[00:00:00] Speaker 01:
Before we begin the arguments this morning, we have the pleasure of moving the admission of some of our law clerks.

[00:00:07] Speaker 01:
And Judge Chen, why don't you begin?

[00:00:11] Speaker 03:
Yes.

[00:00:12] Speaker 03:
Thank you, Judge Zeich.

[00:00:16] Speaker 03:
I have a motion this morning.

[00:00:19] Speaker 03:
I'd like to move the admission of Deepak Kanapan, who is a member of the bar and is in good standing with the highest court of California.

[00:00:27] Speaker 03:
I have knowledge of her credentials.

[00:00:29] Speaker 03:
And I'm satisfied that she possesses the necessary qualifications.

[00:00:33] Speaker 03:
I've known Miss Kanapan for three years now when I interviewed her at a cafe in San Mateo.

[00:00:42] Speaker 03:
And I had a hunch that she would make an excellent clerk.

[00:00:46] Speaker 03:
And she has proven me right all the way through.

[00:00:48] Speaker 03:
She's been a truly excellent clerk with a very strong analytical mind, fantastic writer, saved me from a lot of mistakes.

[00:00:58] Speaker 03:
and also has just really excellent judgment for a young person, and not to mention a sparkling personality.

[00:01:08] Speaker 03:
I strongly urge that the court grant my motion.

[00:01:14] Speaker 06:
I support the motion.

[00:01:17] Speaker 01:
Your motion is granted, Judge Chin, and thank you for your service at the court.

[00:01:24] Speaker 00:
Please raise your right hand.

[00:01:26] Speaker 00:
Do you sell this way or firm?

[00:01:27] Speaker 01:
I have the pleasure of moving the admission of three of my law clerks, the fourth one having already been admitted to the bar of this court.

[00:01:50] Speaker 01:
So I move the admission of Marta Trustinoff, who's a member of the bar and is in good standing with the highest court

[00:01:56] Speaker 01:
of Texas and I have knowledge of her credentials and am satisfied she possesses the necessary qualifications.

[00:02:04] Speaker 01:
And so the second one is I move the admission of Christopher James Marth, who's a member of the bar and is good standing with the highest court of California.

[00:02:14] Speaker 01:
I have knowledge of his credentials and am satisfied that he possesses the necessary qualifications.

[00:02:20] Speaker 01:
And then the third is I move the admission of Katherine E. Rhodes,

[00:02:24] Speaker 01:
who's a member of the Bar and in good standing with the highest court of Illinois.

[00:02:28] Speaker 01:
I have knowledge of her credentials and am satisfied that she possesses the necessary qualifications.

[00:02:35] Speaker 01:
And it's been an enormous pleasure to have the three of you, the four of you.

[00:02:41] Speaker 01:
This year as my law clerks, you've all done an outstanding job.

[00:02:45] Speaker 01:
This has been not only a year in which you've all done excellent work,

[00:02:52] Speaker 01:
As Judge Chin said, you have sparkling personalities.

[00:02:56] Speaker 01:
Well, sort of sparkling personalities.

[00:03:01] Speaker 01:
And I'm really grateful, and it's going to be sad to lose you at the end of the year.

[00:03:07] Speaker 01:
And that applies to Mateus also, who's already sworn in.

[00:03:13] Speaker 01:
So why don't the three of you take the oath?

[00:03:16] Speaker 01:
Wait, wait, wait.

[00:03:19] Speaker 01:
That's right.

[00:03:20] Speaker 01:
The motion has to be granted.

[00:03:24] Speaker 06:
I am persuaded by Judge Dyck's argument.

[00:03:28] Speaker 03:
I defer to Judge Dyck's judgment on this.

[00:03:31] Speaker 03:
The motion is granted.

[00:03:36] Speaker 00:
Please raise your right hand.

[00:03:38] Speaker 00:
Do you solemnly swear and affirm that you will support yourself as an attorney and counsel of this court, uprightly and according to law, and that you will support the Constitution of the United States of America.

[00:03:51] Speaker 00:
Thank you.

[00:03:52] Speaker 00:
Welcome to the bar of the United States Court of Appeals

[00:03:55] Speaker 00:
You're welcome.

[00:04:03] Speaker 01:
OK, now we have three argued cases this morning.

[00:04:06] Speaker 01:
The first is number 18-1574, Arthrex, Inc.

