the united states court of appeals for the federal circuit is now open and in session god save the united states and this honorable court leakage or air retention requirement there is no lexicography disavow or disclaimer for no air leakage and in fact prosecution history for the patent family shows that t w w represented to the public that continuously leaking in their beds are inflatable bodies we ask that the clean construction be corrected to make clear that inflatable body does not have a no clear that in this case the term inflatable body refers to a substantially air tight structure that expands or swells with filled with air or other gas an even says stated differently the structure of an inflatable body must be understood that term to be to be thank you judge still our issue is not with the term substantially airtight it is that substantially retention requirement for which there is no disavow disclaimer or lexicography and that is what you think mr carter why do you think the board interpreted substantially just how they when they applied the plane construction to the channel reference oh it's at the top of appendix twenty nine dollars carrying the bottom of appendix twenty nine dollars carrying on to thirty  the panel said critically the purpose of ch'an is to allow air to in a tally continuously escape into taluk spill to form an air cushion on which choice two rides so they were focused on whether air was allowed to continuously scape when they made their finding on jan and we believe that that issue of of continuously escaping air is a matter of looking when they're when they're applying substantially or tight they are looking at whether continuously escaping air can result in a substantially airtight inflatable body and we know from other prosecution history that we have submitted in this case involving the higgs and workman references those are air beds used in a hospital setting that have continuously escaping air the kind that you would see with patients so that you can treat bed sores that with the continuously escaping air t w w said that those are inflatable bodies so know it is from a related patent directly related using the exact same specification what do you think of the differen well in in the clean construction you're looking at the at the intrinsic evident in what it is that a term means and here we believe that this issue of continuously escaping here is part of the claim construction analysis that should be decided as a matter of wall when this clean term is applied now as as far as also what is leading us that this is a matter of plain construction what it is that the court did in its definition lead to a no air leakage or an air retention requirement you can see in the written brief from g m worldwide they refer to air leakage as part of what it is they see as the definition for substantially or tight and on page thirty law as opposed to a matter of fact agents that it does is correct based on the intrinsic evidence in the higgs and workman references in the in the related application that has the exact same specification in the fact you can look on  pages twenty five and thirty four of t w w's brief that they are reading that in as part of this construction then i will also add that there was a recent claim construction ruling in the eastern district  texas on the same pattern where judge payne decided that there is a that as part of clean construction that there is an air retention or no air leakage requirement so this issue of no air leakage and air retention we believe is a matter of clean construction that needs to be decided before mr carter i want to make sure i understand the record correctly now but to point out why we believe this is a claim construction issue to substantially airtight issue was raised in a nother case involving the same patent the owen a patent and as a matter of claim interested in knowing where you think the board yes and that is that is a pix twenty nine to thirty where it is that you see that when they are analyzing chan that they  talking about the continuously escaping air and i acknowledge that they made that comment as part of their analysis of chan in applying substantially or tight but we believe that this issue of continuously escaping air needs to be addressed as a matter of claim construction when you look at all of the intrinsic evidence o applying an improperly overly stringent obviousness test the modification was a simple change in simple technology that provided a clear benefit of eliminating a jagged edge between the pump in the solar panel it doesn't say it has a jagged edge but it clearly shows that so the reference itself is very clear that there is a jagged edge and in fact the p t have panel acknowledged on appendix forty one dollars that the modification would have a more even surface without as large of of of a bulge we believe the p t panel ignored inconsistent decisions on related to just about half way down there on the right hand side there's a sense that starts with respect to prior combination discloses all the elements obviousness just boils down to whether a post would have been led to make this combination with a reasonable expectation of success and we believe that this is clearly a case where a person  skill in the art looking at figures four dollars and five dollars a perry any would have wanted to eliminate the jagged edges or bold to have an even surface across the top of the pump in the solar panels and that that simple change provided the question which is the way i was looking at this case is that you have contrary experts well let me back up we've got the position thing that would have been obvious to make the modification for you one being spatial efficiency and the other one being and so but there's expert testimony on both of those reasons going both ways one expert saying it would have been obvious another expert saying no there's no reason to do that in fact it would result in other issues or other problems and another word expert testimony on these two factual issues doesn't isn't the board limited to just looking at the reasons to combine provided in well they are entitled to rely on the on the expert testimony i think the main issue that we see is the did not rely on that testimony they ignored statements regarding chaffee which is used for simultaneous invention they ignored the or when a patent itself and what it is that that discloses the benefit of just partially recessing the of the silence figure fifteen that shows two pumps yet there's no durability concern ignoring patent owners testimony from its expert that durability is not an issue that is it's very easy to find in a textbook lose another adhesive to have an airtight connection so we think that there is there's a lot of evidence that was not considered and not analyzed and that when that evidence was analyzed they  clearly provided too stringent of a of a standard i'm over time but i would also just want to point out one other issue and that is failure to consider the secondary evidence of secondary considerations regarding chaffee a simultaneous invention here the pieta have found the chaffey corresponds to the subject matter of the challenge claims at appendix fifty two dollars to fifty three dollars and in final written decisions on the exact same recess but despite those findings they laid out a unknown that we were supposed to consider this in light of all the circumstances without setting forth what those circumstances are consideration analysis petitioner did have another expert that handled the other secondary considerations analysis of commercial success etc that were considered also on the secondary consideration simultaneous invention front the panel despite acknowledging the importance of chaffee and its high relevance did not do anything to analyze or give any credit for chafee