Legal Case Summary

. Given that I have eight minutes, I want to get straight to the point. I think that the main question, the overarching question here, is whether the multidirectional LED lighting and apparatus with a camera lens and the 423 patent is an invention worthy of a patent or is it obvious based on prior art? And specifically, is those that ring of LEDs something new or inventive or is it an arrangement such as the last puzzle piece in a jigsaw puzzle that was simply put in place based on known and obvious art? Is there an explanation that deluded me for why the examiner relied on Marriama and Ross with respect to claims one through 60 and Sino only with respect to Sino plus Ross only with respect to claim 61 through 72? No, I don't believe that I have the explanation, Your Honor. I know that the representative will need the attorney for the offices here. However, I would submit that it could well be relied on. Moriama could be relied on in rejecting claims 61 to 72. I think it should have been relied on. The more pertinent question is why wasn't Sino relied on in connection with the first 60? I think it should have been. I don't think that there is any distinction

. I think if you look at the prior art patents with respect to CMOS design, it discloses I take it a printing press with an elimination system. Correct. I believe it's a standard elimination system. It's certainly not an LED elimination system. It is, I think it's very important to note, that this entire thing is an apparatus that is not a printing press. It is an add-on. It is sold as a separate device that has a camera, a computer, an elimination system. That's what it is

. I think if you look at the other prior art patents, they are in some equivalent to Sino. They teach what Sino teaches. It is a mystery to me why Sino was not cited. That's the answer to that question. And that RIPPINOP, TELM REC, et cetera, were not cited from 61 to 72. I think they should have been. And I think that, Apple, Paul, of your honors question, if you look to the written opinion, you should be arguing that consistency should reverse the point you're arguing and uphold the cross appeal. No

. No. No, your honor. What I am saying is that you should uphold. You think the board should get a remand to consider Sino and reject the claims. Yes. Yes. Reject all the claims. Right

. Though I would say that the remand shouldn't necessarily simply have the board reconsider and consider Sino, I would prefer that the panel considers Sino and all the prior art patents that were cited. We're not out of super boy. Here we've got a new world with these incimination cases, patent office defending, patentability. We shouldn't be the fact finder and making initial rejection. Well certainly, your honor, based on the powers that you've stated the court has. Yes. Remand the entire case for consideration of Sino and we believe that right in the opinion that the board wrote with respect to claim 61 to 72, the board got it right. That's what I was suggesting that you would wish

. Yes. Exactly. There's a second issue which I thought you were going to focus on more than Sino, which is Ross. Ross, the board seems to have found it to be analogous art in respect to 61 through 72, but said nothing about Ross as analogous art with respects to 1 through 60. I think that's an error. And is there any explanation for that as far as you can tell? I can't see the explanation. I think that it's an error. And I think that what happened strangely in the first 60 claims is that the board aired by somehow elevating the term printing press into a desposited claim within the claim

. And it's not. And I think that what this Ross really affects that analysis, I mean, is the point of 1 through 60 that they looked at Morayama and said it's limited to printing press. So whether you have the LED lights from Ross or not, Morayama doesn't teach printing press. It does not teach printing press, but printing press is not the apparatus disclosed. It is an application. And the apparatus disclosed, and it's very specific in the claims and in the preamble. Can I ask, did you or anybody raise Saniyau with respect to claims 1 or 60? I believe that it was raised within the examiner's report. I believe that is there any where in the record? You can point me to that

. At the top of my head I cannot, but Saniyau clearly was part of the record. And it was the examiner referred to it. But did he refer to it with regard to claims 1 through 60 or just 61 through 72? I can't recall your honor for the examiner was a woman just for the record, and I believe that the examiner was well aware of that. But even if it's not referred to in 1 through 60, our contention is that if you look at all the other prior art patents that are referred to, read them off, Helmrich, Hanson, etc., some of which are actually owned by Quattek or licensed to Quattek, they all are essentially the equivalent of Saniyau. Your position I take it is that even if you're incorrect with respect to your submission that printing press is not a limitation of the claims, that even then you go to Ross's analogous art, and because it's analogous art, you don't have to have the actual disclosure of a printing press. I was a fellow at point with that. That is the point

. But even more to the point, there is nothing in the apparatus and in the claims that describe the apparatus that is dependent on printing press. If you look at that apparatus and the claims that describe it, it can function, first of all, number one, and admittedly by Quattek on 8. But there you run into the waiver argument that's been raised by your opponents, and I read the section of your brief to the board in which you claim that you raised this issue, and frankly, if not find that to be at best, it was a very opaque sort of illusion to this argument. It certainly wasn't an argument that was made as directly as you're making it now. No, it was not made, but our contention is that it was made sufficient to give notice that printing press had no patentable weight. But even aside from waiver, you've got a system configured to be an optical communication with a substrate of a printing press. And then you've got the next limitation configured to record images printed on the substrate, obviously referring to the substrate of the printing press. How can it not be a limitation of the claims? The reason it's not a limitation of the claims is that first of all, let's be clear, even in the introductory section of the invention, a substrate is almost always a piece of paper. No different from the paper that is fed through in Morayama, really no different from the bills that get fed through in Ross. It's not structural to the visual inspection system. And even the cases where that Mr. Lowry cites, Pitney Bose, as well as I believe, Polyamérica, in both cases where there's a preamble that is contended not to be a claim and found to be a limitation on the claim, in both instances, the court decided that you could not interpret and understand the actual claims without reference to the specific preamble, that in fact those claims were modified by the preamble. And I think in this case, you will see that there is nothing about a printing press that modifies the device that's disclosed here. Well, that may be, but I'm not sure you answered Judge Lowry's question, which was not whether in the general law of preambles and whether they're limiting or not, this falls on one side of the line or another. But rather structurally, this claim recites a substrate of a printing press and then the substrate, obviously referring back to the substrate of the printing press, or at least so it would seem. Why isn't that the correct reading of the claim such that we should read this claim as if one of the lip express limitations was in a printing press? You're on, even if the court were to read it that way, I don't think it's the spasms of this case