[00:04:11] Speaker 01:
versus Smith and Nephew, Inc., Mr. Chow.

[00:04:29] Speaker 02:
Your Honors, may it please the Court.

[00:04:32] Speaker 02:
I'd like to start out with claim 11, if it pleases the Court, specifically the ground for rejection that is based on Gordon and West.

[00:04:41] Speaker 02:
I would simply say that when one reads the decision by the board, one is left wanting with justification for the combination.

[00:04:51] Speaker 02:
And what is particularly troubling about this decision is the change of direction that the board took from what Smith and Nephew argued.

[00:05:03] Speaker 02:
Smith and Nephew argued three reasons to combine Gordon with West.

[00:05:09] Speaker 02:
None of those reasons were adopted by the board.

[00:05:11] Speaker 02:
Instead, the board went its own way.

[00:05:14] Speaker 02:
And this court is, I understand, in the case of Magnum Oil and Serona Dental, reluctant to deviate from the statute that requires that the grounds that support the ground for obviousness be set forth in the petition.

[00:05:35] Speaker 02:
And the ex post facto attempt by Smith and Nephew's counsel to justify the board's decision demonstrates

[00:05:43] Speaker 02:
that this ground was not in the original petition.

[00:05:48] Speaker 02:
The ground that they now say supports the reason that the board said it was preferred is because of the mere order

[00:05:56] Speaker 02:
of the presentation of the ways that one could make the suit ranker in question.

[00:06:03] Speaker 02:
They say that there were two ways of doing it and because one was listed first, the board called that primary, and then Smith and Nephew then means that must mean preferred.

[00:06:13] Speaker 02:
None of that was in any of the petition of Smith and Nephew, nor was it in the declaration of Smith and Nephew's experts.

[00:06:23] Speaker 02:
And because of that, the board did deviate from what was originally set forth in the petition.

[00:06:31] Speaker 02:
Putting that aside for now.

[00:06:33] Speaker 02:
The board is the board decision is also insufficient because it does not explain the reasons why one option would be preferred over another and For that reason alone this case must be reversed there is no explanation of why would one be the board say that the reference taught the two alternatives either integral or not integral and

[00:07:00] Speaker 06:
and so therefore one of ordinary's county art would have the option of using one or the other.

[00:07:06] Speaker 06:
Is that in effect what the board said?

[00:07:09] Speaker 02:
The board did say that, but I would say also that the board used those teachings to demonstrate that the

[00:07:17] Speaker 02:
that you could do it this way.

[00:07:20] Speaker 02:
But the board did not use those findings to say that you would, in fact, do it this way.

[00:07:25] Speaker 06:
And, in fact, Smith and Effing... Where the reference teaches two alternatives.

[00:07:29] Speaker 06:
Why isn't that enough to show that one of ordinary scale in the art would have used one of them or both of them or would have had the option to use either one?

[00:07:38] Speaker 02:
Well, this is the theory of finite options or obvious-to-try.

[00:07:43] Speaker 02:
And again... Finite option is obvious-to-try?

[00:07:45] Speaker 02:
Well, that's how Smith and Nephew characterizes their limited options.

[00:07:49] Speaker 02:
And I believe that the Supreme Court did discuss this option of obvious-to-try or equate the two of finite options with the options to try, I'm sorry, obvious-to-try in KSR.

[00:07:59] Speaker 02:
But if you are given limited options, you still have to show that there's a reason, a market demand.

[00:08:05] Speaker 02:
Why would you choose this option over another when Gordon itself teaches the best way it knows how to do it, which is to make these things separate?

[00:08:15] Speaker 02:
There must be a reason why you would do that, especially in view of the testimony of Mr. Rechart, who explained that's not the way he would do it.

[00:08:25] Speaker 02:
And that concerns me is that the board did not even address that argument.

[00:08:29] Speaker 02:
He said that it would be not his way to do it because of the issues with flashing, weak spots, voids.

[00:08:35] Speaker 02:
There are problems associated with making this device into one piece, which is why Gordon, West, and most of the references that are shown show that the pin is actually separate from the anchor body and inserted later.

[00:08:49] Speaker 02:
And that is exactly what Mr. Richard suggests that one should do.

[00:08:55] Speaker 02:
And for that reason, additionally, because the board did not even address Mr. Richard, who's not our expert, who is Smith and Nephew's expert, that is an admission by their technical expert as to how he would do it.