a simultaneous invention and with that i thank you body and the other it's the karaoke plus goldsmiths combinations and motivations what's important i think on the claim construction i think that what was said is correct but we have cited plentiful law about a disclaimer just  that in all of the law that we cited not agrees with what comes to that the other thing that's important to know is that mr carter has not provided it seems like there's a shift now in the in the board's  proceedings there was a dispute over claim construction and whether or not substantially airtight was the right construction today mr carter says we don't necessarily have a problem with substantially our type there even if he doesn't point to what the construction is that they that they saw that the board refused to give them and and then that the board applied so as far as we can tell from the claims construction part of this board applied exactly the right definition in finding substantially kind construction issue but i could but to move to that no problem that would be for perry and plus goldsmith's ground and i do want to reserve a little bit of time to talk about this one for argument if i have the opportunity but what i'll say about or partially is there is no dispute that when you a certain a petition to the patent trial with your board that there is a combination that the board is supposed to assess whether there would be a motivation to do the modified design that you talk about in the petition and if and you have to use that combination perry empty there's no dispute in texas it in its briefing that the come what it was seeking to do is to not talk about that they agree that they're still seeking only a partially recessed design the board noted it did not ignore the background art that it reviewed it did look at it it actually talked about in detail about some of the background art at pages forty seven through forty nine but it did note at page forty four no twenty five that the discussion of holy recess pumps was a little bit off to the side  that that wasn't the design that was that was being discussed in the petition and not what was being sought as about a five design that the only modification that was being argued and perry had he was a partially recessed design and so therefore they would have to look at the and they concluded based on all the expert testimony back and forth that there that they wouldn't and in fact it's important because at that point you're talking about a they did not do a pre k s r analysis here they did not follow rigid approach what they did is they actually looked at the holistic they followed a holistic approach and they actually said so in their opinion at page fifty where they say weighing all the submitted evidence and considering the parties arguments consider the entirety of the record including both advantages and disadvantages of the proposed modification that they concluded that they were not persuaded by petitioners evidence and so there was a lot of expert testimony in case that it takes only a very small modification to beat the claim language so i think your honor so i you know we would perspectively disagree with that the modification that would be done  is there is a pump and exposure panel that is that period he talks about an advantage of actually having a detachable and that and you have to look at what would be your motivation to take this pump that sits on the top of an air bed where you can remove it from the air b so that when someone lies on it there's not a hard piece of plastic there there's a pipe with a valve in perry empty and and you know there was expert testimony on that that point and on the point of it actually there being a lot of disadvantages to trying to do any kind of a recess to the parian to design and that was the only part of record so you actually have to weigh what would be the overall motivation of a person of ordinary skill in the art to carry  if you look at the teaching of perry n t what it's trying to do that it's much better to have an external pod and it actually doesn't give you special edition cs but it does give you dirt ability problems and it makes the product less usable to do that and so you would actually be motivated against that so the other thing is that what the actual combination was was to get by that was goldsmith and there was plenty of expert testimony that goldsmith was very different that there was no attempt to be to obtain these efficiencies what they were trying to do is in goldsmith use the traditional spring mattress to blow air to cool the user and nothing to do with an inflatable product at all and it wasn't disadvantages that they saw in the record and that's that's the evidence that they weighed and when they did weigh that evidence and they looked at the expert in that respect they are entitled to deference we cite the yorkie versus di have case that those findings that doesn't have concerns about trying to weld hard plastic into the plastic of the body and the other concern where introduced electricity or any of those concerns does what chan if you did that what it would it motivates you to take an external hard plastic pump with a solar panel attached and to cut a hole in the mattress and weld around the side of that tunnel that is incorporated with a large solar panel to partially embed it into and and there was just we would actually say that it has really no you would not take a chance and look at a parent and decide you're going to start doing these more complicated designs when there are a lot of disadvantages to do that the board also look at all the evidence that was submitted to find that i mean in addition to that this is not the board is required to use the combination that's actually asserted in the claim which is pare to make its findings and so i mean that was a combination that the petitioner put forward were the board to hypothesize other combinations that i think senator i think your opponent on the other side would say that and he record the pluses and minuses the advantage disadvantage is on the whole and concluded that weighing all of that evidence that one would not be motivated that that is the case are standard i hear that i'm out of time and i do want to give my colleague an opportunity to speak if i might just very have one moment to address the fact that this near simultaneous invention point ok i just want to say about that thank you i just want to as part of the grand factors at the totality of evidence to see if on the whole you have non obviousness and weigh whether other people did that or not it is not really an independent basis to find that something is obvious  it is actually not a bill designed as as we say but in fact even if you know sort of doesn't matter because you can't take that comes later and use it for an argument about what happened earlier in time and that is briefed in our  honour's want to st address the point on on perry any and partially recessing and the important part with perry any is that you look at the context of perry any it would have been complete hindsight for someone to say holy recess perry any so that you still have a jagged edge because now the solar panel extends above the top of the of the mattress so what it is that a person of skill in the art would be led to do would be to take the advantages of recessing clearly taught in goldsmith clearly taught shen as as judge raina pointed out but also no we decided many other iraq references then my friend also noted that perry any can't be removed that is incorrect he's referring to an alternative and body mint in the p tab has clearly addressed this issue in the related i just a minor change that is well known to do based on goldsmith and the state of the art and within the knowledge of a person of skill in the art shown in all of these other other references