. No different from the paper that is fed through in Morayama, really no different from the bills that get fed through in Ross. It's not structural to the visual inspection system. And even the cases where that Mr. Lowry cites, Pitney Bose, as well as I believe, Polyamérica, in both cases where there's a preamble that is contended not to be a claim and found to be a limitation on the claim, in both instances, the court decided that you could not interpret and understand the actual claims without reference to the specific preamble, that in fact those claims were modified by the preamble. And I think in this case, you will see that there is nothing about a printing press that modifies the device that's disclosed here. Well, that may be, but I'm not sure you answered Judge Lowry's question, which was not whether in the general law of preambles and whether they're limiting or not, this falls on one side of the line or another. But rather structurally, this claim recites a substrate of a printing press and then the substrate, obviously referring back to the substrate of the printing press, or at least so it would seem. Why isn't that the correct reading of the claim such that we should read this claim as if one of the lip express limitations was in a printing press? You're on, even if the court were to read it that way, I don't think it's the spasms of this case. Well, okay, I understand the alternative argument, but my question is if you can get back to Judge Lowry's question, why doesn't the combination of substrate of a printing press and these substrate settle the deal with respect to the, whether the printing press is a limitation of the claim? It may settle the deal, so to speak. However, even if a limitation, it is still an application and the device that disclosed is a standalone device that can be applied to many different processes, including sheet fed printers and stuff. So, I'm sorry to challenge you with questions. We'll give you your three minutes back, but we should hear from a Pelli Council now. Thank you. Mr. Lowry with a W? Yes, Your Honor. Okay, and you're going to split eight NAFE with Mr

. Well, okay, I understand the alternative argument, but my question is if you can get back to Judge Lowry's question, why doesn't the combination of substrate of a printing press and these substrate settle the deal with respect to the, whether the printing press is a limitation of the claim? It may settle the deal, so to speak. However, even if a limitation, it is still an application and the device that disclosed is a standalone device that can be applied to many different processes, including sheet fed printers and stuff. So, I'm sorry to challenge you with questions. We'll give you your three minutes back, but we should hear from a Pelli Council now. Thank you. Mr. Lowry with a W? Yes, Your Honor. Okay, and you're going to split eight NAFE with Mr. Johnson and then try to retain three for cross people. Yes, Your Honor. Matthew Lowry for a quad. Just a brief comment to put this in the context. The invention relates to printing presses a thousand feet per second, 1.7 microseconds to take a picture. The Ross reference relates to an ATM where you're feeding dollars in and you're illuminating not all at once, but you're doing this kind of reds and then greens kind of along the length of the bill, which generates this funky signature that they're using to make sure it's not a counterprone. Those are the references

. Johnson and then try to retain three for cross people. Yes, Your Honor. Matthew Lowry for a quad. Just a brief comment to put this in the context. The invention relates to printing presses a thousand feet per second, 1.7 microseconds to take a picture. The Ross reference relates to an ATM where you're feeding dollars in and you're illuminating not all at once, but you're doing this kind of reds and then greens kind of along the length of the bill, which generates this funky signature that they're using to make sure it's not a counterprone. Those are the references. You rely on this notion that the printing press is this gigantic thing which moves paper to very rapid raise. That's not all printing presses. I used to work in maintenance of printing presses and this is many years ago, but some of them are actually quite slow. So the world of printing press is not defined entirely by something that is as remote from, let's say, the laser printer or the of Maryama or even the paper moving in the in the Ross device. It seems to me an excellent point, Your Honor, and let me magnify that out. Reminded of my second argument, my first argument was front of the judge, I asked a question that means it's excellent and people's of course right. The printing press that goes slow, you would never do this with. It's not obvious to do that in a slow printing press

. You rely on this notion that the printing press is this gigantic thing which moves paper to very rapid raise. That's not all printing presses. I used to work in maintenance of printing presses and this is many years ago, but some of them are actually quite slow. So the world of printing press is not defined entirely by something that is as remote from, let's say, the laser printer or the of Maryama or even the paper moving in the in the Ross device. It seems to me an excellent point, Your Honor, and let me magnify that out. Reminded of my second argument, my first argument was front of the judge, I asked a question that means it's excellent and people's of course right. The printing press that goes slow, you would never do this with. It's not obvious to do that in a slow printing press. You can use an encamp as a light, for example. So we're not talking about that kind of thing. But this reason on such a printing press. I mean if somebody infringed your device in a slow printing press, you too. But such a printing press, I don't know if it would, but such a printing press would never be, it would not render it obvious. So if you're looking at the prior art for that kind of a printing press, you wouldn't look that way. If you're looking at prior art where you would want something more such as what the specific system in the patent, you'd never look at Ross. That's the point

. You can use an encamp as a light, for example. So we're not talking about that kind of thing. But this reason on such a printing press. I mean if somebody infringed your device in a slow printing press, you too. But such a printing press, I don't know if it would, but such a printing press would never be, it would not render it obvious. So if you're looking at the prior art for that kind of a printing press, you wouldn't look that way. If you're looking at prior art where you would want something more such as what the specific system in the patent, you'd never look at Ross. That's the point. It's not the scope of the claim. It's the prior art that wouldn't be combined because what the prior art would show would be not Maryama obviously. It's not a printing press, but even if you had a press that were slow, there's no suggestion that that slow type of press would you would actually use an illumination system that's beyond anything that was already out there in the prior art. Well why wasn't saying you cited here claims one of 16. So the ultimate why is hard to say the question because it wasn't me or the examiner. So I don't know personally if you could ask the other side because they're the ones that filed the petition. What we do know is that it was not relied on by the examiner that what was the issue that was put to the board was. And you just said that it wasn't cited by the protestor

. It's not the scope of the claim. It's the prior art that wouldn't be combined because what the prior art would show would be not Maryama obviously. It's not a printing press, but even if you had a press that were slow, there's no suggestion that that slow type of press would you would actually use an illumination system that's beyond anything that was already out there in the prior art. Well why wasn't saying you cited here claims one of 16. So the ultimate why is hard to say the question because it wasn't me or the examiner. So I don't know personally if you could ask the other side because they're the ones that filed the petition. What we do know is that it was not relied on by the examiner that what was the issue that was put to the board was. And you just said that it wasn't cited by the protestor. I don't know that for certain because I didn't check that last night, but what I do know for certain is it may or may not have been I honestly just don't know and I don't want to say something that's incorrect. However, what is certain is that the examiner did not cite it for the board that the the QI did not cross appeal the examiner's determination that QI before the board did not propose that the board should adopt a new ground of rejection based on Sanya. But you agree that there's an inconsistency between dealing with plants one of six eight and 61 is 72. I would agree that there could be, but again the board actually didn't examine that because that argument was not made to the board nor was any argument as I said for a new ground. How will you to ignore that? Well, the limitations aren't the same. Pretty close. They are close. Well, but I thought your brief more or less explicitly disagree certainly with disagrees with the solicitor with respect to the analogous art of Ross