[00:09:08] Speaker 02:
He wouldn't do it the way that West teaches to make casting into one piece because of the challenges of casting.

[00:09:15] Speaker 02:
And he details all those challenges in his deposition testimony, which is completely absent from the board's decision.

[00:09:23] Speaker 02:
And so from my perspective, Your Honor, there are two reasons why this should be reversed.

[00:09:29] Speaker 02:
The first is that it deviates from the original ground that Smith and Nephew offered.

[00:09:34] Speaker 02:
They didn't say that there are only two ways to do it.

[00:09:37] Speaker 02:
I think if they had said that, we could have said more.

[00:09:40] Speaker 06:
We could have said things like... Do I understand correctly that Smith and Nephew's expert had testimony in the form of a declaration explaining

[00:09:49] Speaker 06:
Reasons for why one of ordinary skill in the art would have Manufactured Gordon's anchor body and pulley out of the same material via casting process and testimony But your position is because the board didn't cite that didn't rely on it It cannot be substantial evidence to support the board's analysis I would also submit that under in rain evasive

[00:10:13] Speaker 02:
That it would be a new ground and that could be decided by this court under a de novo standard Wait, why is that a new ground?

[00:10:20] Speaker 02:
It's a new ground because the what Smith and F you argue with were there are three ways to do it and they were all motivation based arguments

[00:10:28] Speaker 02:
And the argument that is now being supported by the board is that there are limited options, or it was obvious to try.

[00:10:35] Speaker 02:
And to switch from three reasons to do it, three motivation-based arguments, to an obvious to try is different from what Smith and If you argue well.

[00:10:45] Speaker 03:
What are you saying were the arguments raised in the petition?

[00:10:49] Speaker 02:
There are three arguments.

[00:10:49] Speaker 02:
One is that it would make it easier for FDA approval.

[00:10:55] Speaker 02:
The second, that it was a simple design choice.

[00:10:57] Speaker 02:
The third would make it stronger.

[00:10:59] Speaker 02:
The board did not cite or even discuss any of those reasons to combine.

[00:11:05] Speaker 02:
And of course, when you have to combine references, even though they set forth all these different elements, there still must be a reason to combine, as Your Honor said in Black and Decker.

[00:11:15] Speaker 02:
Even if there's a suggestion, there must be a reason why.

[00:11:18] Speaker 02:
And especially when one considers the problems associated with making it one piece, as Smith the nephew's expert argues, then there must be more than just the option, the conclusory statement, that it is preferred.

[00:11:33] Speaker 02:
And at best, we're left to guess.

[00:11:35] Speaker 03:
Well, the board made that finding.

[00:11:38] Speaker 03:
Casting the device would be preferred, right?

[00:11:42] Speaker 02:
The board did make the finding that casting would be in preferred, correct.

[00:11:46] Speaker 02:
And that was... It would be a motivation to do it, right?

[00:11:50] Speaker 02:
That was well there were three motivations to address that and something's preferred.

[00:11:55] Speaker 02:
That's a motivation to do it right well assuming that is Because I've heard if it's obvious to try whether it's preferred There are three reasons that are set forth in the board in the petition the board itself cites those three reasons why and it doesn't say which of the three reasons if the board had said well we think it would be preferred because

[00:12:17] Speaker 02:
It's better for FDA approval.

[00:12:20] Speaker 02:
We think it would be better because it was a simple design choice.

[00:12:23] Speaker 02:
We think it would be better because it was stronger.

[00:12:26] Speaker 02:
It's not enough to say it's preferred?

[00:12:28] Speaker 02:
I don't believe so, Your Honor.

[00:12:29] Speaker 03:
Under DSS... My understanding is the board read the reference to say that there was a primary embodiment and there was an alternative embodiment.

[00:12:38] Speaker 03:
primary embodiment was to cast the whole device.

[00:12:42] Speaker 03:
And then after that sentence, the reference said, alternatively, you could make the pin separately from the rest of the device.

[00:12:49] Speaker 03:
And so the board understood the juxtaposition of those two disclosed embodiments with the word alternatively to suggest that the lead disclosed embodiment casting

[00:13:02] Speaker 03:
was the preferred embodiment.

[00:13:04] Speaker 03:
And that's a fact-finding in terms of how the board chose to read that reference, isn't it?

