you may please the court stephen saucer floor ipac international this decision by the trial court judge presents a danger because it is an obviousness approach that lacks any tether to the reference certainly it opens the door to hindsight beast approach in what is crowded art where small improvements can make a big difference and indeed it presents a danger for judges and lawyers to stand in the place of those of away that limitation on the hindsight based approach where you can combine anything in the prior art and it just seems right to do so i found a case of a safety belt that added a thirty second strap so that lap belt is that was the norm and at a strap across the chest well that was a safety belt plus a shoulder harness yet it was patented and of course we use them today so things that now seen obvious or why did i think of that at the time of the invention were not obvious and unless there's a reason to combine which is still the long and still the standard unless there is a reason to combine  you risk having the judges and the lawyers substitute their determination for what one of ordinary still the art would have seen at the time when they're all to it all depends pretty much on the record evidence in the particular case so maybe you should move from the generalities to the specifics here yes you're on a plane fourteen some are fourteen i'm going to start with fourteen you're on a plane fourteen was a reduced reducing member reduce enough canister for wafers with four latches two of which had crossed members that blocked but two of the four openings there was no prior art of record at all for locking with cross members to a four openings none of that but that's not market pressures design pressures other motivations that a skilled artisan would be facing would do when presented with a problem think of this you don't have to find  element in a piece of prior art i beg to differ i do think that you cannot skip one of let's say three elements or limitations of a claim and just say we have prior art that shows to to the limitations to a reference to covers the third limitation but that does not extend to allowing that person an individual to find to create that  nonsensical or you know totally imaginative creative about that what else would you do with them well up until the time your honor there had not been a floor for opening container so we created a problem we created a problem where would you solve very readily by suspect level it's a matter of again in hindsight it seems it seems clear first one didn't need to solve the problem not because just messy operator would have to pay more attention to where you placed the container but the lewis reference noted the possibility of using four latches and right corrections and it was well recognized in the art with the machinery used to place these place the container with four openings it just the operator would have to choose which ones to use would have to make an alignment choice at the time of placing the container in the appropriate position on the loading machine it would it would incur to avoid having to make that decision but you would only want to openings or you would want the other to block others that are going to block drawn or or placed in a different position or an arrow pointing to the two good openings would wouldn't wouldn't that have been understood by those of skill in the art that there was an orientation of a situation where if there were four openings you would to make a decision on the other hand if there were only two openings that would avoid having to make that choice this is that enough of a teaching to suggest that if you want to use two latches you better do so in a cover it if you want to use for life sure but it is something to cover up at least two of them to avoid this problem with orientation i don't think it would have been clear on and i say that because lewis which does mention for openings says nothing about covering two with cross members or anything else so if it were so obvious why wouldn't louis two years before our invention think of doing it when he talked about his four openings the fact is that you can still use a container with four latches and not lock to locking two was a clever way to ease the process of loading but one of many options one option again being point putting color coding on visuals of what the difficulty is in the process of loading was known to those skills the are no not exactly your honor only because no one had ever done it for opening container before what was known is that their machines unto of the two of the four i have to say it wouldn't common sense in jest that among the options for fixing the pool is metal i'm not sure but i bet the time going back there were again there were number of different ways to deal with it if you wanted to feel it again lewiston lewis chose not to deal with it but if you wanted to deal with it you could you could have moved to a piece for openings for example could have been you know that would've done any number of things there's there's probably if we sat down with an  probably dozens and dozens of different ways to accomplish the same thing our invention was we were the first to come up with it when there had been a need in the industry for a long time and we were the first ones to invent it are you arguing that if there's three or four ways of doing something the first person who picks one as making an invention that cannot possibly be thought of as obvious if i would say perhaps actually yes i mean if you that if we're not talking about a very limited where there's only one choice let's say we're two well known choices and none others then maybe we have a different situation under k s r but that's not what we have here we have no one having done it in a crowded our where for example  ear came up with a shorter latch that was patented and he didn't think it was obvious it was just a less tall latch that's because it would be less likely to interfere with the loading arm it was an improvement it was a movement forward and that's what we really want to do is allow that movement forward when especially when there is