. I don't know that for certain because I didn't check that last night, but what I do know for certain is it may or may not have been I honestly just don't know and I don't want to say something that's incorrect. However, what is certain is that the examiner did not cite it for the board that the the QI did not cross appeal the examiner's determination that QI before the board did not propose that the board should adopt a new ground of rejection based on Sanya. But you agree that there's an inconsistency between dealing with plants one of six eight and 61 is 72. I would agree that there could be, but again the board actually didn't examine that because that argument was not made to the board nor was any argument as I said for a new ground. How will you to ignore that? Well, the limitations aren't the same. Pretty close. They are close. Well, but I thought your brief more or less explicitly disagree certainly with disagrees with the solicitor with respect to the analogous art of Ross. You say Ross is not analogous art. Yes. So, what seems to have said and the solicitor says it did say that with respect to 61 through 72 it is analogous art. So you take issue with the board or at least with the solicitor in that regard correct? That is correct and in fact we would say that in connection with claim 61 to 72 where Sanya actually was put in play and this goes back to you know even this court has not been asked in the briefing for sure to remain or arguing consistency or whatnot. So I am being presented with things that actually were presented to the court. But in connection with Ross there are several problems and it is an alternative ground for a firmance of claims one to 60 I suppose and it is a ground for reversal that we are requesting on claim 61 to 72. And Ross shows as I said this ATM you feed the dollars in it expressly teaches diffuse light doesn't work in a printing press it scans over time not image and figure out if it matches it does alternating pairs has got reds and greens and blues not taken image all at once. And frankly if you are looking at one of these printing presses where you are trying to make some type of improvement you wouldn't look at Ross and beyond that even if you did look at Ross you wouldn't think it is suitable