[00:13:10] Speaker 02:
It is a fact-finding in how the board chose to read the reference.

[00:13:13] Speaker 02:
However, Smith and Nephew nor did any of its experts say the reason why I think we think it's preferred is because it's the first listed option.

[00:13:21] Speaker 02:
In fact, when one looks at West, one is confronted with the fact that all the drawings show

[00:13:27] Speaker 02:
the pin separate from the anchor body, and that Smith and Nephew's own expert indicates that that's not the way he would do it.

[00:13:33] Speaker 02:
In fact, he says the opposite.

[00:13:35] Speaker 02:
He says the first way he would do it would be to create the anchor body and insert the pin separately to avoid the challenge of casting.

[00:13:42] Speaker 03:
Is there a rejection where Gordon teaches every single limitation of the claim except whether the pins are integral with the body?

[00:13:49] Speaker 03:
Is that right?

[00:13:50] Speaker 03:
Correct.

[00:13:51] Speaker 03:
OK.

[00:13:52] Speaker 02:
But then, Your Honor, there still must be a reason.

[00:13:55] Speaker 03:
It has a first suture opening, a second suture opening, a third suture opening.

[00:13:59] Speaker 02:
It has all those facts.

[00:14:00] Speaker 02:
But it doesn't have, if you look at the evidence that was offered by Smith and Nephew in the petition, if you look at what Smith and Nephew's own experts said, then there must be at least an explanation as to why those should be discounted.

[00:14:15] Speaker 02:
We're taught that new basis teaches that those arguments should be counter.

[00:14:20] Speaker 02:
I mean arguments.

[00:14:21] Speaker 02:
There should be reasons why The board picked the path and if we had an opportunity to understand which of the three reasons That's with the nephew offered that the board picked we would be here arguing that they were conclusory Because if one looks at those reasons they are in fact conclusory so all that we are left here with is the notion that because you say this is

[00:14:44] Speaker 02:
listed first, and then it's listed second, that that's definitely the way to do it.

[00:14:51] Speaker 02:
But you can't discount the testimony of Mr. Rechart, who made it very clear that that's not how he would do it.

[00:14:58] Speaker 02:
And that in itself was not a ground that Smith and Nephew's experts stood up to argue or support.

[00:15:03] Speaker 02:
They never said, because it's listed first, it should be this way.

[00:15:07] Speaker 02:
I think if we had discovered that was going to be the basis for the testimony, we would have argued, or our experts would have argued and supported, that's not the preferred way to do it, because of the challenges faced with casting.

[00:15:20] Speaker 02:
Just simply because it's mentioned doesn't give you a reason to combine those references.

[00:15:26] Speaker 02:
And there was testimony from our own experts explaining why

[00:15:31] Speaker 02:
This is a sophisticated, nuanced technology, and that the challenges of making a cross pin in one piece with the anchor body is very difficult.

[00:15:40] Speaker 02:
And I realize that I'm on borrowed time, so I'm going to, I guess I'll handle the rest in response.

[00:15:49] Speaker 01:
OK, thank you.

[00:15:51] Speaker 01:
Mr. Speed.

[00:16:06] Speaker 05:
Good morning.

[00:16:07] Speaker 05:
Good morning, Your Honors.

[00:16:09] Speaker 05:
I'll pick up right where Council for Arthurics ended, which was on Claim 11 on this one ground.

[00:16:14] Speaker 05:
I'll note first, just for clarity, that there's a wholly independent ground that the board relied upon, anticipation with Curtis to find Claim 11 unpatentable, and that was not addressed in opening argument.

[00:16:27] Speaker 05:
The board read West and read the embodiment that's described at Appendix 1768, which is Column 7, Lines 41 to 47.

[00:16:36] Speaker 05:
They read West, it's a fairly simple technology, and they found that passage where it says that in accordance with the present invention, you can cast everything as one piece.

[00:16:47] Speaker 05:
Alternatively, you can do it as two-step process where you cast them separately, you drill a hole in the body, and then you insert the pin.

[00:16:53] Speaker 05:
The board was acting reasonably in its interpretation of that section as disclosing casting as preferred.

[00:17:02] Speaker 05:
While Arthrex focuses primarily just on the one sentence where the board reached its conclusion and said that Wes, because Wes teaches it as preferred, it would have been obvious, it ignores the scope and content of the prior art section where the board expressly walks through its interpretation of the reference and says that Wes is clearly disclosing two alternatives, a primary alternative in which the anchor body and posts are cast together and an alternative in which they are cast separately.