no prior art that had even discussed it we are being put in allies here because we came up with a we recognize a problem and solution that's exactly the wrong incentive we were the first to deal with us and the judge said because we felt haggard one of the inventors recognized a problem and thought of a way to deal with it that makes it ordinary skilled artist would have thought of that i guess what he said your honor was the inventors awareness of the problem and solution provide evidence that a person of ordinary skill  the r would also be aware of the problem and the solution right but the judge didn't stop there and say what can we do that you know he did he went on to say inherent in that general awareness and motivation of of the alignment problem in this case is to block the holes in the end wall just because we knew that there were there was an issue with a machine that had a comedy two holes and we wanted to put four holes doesn't mean we had  were part of the invention is recognizing a problem we recognize the problem we came up with what's really an elegant solution to it and now we're being penalized for its use against us when there is no prior art you say that no one else no other person of skill your art would have known that if there were two extra holes on the end wall that would cause alignment problems i thought that the prior made that pretty clear that that was well known by pretty much everybody in this art that there are alignment mechanisms that to placement positions and by adding four holes that could be something that money might need to consider dealing with but that was it it was not and since no one had ever come up with a floor latch container for commercial application that had not been faced before we were the ones with to deal with it how do we do it do we partially blocked we fully blocked we offset we put arrows again among all the different possibilities at the time the sad fac they came up with an invention and again i and there was nothing in the prior art that would say use cross members in this situation you don't have to have a specific piece of prior art that says that well if you don't does that not where there are in the prior art references that cover all of the elements of a claim and the question is was there a reason to combine those two or more references separate the dots and also always adds to a combination of the word modification it's not just combinations qualify as a sufficient basis with the right testimonial support for motivation to combine it's also motivation to modify which seems to me to have to cover situations in which some element is not found in some piece of prior but isn't that here on the inventive process to recognize a motivation to making this modification but modification your honor using known elements again that unknown factor where the inventor moves forward by creating something that hitherto had not existed which is the essence of the the system your honor and if we take it away from that day sion that there's a risk of losing losing the fact that afterward something  invented it may well seem obvious when before no one had thought of it and in this case of course i didn't even talk about the secondary consideration but i think we don't have time i will restore your rebuttal time for th good morning your honor can't walk around me have text sam we didn't talk about playing thirteen so i will jump to fourteen but so the judges the district judge's opinion namely the second sentence of paragraph seven and the court says jim haggard noticing the alignment problem that's helps tell us that a ordinary still artisan would know would notice the alignment problem impacts expert testified that a person of ordinary skill in the art would have been aware of the potential and problems and would try to solve it and then it seems to me is the key sentence with the judge says inherent in that general awareness and motivation is the solution ipac used to block the holes in the end well what's the evidence for moving from  you had market forces telling you that you have conventional machinery that you need to make these containers fit on to the wafers could be loaded into them that there are basically two directions because there were two prongs in the machine everyone who was in the market judge doesn't cite or even assert that the expert or some other piece of evidence shows that this solution was an obvious solution to recognized problem he just gets to the recognition of the problem doesn't i think the citation to the experts testimony which was that well one of warners filmy art to think of many ways to make these containers or other things fit into  machinery uses the openings in the bottoms of the containers to load them and also says conventional machinery uses only to the openings so that seven of the motivation to solve this alleged problem of covering up to the thing so it has been the right way as opposed to the wrong way but where where is there evidence of the particular solution re cited including for there's the evidence of louis which have the two openings so that it will testimonial evidence from your expert or cross examination from their expert or something that is as said let's take as a given for a moment that these machines u prongs for a needed alignment in addition the expert says making sure that if you start with four you have only two that th the specific about your argument page forty five of your grief you talk about cross members partially blocking an opening arc throughout the prior art and then you make a statement it's found have to do with blocking the opening on the latches well because if such is the best this claim just says cross members partially blocking an opening doesn't talk about the primary references of a cross member partially blocking an opening and enact a suit for the same purpose and motivation as is being read into the claim here which is to facilitate loading this container onto machinery or facilitate using this container with a conventional machinery that loads the wafers into painters these containers are to protect these wafers before they get as and cut