. You say Ross is not analogous art. Yes. So, what seems to have said and the solicitor says it did say that with respect to 61 through 72 it is analogous art. So you take issue with the board or at least with the solicitor in that regard correct? That is correct and in fact we would say that in connection with claim 61 to 72 where Sanya actually was put in play and this goes back to you know even this court has not been asked in the briefing for sure to remain or arguing consistency or whatnot. So I am being presented with things that actually were presented to the court. But in connection with Ross there are several problems and it is an alternative ground for a firmance of claims one to 60 I suppose and it is a ground for reversal that we are requesting on claim 61 to 72. And Ross shows as I said this ATM you feed the dollars in it expressly teaches diffuse light doesn't work in a printing press it scans over time not image and figure out if it matches it does alternating pairs has got reds and greens and blues not taken image all at once. And frankly if you are looking at one of these printing presses where you are trying to make some type of improvement you wouldn't look at Ross and beyond that even if you did look at Ross you wouldn't think it is suitable. Here is the thing that I find most interesting the best thing that they could find in the prior art to try and invalidate these claims was in an ATM machine for counterfeit detection. It was not even a camera you know somebody might take a picture like this it's not a camera in the context of a printing press it's not a camera in the context of industrial machines it's not a camera camera of any kind this configuration where you are taking a complete image is not found anywhere in the prior art why is that is because it wasn't a piece to do until it was done in this particular machine is the first instance where we see an actual system where you have a ring around the lens taking an image so if one asks what were the errors the board made fair question substantial evidence one is look at this and there is not substantial evidence to show that one of and the proof is on the people attacking the pack it's not on the patent owner the only evidence that was submitted was the Seymour Declaration and you read the board opinion and you think that the other side to move it no the Seymour Declaration is from the patent owner saying these are the advantages the invention gives and the board comes in and says those are the reasons you would do it in the prior art at hindsight there's not a teaching or a suggestion in the prior art that any of these things would be useful so what the board says is first of all is a high level of skill where that comes from I don't know you won't find it in the briefing that I did look for last night and they say because it's a high level of skill what was put in front of the board was a bachelor's degree in some experience which I personally don't regard as a high level I don't mean to degrade it but it's not like PhDs and many many years of experience so the board says that and then they say it would be obvious to increase light no support for that therefore multiple light sources no support for that therefore multi-directional no support for that in the prior art therefore a certain configuration no support for that therefore circular why not a big bank of lights if you want to increase lights rather than a circular configuration only support for a circular configuration was the ATM counterfeit detection system I respectfully submit you look at all these other things and if you're going to go to led to have a bank of leds if you're going to and so and then the last thing is in connection with that is for the secondary factors the board says no nexus was shown again the board looked at Seymour to take the advantages of the invention and call it a motivation then ignored the rest of Seymour where he said one wouldn't look at Ross this isn't obvious in light of what was going before the system the type of system that would do which I would seek us is not substantial evidence thank you council will hear from the office now the joint you're going to tell us why there was no wind consistency here the skirt your honor may please the court start with quad-text focus on the operations of Ross the rejection did not call for the Ross's operation it didn't call for reliance upon the pattern which the lights focus on Ross it merely relied upon Ross's configuration of the lights in essence the combination is sannio's light which discloses a steady light that remains on during elimination with additional lights places in a known configuration that configuration is Ross now taking that as a given for present purposes why was Ross a Nalagasar for 61 through 72 but not found to be a Nalagasar for one through 60 okay will your honor if because Ross was not found if I understand this the structure of the arguments here the assume that the appellant loses on the argument that the printing press is not part of the limitations of the claims one through 60 nonetheless that gives the appellant the second argument which is that Ross is a Nalagasar and even if the first 60 claims are to a printing press the Nalagas art argument comes in and says Ross applies which is exactly as far as I can see what the p2 with the board found with respect to claim 61 to 72 so why isn't there a fundamental inconsistency in the board's approach well what the board did was it focuses analysis as it relates to claim one on printing press right and then stopped it didn't go any further it did not why not it could have but because it shouldn't well because it decided that it was going to reverse because mariana did not disclose a printing press it decided that it would not also address Ross if very well could have addressed Ross as it relates to a Nalagasar and come up with the same analysis that it did for claim 61 and if it did discuss it then I'm sure it would have mirrored its analysis finding that Ross is a Nalagasar because it deals with the same invention as what the claim to invent or dealt with it dealt with the same problem the problem that the inventor dealt with here is how do you illuminate substrate that's moving well that's what Ross does it has a light that enabled the user to illuminate the substrate that's why shouldn't we affirm on the principle of reverse on the principle appeal and affirm on the cross field well because to bring these similar claims under rejection by the same references no I understand the courts question and I think that part of it relates back to why sanio was not relied upon as it relates to claim one and what's the answer when you look at the prosecution history you see here that this is an interpartles reexamined and in these sort of reexamination the examiner relies heavily upon proposed rejections and here the examiner relied upon qipc's proposed rejection in the reexamination it would be different if they hadn't raised it at all at anywhere but they at least the board considered sanio with regards to 61 72 why wasn't it incumbent upon the examiner or the board to look at it and say we need to look at this reference in combination with the other ones as well yeah I think that it was just overlooked and what happened here is that what do we do with that I don't understand what we do with oh over looked by the board or by the party by all the parties especially qipc because the examiner was was relying upon the proposed rejections of qipc but I think the examiner is aware of sanio doesn't think the examiner have a duty to look at it and reference to the other claims because they're very very similar I mean I think you agree they're very similar why didn't it take them or look at it again it gets back to the type of proceeding that we're dealing with here where the examiner was relying upon the proposed rejections of qipc was that appropriate and in these sort in this context that is what normally is a place where there's a heavy reliance upon proposed rejections but taking it a step further qipc proposed a rejection for sanio only with respect to claim 61 qipc did not all some explanations of why we're here but the question is we have to decide what to do with it and I completely agree with the point why isn't it error for the board not to have looked at sanio with regards to claims one through 60 well I think that it was simply an oversight and none of the parties picked up on it not qipc and not the examiner what do you mean by oversight do you mean oversight in terms of we can't look at it oversight in terms of it's probably harmless or oversight that it is an error well oversight in the sense that qipc did not make the rejection and so the examiner did not identify that as a reference for a waiver argument for claim one your honor and so it is a complete way of support precedent that says that if they don't make a specific reference that they waived reliance on it forever or at least in the proceedings I don't have anything along those lines other