[00:17:29] Speaker 06:
What's your response to his argument that this is a new ground that was relied upon by the board for the first time?

[00:17:40] Speaker 05:
In our petition at Appendix 218, this is where we put in the three different reasons.

[00:17:46] Speaker 05:
And I'll agree that we don't use the word preferred.

[00:17:50] Speaker 05:
But in the second reason, we cite to this exact passage in West, and we say that casting was a well-known and accepted technique for creating medical implant devices by September 2005.

[00:18:00] Speaker 05:
The board's decision to effectively recast that language as a preferred technique, we don't think is such a significant jump that the magnum oil concerns are applied.

[00:18:11] Speaker 05:
I mean, magnum oil is a very different case in which the board

[00:18:15] Speaker 05:
instituted on a primary ground called the Lear reference and then in the trial it put the burden on the patent owner to prove that arguments related to a wholly different reference called the Alpha reference that wasn't even instituted somehow didn't apply to the Lear reference.

[00:18:31] Speaker 05:
So Magnum Oil is a very different case from this one.

[00:18:33] Speaker 05:
Here we think it's completely fair for the board to have looked to our second argument which they cite at page 54 of their final written decision to find that

[00:18:43] Speaker 05:
West was teaching a preferred option for casting.

[00:18:46] Speaker 05:
And therefore, if it's preferred, it would have been obvious to cast the anchor as a single piece solution.

[00:18:54] Speaker 05:
On the Curtis issue for claim 11 in anticipation, the question there is whether or not there is substantial evidence to support the board's finding that Curtis anticipates.

[00:19:06] Speaker 05:
We'd submit that there is a lot of substantial evidence in the record on this.

[00:19:12] Speaker 05:
particularly Curtis itself on the single piece issue the the board in its decision looked to the Looked at relied primarily at page 74 the decision said when manufactured and prior to installation the one-piece configuration shown in figures one to four of Curtis is a suture anchor assembly that is a rigid support integral with the Suture body as reciting claim 11

[00:19:39] Speaker 05:
The board there is making clear it's relying on the figures of Curtis.

[00:19:43] Speaker 05:
And if you look at page 18 of our brief, it's clear from the images themselves.

[00:19:50] Speaker 05:
There's no break line between the various components.

[00:19:52] Speaker 05:
It is formed as a single piece solution.

[00:19:54] Speaker 05:
So the board, again, we would submit was reasonable.

[00:19:57] Speaker 05:
It's an interpretation of the reference to be for it.

[00:20:01] Speaker 05:
On claim 10.

[00:20:03] Speaker 05:
we'd submit that perhaps the easiest path to affirmance is on the helical thread issue.

[00:20:10] Speaker 05:
There, the parties agreed that a helical thread was a helical ridge or raised surface that serves to retain an anchor and bone.

[00:20:21] Speaker 05:
The dispute was whether or not a helical thread also had to facilitate.

[00:20:26] Speaker 06:
What is your best argument that the intrinsic evidence shows that there could be a helical thread that's tapped in?

[00:20:33] Speaker 05:
So Nicholson would probably be the best reference.

[00:20:37] Speaker 06:
No, I said intrinsic evidence.

[00:20:39] Speaker 06:
I don't think prayer would be intrinsic evidence.

[00:20:43] Speaker 05:
Respectfully, I'd submit that under V-formation, the three references that we point out in our brief.

[00:20:47] Speaker 05:
Nicholson, McDevitt, and Curtis.

[00:20:48] Speaker 05:
They were all cited on the face of the Five Forward Act.

[00:20:51] Speaker 05:
So they are intrinsic.

[00:20:52] Speaker 05:
So at some point in time, Arthrex thought that those were references that were relevant to its invention, submitted to the Patent Office.

[00:20:58] Speaker 05:
And all three of those references are what's called expandable anchors, which, for clarification, they aren't actually tapped in.

[00:21:05] Speaker 05:
They're just inserted into a hole that's actually a little bit bigger than they are.

[00:21:08] Speaker 05:
And then they're expanded to wedge in the holes that they can't come out.

