open is a case study in obviousness rectangles within rectangles at the request of its customers corning is standard prior parts and industry standards to some of them like puzzle pieces it to me of chaos are in the kit in the course of not finding these a standard which is the cutouts used to place those adapters in place and the reason why that was appropriate is because we look at age one thousand one hundred and forty five in the focus standard what it says is that the dimensions of the surfaces of the adapt interface with the mounting panel are defined by the cutouts of the panel so that as a fact finding that you want to find to be clearly erroneous we do believe they were the focus on a document incorrectly on the cli context but it was a fact finding that the board made so we'd have to took into account unclaimed adapter features such as mounting and expose your excess ability etc so even if he used a standard that was incorrect in the board's view it didn't matter because he specifically accounted for things like mounting and other things that were the where you're getting access to the adapter successor of none of which are claimed by the way which is really are the argument here which is that these are all features that are being read into the claims and that is that you're actually asking us to conduct a claim construction for the st time on how to learn to we're not your honor but this is an issue of claim destruction in the cases are clear on this that there was no issue of claim construction presented below it was there but the board's analysis raises that because what happened here was that by reading underscores the obviousness of this so didn't he can see that there would be lots of other factors that you might take into account of that he didn't take them into account but he did take them into account in fact what he said was that he was taking into it by removing the adopt by st calculating a maximum number of doctors that would fit into this standardized use space which is exactly what doctors mr staver did the inventor he then said i'm going to remove a requisite number of adapters that and my knowledge of  skill would be necessary to take care of everything else the accessibility the other and all these limitless unclaimed after features that that corning raises that's exactly what mr stabler did in fact if you compare their their respective  and then secondly mr staver used his knowledge of one of skill to remove a certain number to account for all of these unclaimed futures even though he didn't have to that's exactly what mr staver testified to the only daylight between what they did is the fact that mr staver used an actual l c adapter and the dr did you say this used to cut out that that a doctor sits in right so the board found that he used the wrong size but what the board didn't account for next was the fact that he he has to worry about for example what's the ratio of simplex adapters to duplex adapters so depending on that particular composition you'll have to account for that and that's exactly why he left out of that space and in fact he left plenty of adequate space twenty percent and twenty five percent with it in the context of the st value space standard and for the nd one it was twenty percent and forty percent so tons of space to account for all of these different features think that's that's the st thing the nd thing is that it's interesting to know that corning actually never responds to the correctness of the calculation the dr did you say this came up with but even if he even admitted to this calculation was purely random he basically just  ok that's a quick look it was interesting because how do we know how they got to the various numbers that they were citing the claims good question so i think with that with i think the answer is and how it helps us here is that th people of skill in the art do these sorts of calculations and make judgement calls all the time and i think that this patent supports that so and in fact when the invention is incredibly obvious this court's precedent is clear that the expert does not have to spell out every single detail especially with respect to this point when it's clear that the knowledge of one of skill is what's at issue here so we have and we cited a litany of cases for that proposition so that the board was aired in that rejecting his testimony is conclusory on this particular point and the case law backs that up especially when dealing with simple inventions where common sense should be left at the door but  are mounting requirements no where in the claims it goes on and on all these different features that are written so i think that's the that's the st episode and that's a purely legal question so that's one way around it i think the nd way around it is the fact that dr d if you say this did account for these features even though he didn't have to but there was evidence that want to kill him they are would consider accessibility right that they might but that wasn't what was claimed we have a very simple claim here there's only three limitations two of which are  disclosed in the wheeler reference don't contest that but if one of the art would in connection with these claims consider issues of accessibility then why and the board made that finding why do we ignore them because they're not but i think we have to go back to the fact they're not claimed but even if they even if we should take them into account jo dr de crusade is noted and that's what the board didn't address the board doesn't address the fact that he took that into account i mean look how much you space was left when we did we do the calculations in our brief which are based on d it's hard to get a full understanding of what our team did you say this should have done when we're dealing with a moving target which is what we're reading into the claims and what we what shouldn't we be board's decision st it's experts analysis depends entirely on a misreading of the focus document which the board rejected on the facts and they don't even in their briefs argue about why the board is wrong in its reading of the document that means that panel