than a simple waiver document self but they have a number of opportunities to propose a rejection based upon sanio for claim one and at every turn what they submitted to the office was simply a defense for the fact that mariana actually teaches a printing press as opposed to saying hey and by the way look at sanio sanio also teaches but I take it that while that may be true of sanio that well you could correct me if I'm wrong I may be wrong about this but I understood that qipc was arguing that Ross is a malice art and that would respect to not only claim 61 through 72 but also 1 through 60 am I correct on that I believe that is the argument and that would make sense to your honor based upon the point of time so they don't really need sanio do they if if the right that Ross is an alicist art it doesn't matter if you have you don't need my sanio and you don't need mariana because Ross if it's analogous to a printing press then you're done are you I would agree with that analysis well that why shouldn't we then reverse on the first 60 claims based on that analysis I would agree with the court you would agree with the court that that analysis is correct and that that analysis would drive us to reverse the first 60 claims that seems to make sense to me your honor oh I think that's anything for other mr. trance give a little short time last can I just ask you sorry I don't mean to eat up your time but I'm a little confused about the board's reasoning about claim 18 which it rejected for indefinite about the lack of support why is that indefinite right this whole thing about a negative limitation but I don't understand why saying something lack support is a negative limitation it seems like a limitation right what is that issue in claim 18 it is whether or not there's written descriptions to court street that's supported at the point of illumination okay I get that it seems like it's a written description thing but then the board say that it was rejecting it for indefinite nets because it was a negative limitation yes but I think that what they were really getting out of the fact that there's no written description okay thank you mr. trance I guess we'll hear from mr. Langsitt who has three minutes I will be very brief we agree with mr. Johnson entirely we think that the ruling of the board for claims one through 60 should be reversed and to make it consistent with what has been ruled on by the board for claims 61 to 72 I think Ross is an alleges art we argued that throughout and we argue that here today one further point on that issue and that is that we firmly believe that the other prior our patents involving other print control devices ripping off number et cetera they basically subsumed sanio as well they're analogous to sanio and therefore the board should have held for one through 60 what it held through one through 72 the only other thing I would point out is that we too believe that this was an oversight but a harmful oversight by the board and also it's I think it's already clear because the panel is already stated so and that is that claim one is extraordinarily close to claim to almost identical thank you Ron thank you mr. Langsitt mr. Larkin why don't we just give him a couple of things they're so closely related yeah okay we're very jealous to not let cross the columns argue principal issues but very briefly focusing on the cross appeal yes although there was a I would like to address some some relate to both and so I'd like to address first judge bryce's comment first of all on the in consistency the board did not find ross is not analogous the board made no finding on ross whatsoever it's the board found neither shows a printing press which is unremarkable because an ATM machine which is ross is not a printing press and under the procedures that we've adopted you need to actually find all of the elements in a limitation or obvious in the prior or obvious and what the board said was there's no printing press and what's put before us it wasn't a question of it's not analogous here and it is analogous there the board didn't do that so there's no inconsistency is that true with 61 through 72 as well that the board the board called it analogous it doesn't reach that issue for 1 to 60 nor is that right issue relevant I don't understand that if ross and if is ross analogous for 61 to 72 in the sense that it it teaches or discloses the printing press or is it just about the led we we view it as not analogous however the board did not make that finding or did not rely on that type of finding for claims 1 to 60 I mean I just read the decision while I was seeing there and they they said the proposed rejection which is what we're deciding is what was proposed is mariana and ross there is no printing press and the whole idea about I'm asking about 61 through 72 where they did reject and if they found that ross is analogous and teaches a printing press there then for consistency say they should have for the first one they could have view with 61 through 72 what would I do maybe I'm sorry I'm meeting up your time and maybe I'm reading this incorrectly but I thought the reason 621232 is that sanio disclosed the printing press and they just got to ross for the led like that is what they did for 61 to 72 what you don't have is a proper ground rejection whether ross is analogous or not is irrelevant to whether either mariana or ross discloses the printing press was or what's the board found then the question is should the board have gone beyond the arguments presented to it and the board has no obligation to go beyond the arguments presented to it which was not sanio or any other printing press for claims 1 to 60 and if they did have an obligation what should they have done third or coupled with that is did the petition have an obligation to put it to the board or did actually even the appellant have an obligation to request that of this board that it go beyond the grounds of rejection these arguments weren't made and frankly you're on or if those arguments had been made the arguments that were made by the patent owner those would all shift to and we would have a different appeal that's why article three courts come in they decide the issues that are presented to them because if the court kind of goes into all these other things that weren't actually requested or argued in the briefing or whatnot you would have had a different appeal not just from their side when you say the arguments weren't made you mean to the board or do you mean to the examiner or do you mean to the board to the board where you're focusing on the board yes the examiner under the rejection the board reviewed that rejection that is their mandate the inter parties re exams the board has been very careful to review those arguments that were presented it you are asked for authority for the notion and I can't cite a specific case because I wasn't argued so I didn't research it but I do know the statute says you have to put it there and if you didn't put it there it finds against you if you could have let me if I could could I send the let me make sure I understand what your argument is with respect to the role of analogous heart in a rejection I understand that when you have analogous heart what you are saying if you say it to an artist is that a person's skill in the art in field number one would have looked to that are naturally in the course of considering the invention and would have found in that analogous something which if applicable if it would render the invention obvious would be enough to to invalidate the claim so isn't if that's true that's the correct way to characterize a finding of an analogous heart why is it necessary that there be even a reference to anything with a printing press if Ross is an analogous heart because this court and the Supreme Court has been explicit you cannot use hindsight and so we have to pick that I'm not looking for I know you're on or not I'll get if I'm okay okay so the test for analogous art is same field of endeavor this wasn't brief which but same field of endeavor it wasn't in Ray Wood right same field of endeavor or reasonably pertinent to the problem to be solved right this is not in the same field of endeavor no no no that it is in the same field that Ross is in the same field of endeavor as the printing press then you don't need any reference that contains a printing press correct no actually you do because in order to reject something based on the prior art you need it in the prior art that's why in the patent office you have to present the prior art and say here are two things and the reason to combine and by the way the board did not find it to be in the same field of endeavor necessarily it could be reasonably pertinent to the problem to be solved which is more like what they said which is illumination our response being if you look to the ATM you can't just take a piece of Ross you need to take all of Ross which is a completely different system which is why thank you counsel will take face under revising thank you are