[00:21:11] Speaker 05:
And all three of those references

[00:21:13] Speaker 05:
Describe their anchors as having helical threads so those are anchors that are inserted actually actually not wrote not rotated in and they clearly have Helical threads on their exterior what about in this specification itself is there any sentence or anything that you rely on there for the support the idea that the helical thread could be tapped in and

[00:21:34] Speaker 05:
The specification itself has an embodiment that is clearly a screw and anchor, and we would agree it's improper to exclude from the construction of helical thread that embodiment.

[00:21:46] Speaker 05:
The question is whether or not we need to take helical thread and limit it to just screw and anchors.

[00:21:51] Speaker 05:
And the intrinsic evidence, namely the other references that were cited on the face of the patent, make clear that was known in the art that there were anchors that were not rotated into bone and that had helical threads, which is consistent also with the dictionaries that the parties submitted.

[00:22:09] Speaker 05:
All the dictionaries are defining helical thread not by its potential applications or functions, but by its physical structure, which makes sense.

[00:22:16] Speaker 05:
If you're looking at a screw,

[00:22:18] Speaker 05:
you're going to call it a helical thread versus a ribbed based on its structure, not on some potential function or application of that thread.

[00:22:30] Speaker 05:
On the suture opening issue for claim 10 and this again is wholly independent and only needs to be reached if the court were to reverse on the helical thread issue The board took our claim construction for suture opening and simplified it, but they did Simplify it in a way that materially altered any issue of patentability in the case we identified for the terms suture opening as a term needing to be

[00:22:58] Speaker 05:
construed because it was relevant to priority.

[00:23:01] Speaker 05:
There are three embodiments in the specification, only one of which has the three suture openings that's recited in the claim.

[00:23:07] Speaker 05:
That's the second embodiment.

[00:23:09] Speaker 05:
That embodiment and the figures related to it was first disclosed in a September 2005 provisional.

[00:23:15] Speaker 05:
And so we went through the effort in our petition to perform this analysis, offer construction of suture opening, because it was relevant to the issue of priority.

[00:23:24] Speaker 05:
In their patent-owner preliminary response, Arthurx didn't dispute our priority analysis.

[00:23:28] Speaker 05:
It didn't offer a construction of suture opening.

[00:23:30] Speaker 05:
Indeed, it said that it was not disputed between the parties.

[00:23:34] Speaker 05:
The board and its institution decision agreed it wasn't in dispute between the parties.

[00:23:38] Speaker 05:
In its institution decision, however, it did reproduce the same annotated figures of the second embodiment that we submitted by petition.

[00:23:46] Speaker 05:
Patent-on-response comes.

[00:23:48] Speaker 05:
Arthrex, again, doesn't just offer a construction for suture opening.

[00:23:51] Speaker 05:
It affirmatively agrees with us that the claims are directed to the second embodiment.

[00:23:56] Speaker 05:
And then the final written decision comes out in the board, walks through the claim construction analysis and simplifies the construction, but does not take that simplified construction and alter anything in the case.

[00:24:06] Speaker 05:
We know this because when it's discussing the various embodiments, it was crystal clear that the only embodiment that had the multiple suture openings was the second embodiment.

[00:24:15] Speaker 05:
Under Arthrex's position on appeal, the board's

[00:24:19] Speaker 05:
Construction should be interpreted to cover closed internal spaces, which would be the first embodiment.

[00:24:23] Speaker 05:
And at page 9 of the opinion, the board is crystal clear that they do not believe that that first embodiment has multiple suture openings.

[00:24:34] Speaker 05:
Unless the panel has any questions of any of the other grounds, I'm happy to rest on that brief.

[00:24:38] Speaker 01:
OK.

[00:24:39] Speaker 01:
Thank you, Mr. Speed.

[00:24:46] Speaker 01:
Thank you.

[00:24:47] Speaker 01:
Mr. Pan?

[00:24:50] Speaker 04:
Good morning, Your Honors.

[00:24:52] Speaker 04:
May it please the Court, Dennis Vann on behalf of the United States as intervener on the constitutional issues, of course.

[00:24:58] Speaker 04:
This court has heard a number of cases in which the government has presented arguments that- This patent was issued after the AIA, right?

[00:25:06] Speaker 04:
Exactly.

[00:25:06] Speaker 04:
And so there's two very quick threshold grounds that I want to address.

[00:25:10] Speaker 04:
This patent was issued after the AIA, so there can be no retroactivity challenge.

