have made the combination. [00:31:44] Speaker 04: As I mentioned before, this quantification was not in the record. [00:31:48] Speaker 03: And it was ever Star's burden to prove that. [00:31:51] Speaker 03: That there's no dispute about that. [00:31:52] Speaker 03: Don't we, at minimum, have to send this back to the board? [00:31:58] Speaker 04: I disagree, Your Honor, because there is substantial evidence to support the first determination that it's not obvious, because of that reasonable expectation of success that's lacking here. [00:32:12] Speaker 04: As I said, reducing costs can only get you so far if you're not going to get the claimed invention, which is a net light that's internally reinforced such that it can have sufficient strength and durability. [00:32:25] Speaker 04: And Everstar's experts failed to show that it would have those things. [00:32:29] Speaker 04: In fact, they've conceded in this appeal that their evidence of sufficient strength and durability was insufficient. [00:32:36] Speaker 02: No, that's not what they conceded. [00:32:38] Speaker 02: They conceded that [00:32:39] Speaker 02: They're not arguing that increased strength and durability provide a motivation. [00:32:46] Speaker 04: Without sufficient strength and durability, the reduced cost does not get you to achieve the invention that was claimed here. [00:32:52] Speaker 04: That would have sufficient durability to be a net light that could withstand the elements outdoors, ice and wind and things like that. [00:33:04] Speaker 04: And so again, it goes back to having sufficient evidence [00:33:08] Speaker 04: to support that a reduced cost would have motivated a person of ordinary skill in the art to combine those references with a reasonable expectation of success. [00:33:18] Speaker 04: And they did not do that here. [00:33:20] Speaker 02: Thank you. [00:33:24] Speaker 02: Thank you, Your Honors. [00:33:37] Speaker 00: I'll be brief. [00:33:38] Speaker 00: Two points. [00:33:42] Speaker 00: The board in the final written decision on remand did take an argument from Willis. [00:33:51] Speaker 00: They took a statement out of context from Dr. Fenton, our expert in deposition, where he said, in a different context, adding polymer fiber [00:34:04] Speaker 00: to a copper wire would increase its cost. [00:34:07] Speaker 00: As Judge Raina pointed out, there were three, and Judge Dyke, three different reasons to combine increased durability, increased strength, and then once at issue here, reduced cost. [00:34:20] Speaker 00: We put in the footnote in our opening brief and the whole section at the end of our reply brief where we address this out of context quote. [00:34:27] Speaker 00: When Dr. Fantone was to post, he was to post about all three reasons to combine. [00:34:32] Speaker 00: when he was discussing increased strength, they asked him about, okay, if you take a copper wire with a given cross-section, you add polymer fibers to it, is that going to increase the cost? [00:34:43] Speaker 00: He said, yeah, because now you have the same cross-sectional diameter. [00:34:47] Speaker 00: Not an issue here. [00:34:50] Speaker 00: Later on in that same deposition where they talked about the other reason they combined reduced cost, he very clearly said, of course, if you reduce the amount of copper, then you're going to reduce the cost. [00:35:01] Speaker 00: what Willis continues to do, and they did it again today. [00:35:03] Speaker 00: And the panel hasn't seized upon that, fortunately. [00:35:06] Speaker 00: But our last section in our reply brief, section F on 27, goes through and shows how, in context, Dr. Pantone's deposition testimony does not support Willis at all, and completely supports us. [00:35:19] Speaker 00: And so we caution the panel not to take a snippet out of context. [00:35:25] Speaker 00: And then finally, in light of this record, Your Honors, I do believe [00:35:31] Speaker 00: we would advocate that for the three independent claims for this one reason, reverse was appropriate. [00:35:37] Speaker 00: Send the dependent claims back on remand, vacate, go back and revisit those. [00:35:43] Speaker 00: But the evidence is so strong here, so compelling, there is a reason to go by that I think this panel can say as a matter of law, we should reverse. [00:35:51] Speaker 03: A reasonable expectation of success? [00:35:52] Speaker 03: Is that in front of us? [00:35:55] Speaker 00: No. [00:35:55] Speaker 00: And this is a mechanical invention. [00:35:57] Speaker 00: This is putting copper [00:36:00] Speaker 00: And polymer fiber is in a wire. [00:36:03] Speaker 00: I mean, this is not a complicated technology where it could fail. [00:36:07] Speaker 00: This is well-known technology. [00:36:09] Speaker 00: So there's not an issue. [00:36:10] Speaker 02: OK, thank you. [00:36:11] Speaker 02: Thank you, Your Honor.