Court would like to commend Council for making extra efforts to be here on difficult day. It obviously reflects your professional responsibility and appreciation for the court's schedule. So we do appreciate it. We have four cases today. Patent case, re-examination case. The patent office, the trademark case from the patent office, patent case from district court and a government employee case from the MSPB, which is submitted on the briefs and not being argued. Now, first case, and I understand the Council have agreed on a bit of an irregular time frame, which is just fine with us. And Mr. Langfitt will speak for eight minutes and reserve three. And then we'll hear from a belly council. Please, Mr. Langfitt. This is QI Press Controls versus the PTO in 2010, 2012, 1360 and 1361, Mr. Langfitt. Good morning, Your Honours. My name is David Langfitt. I represent QI Press Controls, the appellant. Given that I have eight minutes, I want to get straight to the point. I think that the main question, the overarching question here, is whether the multidirectional LED lighting and apparatus with a camera lens and the 423 patent is an invention worthy of a patent or is it obvious based on prior art? And specifically, is those that ring of LEDs something new or inventive or is it an arrangement such as the last puzzle piece in a jigsaw puzzle that was simply put in place based on known and obvious art? Is there an explanation that deluded me for why the examiner relied on Marriama and Ross with respect to claims one through 60 and Sino only with respect to Sino plus Ross only with respect to claim 61 through 72? No, I don't believe that I have the explanation, Your Honor. I know that the representative will need the attorney for the offices here. However, I would submit that it could well be relied on. Moriama could be relied on in rejecting claims 61 to 72. I think it should have been relied on. The more pertinent question is why wasn't Sino relied on in connection with the first 60? I think it should have been. I don't think that there is any distinction. I think if you look at the prior art patents with respect to CMOS design, it discloses I take it a printing press with an elimination system. Correct. I believe it's a standard elimination system. It's certainly not an LED elimination system. It is, I think it's very important to note, that this entire thing is an apparatus that is not a printing press. It is an add-on. It is sold as a separate device that has a camera, a computer, an elimination system. That's what it is. I think if you look at the other prior art patents, they are in some equivalent to Sino. They teach what Sino teaches. It is a mystery to me why Sino was not cited. That's the answer to that question. And that RIPPINOP, TELM REC, et cetera, were not cited from 61 to 72. I think they should have been. And I think that, Apple, Paul, of your honors question, if you look to the written opinion, you should be arguing that consistency should reverse the point you're arguing and uphold the cross appeal. No. No. No, your honor. What I am saying is that you should uphold. You think the board should get a remand to consider Sino and reject the claims. Yes. Yes. Reject all the claims. Right. Though I would say that the remand shouldn't necessarily simply have the board reconsider and consider Sino, I would prefer that the panel considers Sino and all the prior art patents that were cited. We're not out of super boy. Here we've got a new world with these incimination cases, patent office defending, patentability. We shouldn't be the fact finder and making initial rejection. Well certainly, your honor, based on the powers that you've stated the court has. Yes. Remand the entire case for consideration of Sino and we believe that right in the opinion that the board wrote with respect to claim 61 to 72, the board got it right. That's what I was suggesting that you would wish. Yes. Exactly. There's a second issue which I thought you were going to focus on more than Sino, which is Ross. Ross, the board seems to have found it to be analogous art in respect to 61 through 72, but said nothing about Ross as analogous art with respects to 1 through 60. I think that's an error. And is there any explanation for that as far as you can tell? I can't see the explanation. I think that it's an error. And I think that what happened strangely in the first 60 claims is that the board aired by somehow elevating the term printing press into a desposited claim within the claim. And it's not. And I think that what this Ross really affects that analysis, I mean, is the point of 1 through 60 that they looked at Morayama and said it's limited to printing press. So whether you have the LED lights from Ross or not, Morayama doesn't teach printing press. It does not teach printing press, but printing press is not the apparatus disclosed. It is an application. And the apparatus disclosed, and it's very specific in the claims and in the preamble. Can I ask, did you or anybody raise Saniyau with respect to claims 1 or 60? I believe that it was raised within the examiner's report. I believe that is there any where in the record? You can point me to that. At the top of my head I cannot, but Saniyau clearly was part of the record. And it was the examiner referred to it. But did he refer to it with regard to claims 1 through 60 or just 61 through 72? I can't recall your honor for the examiner was a woman just for the record, and I believe that the examiner was well aware of that. But even if it's not referred to in 1 through 60, our contention is that if you look at all the other prior art patents that are referred to, read them off, Helmrich, Hanson, etc., some of which are actually owned by Quattek or licensed to Quattek, they all are essentially the equivalent of Saniyau. Your position I take it is that even if you're incorrect with respect to your submission that printing press is not a limitation of the claims, that even then you go to Ross's analogous art, and because it's analogous art, you don't have to have the actual disclosure of a printing press. I was a fellow at point with that. That is the point. But even more to the point, there is nothing in the apparatus and in the claims that describe the apparatus that is dependent on printing press. If you look at that apparatus and the claims that describe it, it can function, first of all, number one, and admittedly by Quattek on 8. But there you run into the waiver argument that's been raised by your opponents, and I read the section of your brief to the board in which you claim that you raised this issue, and frankly, if not find that to be at best, it was a very opaque sort of illusion to this argument. It certainly wasn't an argument that was made as directly as you're making it now. No, it was not made, but our contention is that it was made sufficient to give notice that printing press had no patentable weight. But even aside from waiver, you've got a system configured to be an optical communication with a substrate of a printing press. And then you've got the next limitation configured to record images printed on the substrate, obviously referring to the substrate of the printing press. How can it not be a limitation of the claims? The reason it's not a limitation of the claims is that first of all, let's be clear, even in the introductory section of the invention, a substrate is almost always a piece of paper. No different from the paper that is fed through in Morayama, really no different from the bills that get fed through in Ross. It's not structural to the visual inspection system. And even the cases where that Mr. Lowry cites, Pitney Bose, as well as I believe, Polyamérica, in both cases where there's a preamble that is contended not to be a claim and found to be a limitation on the claim, in both instances, the court decided that you could not interpret and understand the actual claims without reference to the specific preamble, that in fact those claims were modified by the preamble. And I think in this case, you will see that there is nothing about a printing press that modifies the device that's disclosed here. Well, that may be, but I'm not sure you answered Judge Lowry's question, which was not whether in the general law of preambles and whether they're limiting or not, this falls on one side of the line or another. But rather structurally, this claim recites a substrate of a printing press and then the substrate, obviously referring back to the substrate of the printing press, or at least so it would seem. Why isn't that the correct reading of the claim such that we should read this claim as if one of the lip express limitations was in a printing press? You're on, even if the court were to read it that way, I don't think it's the spasms of this case. Well, okay, I understand the alternative argument, but my question is if you can get back to Judge Lowry's question, why doesn't the combination of substrate of a printing press and these substrate settle the deal with respect to the, whether the printing press is a limitation of the claim? It may settle the deal, so to speak. However, even if a limitation, it is still an application and the device that disclosed is a standalone device that can be applied to many different processes, including sheet fed printers and stuff. So, I'm sorry to challenge you with questions. We'll give you your three minutes back, but we should hear from a Pelli Council now. Thank you. Mr. Lowry with a W? Yes, Your Honor. Okay, and you're going to split eight NAFE with Mr. Johnson and then try to retain three for cross people. Yes, Your Honor. Matthew Lowry for a quad. Just a brief comment to put this in the context. The invention relates to printing presses a thousand feet per second, 1.7 microseconds to take a picture. The Ross reference relates to an ATM where you're feeding dollars in and you're illuminating not all at once, but you're doing this kind of reds and then greens kind of along the length of the bill, which generates this funky signature that they're using to make sure it's not a counterprone. Those are the references. You rely on this notion that the printing press is this gigantic thing which moves paper to very rapid raise. That's not all printing presses. I used to work in maintenance of printing presses and this is many years ago, but some of them are actually quite slow. So the world of printing press is not defined entirely by something that is as