[00:25:16] Speaker 04:
Oil States entirely takes care of the Article III and Seventh Amendment grounds.

[00:25:21] Speaker 04:
This court's prior presidents, of course, take care of the due process concerns.

[00:25:26] Speaker 04:
And oil states also does make clear that when a patent issues, when it's issued subject to inter partes review, it's subject to the conditions that are applicable at the time of the issuance.

[00:25:38] Speaker 04:
So there's no merit to the suggestion that simply because I applied for a patent before the AIA, I was issued a patent subject to laws prior to the AIA's enactment.

[00:25:48] Speaker 04:
The other threshold ground I want to briefly

[00:25:51] Speaker 04:
The address is the one of forfeiture before the board.

[00:25:54] Speaker 04:
Of course, they have not raised any of these arguments before the board.

[00:25:59] Speaker 04:
And ordinarily, you would have to raise all arguments, including constitutional ones, before the board.

[00:26:04] Speaker 04:
I just want to highlight one of their types of arguments to suggest how that could be raised before the board.

[00:26:10] Speaker 04:
For example, they say that

[00:26:12] Speaker 04:
the panel was biased.

[00:26:14] Speaker 04:
And that is an argument that routinely goes before the adjudicator.

[00:26:19] Speaker 04:
So if you are in trial court, if you're in district court, and you think your district court judge has some sort of bias, you can file a motion to recuse.

[00:26:27] Speaker 04:
And so those types of arguments in the procedural due process arguments, that they weren't afforded enough procedures within inter partes review, those types of arguments are certainly ones that are routinely adjudicated

[00:26:40] Speaker 04:
by agencies, by lower courts, and those at least and other constitutional claims should have been presented in this case and they were not.

[00:26:50] Speaker 03:
What about the allegedly retroactive application of the new statute?

[00:26:54] Speaker 03:
Is that something that the board can entertain?

[00:26:57] Speaker 04:
So the board can entertain those arguments.

[00:27:00] Speaker 04:
Sort of three quick responses.

[00:27:02] Speaker 04:
Of course, there's been cases where the board has entertained it in Agarwal v. Topgolf, which is currently pending for this court.

[00:27:11] Speaker 04:
In 18-2270, the board did entertain a retroactivity challenge.

[00:27:17] Speaker 04:
And the Supreme Court in Elgin v. Department of Treasury

[00:27:21] Speaker 04:
made clear two things about that.

[00:27:23] Speaker 04:
First, the question is whether or not the board can provide some type of relief.

[00:27:29] Speaker 04:
And of course, if the board or the director had serious constitutional issues, and of course, we think inter partes review is constitutional, but if the director had serious constitutional issues with some enactment of Congress, he wouldn't have to institute inter partes review in the first place.

[00:27:47] Speaker 04:
that is completely discretionary and something that the director can deny.

[00:27:52] Speaker 04:
The second part is even if the board can't fully address all aspects of a constitutional issue, Elgin makes clear that as long as you can address the threshold issues preceding that constitutional issue, those constitutional issues should also be raised before the board.

[00:28:11] Speaker 04:
So for example here,

[00:28:14] Speaker 04:
One of the claims is that this upsets the expectation interests of patent owners.

[00:28:18] Speaker 04:
And the board certainly can talk about what types of expectation interests apply when a patent owner first applies for their patent.

[00:28:27] Speaker 04:
The board can talk about the differences between inter partes review and ex parte re-examination or inter partes re-examination.

[00:28:34] Speaker 04:
The board can also talk about whether there have really been any changes to the substantive conditions of patentability or whether these are really simply procedural changes.

[00:28:45] Speaker 04:
all matters that are traditionally within the board's expertise.

[00:28:49] Speaker 04:
And they can build a record on that.

[00:28:51] Speaker 04:
They can have something that is suitable for this court's decision to affirm or reverse or to vacate and remand or otherwise.

[00:29:01] Speaker 04:
And if there are no further questions on the constitutional issues, I seek my time.

[00:29:06] Speaker 01:
OK, thank you, Mr. Fennington.

[00:29:08] Speaker 01:
Mr. Schell?

[00:29:14] Speaker 02:
Thank you, Your Honor.