its experts consistently understated the size of adaptors by equating them with the size of the mounting holes as opposed to the entire structure of the adapter that measurement is the linchpin of their theory and without inventor telling you what he did without getting into all of the calculations that the inventor actually did but walking through just as a general matter what his process was the other is attempting to satisfy their burden of showing that a person of ordinary skill in the art would have found this these didn't see limitations to be obvious and the board made factual findings as is your honor previously noted about the things the were the person of ordinary skill the art would have considered and of course one of the things that a person of ordinary skill in the art was considered was the actual size of the adapters as opposed to the size of the hole which consistently understates the measurements the there that their expert did and so i think that those factual findings by the board compel affirm it so i think what is telling is that in their reply brief and again today here at oral argument can do attempts to shift the burden of proof challenger to the patentee that is especially true where the only issues to be considered are what the art discloses whether there would have been a motivation to combine the prior art and whether that combination would render the patent claim obvious and this court in magnum oil specifically addresses and distinguishes a dynamic drain where explained no that's dealing with the situation where the patent owners attempting to swear behind and there they are the panda owner has a bird but that's not true in terms of obvious and the argument that the painted wood is relying on is inconsistent with magnum oil and it's inconsistent with cycle bins of grain the they also attempt to manufacture a contrived claim construction argument for this appeal to avoid substantial evidence review because they know that they cannot overcome the board's factual findings and there is there was no interpretive dispute before the board and there is no interpretive dispute on appeal here because this situation is exactly what the court has encountered in a number of other contexts the board can consider what would actually motivate a person of ordinary skill in the art and it's not just simply to what to do to determine what is feasible they have to be motivated to to want to combine a part to make something that is desirable is the score put it in when when or international versus wang and i think this court's decision in appetites vs wise captures it well said quote to the extent the board considered stability which was not a limitation in the claims we considered stability during its obviousness analysis generally it did so in the context of assessing whether a skilled artisan would have been motivated to combine the references that is not the same as importing a limitation into the claim in the quote but yet that's he's essentially arguing well that is importing a limitation into the claim and just like in the pharmaceutical context in deciding what would motivate a person of ordinary skill in the art to develop a particular drug you consider well is it going to be therapeutically effective will it be nontoxic those your basic argument to say this is really ready a factual issue and under our standard of review there was substantial evidence in the record to support the board that the dude was just playing he literally took the next words right out of my mouth come down to the factual findings by the board and unless the court has questions about those or further questions for me on any of the issues that that have been raised i'm not sure there's a lot more to be said because i don't think that there is a claim construction here shoot here that is presented at all it's certainly not importing limitations there is one thing more busy you could say thank you i will say that and you can sit down if there are no no further questions from the rest of you thank you all no one ever shift to them when we made our prima fascia case of obviousness and that's the issue here they didn't respond to why the end result of our calculations was wrong we've never seen that and in fact we still haven't heard why they're wrong why is that number at the end of the day wrong the nd thing with respect to motivation that we have to remember so they make an argument basically that said that all these unclaimed features go to the issue of motivation well the problem with that is that the real issue about motivation had to do with independently and that his analysis was consistent with the law which is where you have a very obvious invention that's very simple you don't have to say every single thing in your declaration specially things that are known by want to ordinary skill in the art like this particular issue of how much space to leave which is exactly what mr staver testified to and then lastly as i just said corning didn't satisfy its burden of production in coming back and saying ok this is why your end result is wrong and we still haven't heard that today so i think with this case boils down to is the application of very simple math using known standards and prior art and for these reasons we believe that we prevail and that this fortune reversed or  and i'm i'm struck by the fact that these these two cases these two matters that we've been hearing have the same parties  attorneys and i'm struck by the fact that the board the boards or the board that decided all of these cases where the same board of directors was the same board and anticipation so we think this is this is really the outlier and the should fall in line with all of those other cases because frankly all this technology at its core would've been very obvious and in fact this is really the poster child of the problem is you just treated it like an out detail on this particular point of how much space is left but people of scale in the art in this area maybe because the technology is relatively straightforward they don't really explain that and in fact the determination is an expert on the other side i'm sorry there