remote from, let's say, the laser printer or the of Maryama or even the paper moving in the in the Ross device. It seems to me an excellent point, Your Honor, and let me magnify that out. Reminded of my second argument, my first argument was front of the judge, I asked a question that means it's excellent and people's of course right. The printing press that goes slow, you would never do this with. It's not obvious to do that in a slow printing press. You can use an encamp as a light, for example. So we're not talking about that kind of thing. But this reason on such a printing press. I mean if somebody infringed your device in a slow printing press, you too. But such a printing press, I don't know if it would, but such a printing press would never be, it would not render it obvious. So if you're looking at the prior art for that kind of a printing press, you wouldn't look that way. If you're looking at prior art where you would want something more such as what the specific system in the patent, you'd never look at Ross. That's the point. It's not the scope of the claim. It's the prior art that wouldn't be combined because what the prior art would show would be not Maryama obviously. It's not a printing press, but even if you had a press that were slow, there's no suggestion that that slow type of press would you would actually use an illumination system that's beyond anything that was already out there in the prior art. Well why wasn't saying you cited here claims one of 16. So the ultimate why is hard to say the question because it wasn't me or the examiner. So I don't know personally if you could ask the other side because they're the ones that filed the petition. What we do know is that it was not relied on by the examiner that what was the issue that was put to the board was. And you just said that it wasn't cited by the protestor. I don't know that for certain because I didn't check that last night, but what I do know for certain is it may or may not have been I honestly just don't know and I don't want to say something that's incorrect. However, what is certain is that the examiner did not cite it for the board that the the QI did not cross appeal the examiner's determination that QI before the board did not propose that the board should adopt a new ground of rejection based on Sanya. But you agree that there's an inconsistency between dealing with plants one of six eight and 61 is 72. I would agree that there could be, but again the board actually didn't examine that because that argument was not made to the board nor was any argument as I said for a new ground. How will you to ignore that? Well, the limitations aren't the same. Pretty close. They are close. Well, but I thought your brief more or less explicitly disagree certainly with disagrees with the solicitor with respect to the analogous art of Ross. You say Ross is not analogous art. Yes. So, what seems to have said and the solicitor says it did say that with respect to 61 through 72 it is analogous art. So you take issue with the board or at least with the solicitor in that regard correct? That is correct and in fact we would say that in connection with claim 61 to 72 where Sanya actually was put in play and this goes back to you know even this court has not been asked in the briefing for sure to remain or arguing consistency or whatnot. So I am being presented with things that actually were presented to the court. But in connection with Ross there are several problems and it is an alternative ground for a firmance of claims one to 60 I suppose and it is a ground for reversal that we are requesting on claim 61 to 72. And Ross shows as I said this ATM you feed the dollars in it expressly teaches diffuse light doesn't work in a printing press it scans over time not image and figure out if it matches it does alternating pairs has got reds and greens and blues not taken image all at once. And frankly if you are looking at one of these printing presses where you are trying to make some type of improvement you wouldn't look at Ross and beyond that even if you did look at Ross you wouldn't think it is suitable. Here is the thing that I find most interesting the best thing that they could find in the prior art to try and invalidate these claims was in an ATM machine for counterfeit detection. It was not even a camera you know somebody might take a picture like this it's not a camera in the context of a printing press it's not a camera in the context of industrial machines it's not a camera camera of any kind this configuration where you are taking a complete image is not found anywhere in the prior art why is that is because it wasn't a piece to do until it was done in this particular machine is the first instance where we see an actual system where you have a ring around the lens taking an image so if one asks what were the errors the board made fair question substantial evidence one is look at this and there is not substantial evidence to show that one of and the proof is on the people attacking the pack it's not on the patent owner the only evidence that was submitted was the Seymour Declaration and you read the board opinion and you think that the other side to move it no the Seymour Declaration is from the patent owner saying these are the advantages the invention gives and the board comes in and says those are the reasons you would do it in the prior art at hindsight there's not a teaching or a suggestion in the prior art that any of these things would be useful so what the board says is first of all is a high level of skill where that comes from I don't know you won't find it in the briefing that I did look for last night and they say because it's a high level of skill what was put in front of the board was a bachelor's degree in some experience which I personally don't regard as a high level I don't mean to degrade it but it's not like PhDs and many many years of experience so the board says that and then they say it would be obvious to increase light no support for that therefore multiple light sources no support for that therefore multi-directional no support for that in the prior art therefore a certain configuration no support for that therefore circular why not a big bank of lights if you want to increase lights rather than a circular configuration only support for a circular configuration was the ATM counterfeit detection system I respectfully submit you look at all these other things and if you're going to go to led to have a bank of leds if you're going to and so and then the last thing is in connection with that is for the secondary factors the board says no nexus was shown again the board looked at Seymour to take the advantages of the invention and call it a motivation then ignored the rest of Seymour where he said one wouldn't look at Ross this isn't obvious in light of what was going before the system the type of system that would do which I would seek us is not substantial evidence thank you council will hear from the office now the joint you're going to tell us why there was no wind consistency here the skirt your honor may please the court start with quad-text focus on the operations of Ross the rejection did not call for the Ross's operation it didn't call for reliance upon the pattern which the lights focus on Ross it merely relied upon Ross's configuration of the lights in essence the combination is sannio's light which discloses a steady light that remains on during elimination with additional lights places in a known configuration that configuration is Ross now taking that as a given for present purposes why was Ross a Nalagasar for 61 through 72 but not found to be a Nalagasar for one through 60 okay will your honor if because Ross was not found if I understand this the structure of the arguments here the assume that the appellant loses on the argument that the printing press is not part of the limitations of the claims one through 60 nonetheless that gives the appellant the second argument which is that Ross is a Nalagasar and even if the first 60 claims are to a printing press the Nalagas art argument comes in and says Ross applies which is exactly as far as I can see what the p2 with the board found with respect to claim 61 to 72 so why isn't there a fundamental inconsistency in the board's approach well what the board did was it focuses analysis as it relates to claim one on printing press right and then stopped it didn't go any further it did not why not it could have but because it shouldn't well because it decided that it was going to reverse because mariana did not disclose a printing press it decided that it would not also address Ross if very well could have addressed Ross as it relates to a Nalagasar and come up with the same analysis that it did for claim 61 and if it did discuss it then I'm sure it would have mirrored its analysis finding that Ross is a Nalagasar because it deals with the same invention as what the claim to invent or dealt with it dealt with the same problem the problem that the inventor dealt with here is how do you illuminate substrate that's moving well that's what Ross does it has a light that enabled the user to illuminate the substrate that's why shouldn't we affirm on the principle of reverse on the principle appeal and affirm on the cross field well because to bring these similar claims under rejection by the same references no I understand the courts question and I think that part of it relates back to why sanio was not relied upon as it relates to claim one and what's the answer when you look at the prosecution history you see here that this is an interpartles reexamined and in these sort of reexamination the examiner relies heavily upon proposed rejections and here the examiner relied upon qipc's proposed rejection in the reexamination it would be different if they hadn't raised it at all at anywhere but they at least the board considered sanio with regards to 61 72 why wasn't it incumbent upon the examiner or the board to look at it and say we need to look at this reference in combination with the other ones as well yeah I think that it was just overlooked and what happened here is that what do we do with that I don't understand what we do with oh over looked by the board or by the party by all the parties especially qipc because the examiner was was relying upon the proposed rejections of qipc but I think the examiner is aware of sanio doesn't think the examiner have a duty to look at it and reference to