into little integrated circuits so it's important they don't break and the robots are used to load them in and out softly and i do think there is evidence in the courts references on to this knowledge of ordinary people cornerstone the art of the convention machinery of if i have four holes i need to make them adopted to the court refers to a preexisting standard having four holes with cause alignment problems that's that's all he says there and then can you talk to me about paragraph eighteen where the judge describes the two hundred millimeter the containers have four holes and they use a little small skilled artisan would have understood it would be a good idea to do if you had four holes because this doesn't come until later well i don't think that i'm not arguing that paragraph eighteen right like so i'm trying to understand what the evidence is the other and we'll look at haggard's testimony it's really he said the judge cites pages one forty to one forty one which here it's just one sixty three sixty four and five i guess and i'm not quite sure that that's testimony about anything other than mr haggard's own sought process as opposed to what a skilled artisan would have thought by way of solutions again taking as a given that a skilled artisan would understand that with this filling machine four holes presented an alignment problem i'm looking motivation to use common sense to cover up to openings that's like having a two prong plug and i have four holes and i make sure i plug it into the holes correctly it is a exceedingly simple thing to do which care far has support for that is is it's an obvious thing to do it's allowed for the district court to make that conclusion that if i have to fit something to  standard and it's just simple that's sufficient motivation to do it and moreover when i have prior art such as lewis which shows before opening and i have prior art of louis which shows two opposing and avenue i can cover two and have only two openings to use to fit the thing into but of course it's not just simply well ok if i cover two that solves the problem the alleged invention here claims and claim fourteen is that of the four latches were still possible you could have four latches but partially cover and still achieve this alignment so it was in effect sort of having your cake and eating it too you could have the latches even though you know it's there for openings that causes an alignment problem but we're going to solve that i partially agree i will find any reference that teaches that solution we're talking about motivation and we're talking about the problem i g fourteen with respect to the courts finding in fact i did my best to point to the paragraph and put announced at support that i think it's on page forty one forty two of my brief and i do think it is supported there and i would also point out that any counter to the way that talent is arguing that they're saying well we created this new problem of having four holes in the bottom of the container and we solved that problem that's not correct that if you took the cross member out of line fourteen and there's no dispute on these if you claim thirteen i not as if they had this new problem solved it was already an old obvious container so it's so old obvious container to a preexisting standard machinery couldn't just close up to without sacrifice actually close up to openings without sacrificing to the latch is that right well i don't know the claim has to be yeah i think you can claim fourteen if it's you have four locking members in receivers  is that right about the simple mechanical issue that we're talking about these openings that we're talking about putting across member to bifurcate are not used for the latch correct they're used for the placement on the sheet and the inventor mr haggard testify on a fifty nine he never thought of it before until he actually had to invent it and he said and so we really had to think about well you bottom or that the factoring purpose or whatever and then he says well that screws up the alignment so i better figure out a way to make those holes usable for manufacturing purposes but not get in the way of the aligning that right correct and he came up with one way of many as he testifies came up with one way of separately pick one that's that's that's exactly what the inventor process is about and because there was no testimony at trial any different means the inventor said it wasn't obvious or a number of different ways our expert said it wasn't obvious to a number of ways their expert didn't testify about it all so what the judge did is you know somewhat results based decision said well there's no evidence of obviousness for clean fourteen so i'm going to say it's inherent if you hear it just makes sense it just makes sense to do it that way and because of that the invention is obvious well that's not the proper factually actually that's not that wasn't the right test before k s r but i think a s r has broadened out that whole way of thinking about this and if you think it is opened up what can be considered for the reason to combine it is not allowed to be an inherent detached to make up for missing elements no i do not think that's what p s r has done your honor and is well i don't have any time t factual finding of the judge to say our product is not a commercial success when the evidence was that it was a great commercial success they say it's because your client chose your design instead of texas instruments all designed in other words the court said it wasn't a commercial success because it was a commercial success in other words everything about commercial success supports everything about long felt need supports not sure that nobody using cupido would have been looking around to do anything different because there's a perfectly satisfactory product to joe was satisfactory for a lead frame for reduced movement canister that contained on the side and contained up a but that had not been matched until the packs invention that was around since one thousand ninety three was the need for a reduced movement canister which which we solved ok thank you very much th