the other claims because they're very very similar I mean I think you agree they're very similar why didn't it take them or look at it again it gets back to the type of proceeding that we're dealing with here where the examiner was relying upon the proposed rejections of qipc was that appropriate and in these sort in this context that is what normally is a place where there's a heavy reliance upon proposed rejections but taking it a step further qipc proposed a rejection for sanio only with respect to claim 61 qipc did not all some explanations of why we're here but the question is we have to decide what to do with it and I completely agree with the point why isn't it error for the board not to have looked at sanio with regards to claims one through 60 well I think that it was simply an oversight and none of the parties picked up on it not qipc and not the examiner what do you mean by oversight do you mean oversight in terms of we can't look at it oversight in terms of it's probably harmless or oversight that it is an error well oversight in the sense that qipc did not make the rejection and so the examiner did not identify that as a reference for a waiver argument for claim one your honor and so it is a complete way of support precedent that says that if they don't make a specific reference that they waived reliance on it forever or at least in the proceedings I don't have anything along those lines other than a simple waiver document self but they have a number of opportunities to propose a rejection based upon sanio for claim one and at every turn what they submitted to the office was simply a defense for the fact that mariana actually teaches a printing press as opposed to saying hey and by the way look at sanio sanio also teaches but I take it that while that may be true of sanio that well you could correct me if I'm wrong I may be wrong about this but I understood that qipc was arguing that Ross is a malice art and that would respect to not only claim 61 through 72 but also 1 through 60 am I correct on that I believe that is the argument and that would make sense to your honor based upon the point of time so they don't really need sanio do they if if the right that Ross is an alicist art it doesn't matter if you have you don't need my sanio and you don't need mariana because Ross if it's analogous to a printing press then you're done are you I would agree with that analysis well that why shouldn't we then reverse on the first 60 claims based on that analysis I would agree with the court you would agree with the court that that analysis is correct and that that analysis would drive us to reverse the first 60 claims that seems to make sense to me your honor oh I think that's anything for other mr. trance give a little short time last can I just ask you sorry I don't mean to eat up your time but I'm a little confused about the board's reasoning about claim 18 which it rejected for indefinite about the lack of support why is that indefinite right this whole thing about a negative limitation but I don't understand why saying something lack support is a negative limitation it seems like a limitation right what is that issue in claim 18 it is whether or not there's written descriptions to court street that's supported at the point of illumination okay I get that it seems like it's a written description thing but then the board say that it was rejecting it for indefinite nets because it was a negative limitation yes but I think that what they were really getting out of the fact that there's no written description okay thank you mr. trance I guess we'll hear from mr. Langsitt who has three minutes I will be very brief we agree with mr. Johnson entirely we think that the ruling of the board for claims one through 60 should be reversed and to make it consistent with what has been ruled on by the board for claims 61 to 72 I think Ross is an alleges art we argued that throughout and we argue that here today one further point on that issue and that is that we firmly believe that the other prior our patents involving other print control devices ripping off number et cetera they basically subsumed sanio as well they're analogous to sanio and therefore the board should have held for one through 60 what it held through one through 72 the only other thing I would point out is that we too believe that this was an oversight but a harmful oversight by the board and also it's I think it's already clear because the panel is already stated so and that is that claim one is extraordinarily close to claim to almost identical thank you Ron thank you mr. Langsitt mr. Larkin why don't we just give him a couple of things they're so closely related yeah okay we're very jealous to not let cross the columns argue principal issues but very briefly focusing on the cross appeal yes although there was a I would like to address some some relate to both and so I'd like to address first judge bryce's comment first of all on the in consistency the board did not find ross is not analogous the board made no finding on ross whatsoever it's the board found neither shows a printing press which is unremarkable because an ATM machine which is ross is not a printing press and under the procedures that we've adopted you need to actually find all of the elements in a limitation or obvious in the prior or obvious and what the board said was there's no printing press and what's put before us it wasn't a question of it's not analogous here and it is analogous there the board didn't do that so there's no inconsistency is that true with 61 through 72 as well that the board the board called it analogous it doesn't reach that issue for 1 to 60 nor is that right issue relevant I don't understand that if ross and if is ross analogous for 61 to 72 in the sense that it it teaches or discloses the printing press or is it just about the led we we view it as not analogous however the board did not make that finding or did not rely on that type of finding for claims 1 to 60 I mean I just read the decision while I was seeing there and they they said the proposed rejection which is what we're deciding is what was proposed is mariana and ross there is no printing press and the whole idea about I'm asking about 61 through 72 where they did reject and if they found that ross is analogous and teaches a printing press there then for consistency say they should have for the first one they could have view with 61 through 72 what would I do maybe I'm sorry I'm meeting up your time and maybe I'm reading this incorrectly but I thought the reason 621232 is that sanio disclosed the printing press and they just got to ross for the led like that is what they did for 61 to 72 what you don't have is a proper ground rejection whether ross is analogous or not is irrelevant to whether either mariana or ross discloses the printing press was or what's the board found then the question is should the board have gone beyond the arguments presented to it and the board has no obligation to go beyond the arguments presented to it which was not sanio or any other printing press for claims 1 to 60 and if they did have an obligation what should they have done third or coupled with that is did the petition have an obligation to put it to the board or did actually even the appellant have an obligation to request that of this board that it go beyond the grounds of rejection these arguments weren't made and frankly you're on or if those arguments had been made the arguments that were made by the patent owner those would all shift to and we would have a different appeal that's why article three courts come in they decide the issues that are presented to them because if the court kind of goes into all these other things that weren't actually requested or argued in the briefing or whatnot you would have had a different appeal not just from their side when you say the arguments weren't made you mean to the board or do you mean to the examiner or do you mean to the board to the board where you're focusing on the board yes the examiner under the rejection the board reviewed that rejection that is their mandate the inter parties re exams the board has been very careful to review those arguments that were presented it you are asked for authority for the notion and I can't cite a specific case because I wasn't argued so I didn't research it but I do know the statute says you have to put it there and if you didn't put it there it finds against you if you could have let me if I could could I send the let me make sure I understand what your argument is with respect to the role of analogous heart in a rejection I understand that when you have analogous heart what you are saying if you say it to an artist is that a person's skill in the art in field number one would have looked to that are naturally in the course of considering the invention and would have found in that analogous something which if applicable if it would render the invention obvious would be enough to to invalidate the claim so isn't if that's true that's the correct way to characterize a finding of an analogous heart why is it necessary that there be even a reference to anything with a printing press if Ross is an analogous heart because this court and the Supreme Court has been explicit you cannot use hindsight and so we have to pick that I'm not looking for I know you're on or not I'll get if I'm okay okay so the test for analogous art is same field of endeavor this wasn't brief which but same field of endeavor it wasn't in Ray Wood right same field of endeavor or reasonably pertinent to the problem to be solved right this is not in the same field of endeavor no no no that it is in the same field that Ross is in the same field of endeavor as the printing press then you don't need any reference that contains a printing press correct no actually you do because in order to reject something based on the prior art you need it in the prior art that's why in the patent office you have to present the prior art and say here are two things and the reason to combine and by the way the board did not find it to be in the same field of endeavor necessarily it could be reasonably pertinent to the problem to be solved which is more like what they said which is illumination our response being if you look to the ATM you can't just take a piece of Ross you need to take all of Ross which is a completely different system which is why thank you counsel will take face under revising thank you ar