[00:29:15] Speaker 02:
I would like to address the issue about whether this was in fact I'm sorry with regards to claim 11 I would like to address the fact that This was a ground that was set forth in the petition Smith the nephew for the first time now says that the reason why the board Determined it was preferred is because the board equated simple with preferred

[00:29:36] Speaker 02:
That is, it's a simple design choice as opposed to preferred.

[00:29:40] Speaker 02:
I think they said it was first, right?

[00:29:42] Speaker 02:
That's what Smith and Duffy said in their brief.

[00:29:46] Speaker 02:
And here in their petition on APX 218, they say it would have been logical to a person of ordinary skill and art to manufacture the Gordon Anchor using a casting process.

[00:30:04] Speaker 02:
That's conclusory.

[00:30:05] Speaker 02:
Casting was well known and accepted technique for creating medical devices by September 2005.

[00:30:12] Speaker 02:
Using this well-known technique would have been a simple design choice.

[00:30:17] Speaker 02:
So we've moved from primary to being the support for preferred to now simple design choice.

[00:30:26] Speaker 02:
Your honor, that's precisely the reason why, at a minimum, this decision must be remanded for further explanation as to why the board chose the path that it did.

[00:30:36] Speaker 02:
So this court has an opportunity to review the basis, because if one looks at that explanation, it is, in fact, conclusory.

[00:30:44] Speaker 06:
And if one digs deeper into recharges... When you say, looks at that explanation, it's conclusory, you're referring to the board's discussion?

[00:30:52] Speaker 02:
Oh, I'm referring to, I'm sorry, the petition about

[00:30:54] Speaker 06:
I don't see that petition as being conclusory at all.

[00:30:58] Speaker 06:
If you read it, there's three or four paragraphs for why it would have been obvious to one of ordinary scale in the art.

[00:31:04] Speaker 06:
You're pointing out one sentence out of a whole page and saying it's conclusory.

[00:31:09] Speaker 02:
Let me rephrase.

[00:31:10] Speaker 02:
So what I mean by that is, so each one of those three reasons must be supported by fact and argument and analysis.

[00:31:17] Speaker 02:
And I would submit that saying that it's simply a simple design choice, those types of descriptions that the prior art teaches all of this,

[00:31:30] Speaker 02:
doesn't give you a reason why.

[00:31:32] Speaker 02:
Those are separate elements that exist in the prior art, but there still must be a reason why.

[00:31:36] Speaker 02:
And when I would lastly draw this court to Mr. Richard's testimony, who said, why would you make putting the cross pin a secondary operation?

[00:31:45] Speaker 02:
That's their testimony.

[00:31:46] Speaker 02:
We never heard anything from the board about that testimony.

[00:31:50] Speaker 02:
Because cross pins represent a challenge

[00:31:53] Speaker 02:
If you want them to be small, you got this larger anchor body, then you got this small cross pin.

[00:31:59] Speaker 02:
Now it's not impossible, but it might make your life easier on the design.

[00:32:04] Speaker 02:
It might make it stronger, possible.

[00:32:06] Speaker 02:
Now why would it be, why would cross pins be a challenge?

[00:32:09] Speaker 02:
As I mentioned, they're very small, typically on an anchor.

[00:32:13] Speaker 02:
And those are a little bit harder to fill, not impossible.

[00:32:16] Speaker 02:
So then you would insert the cross pin after you cast the part.

[00:32:20] Speaker 02:
That's one way to do it, yes.

[00:32:21] Speaker 02:
And is that how you would do it as a design engineer?

[00:32:25] Speaker 02:
I would first, I would select that as my first choice.

[00:32:28] Speaker 02:
And I think due process at least requires, or at least the APA requires, that we have some explanation as to why the board chose to discount that testimony, those admissions.

[00:32:39] Speaker 02:
And simply listing something first in one small section of the process.

[00:32:43] Speaker 01:
You have to discuss all the testimony?

[00:32:44] Speaker 01:
I'm sorry?

[00:32:44] Speaker 01:
As a matter of due process, they have to discuss all the testimony?

[00:32:47] Speaker 02:
I misspoke.

[00:32:47] Speaker 02:
I meant under the APA, under newvasive.

[00:32:50] Speaker 02:
That analysis requires us to explain why the board picked the path.

[00:32:55] Speaker 02:
OK.

[00:32:55] Speaker 02:
Lastly with respect to am I out of time your honor?

[00:32:59] Speaker 01:
You are out of time.

[00:33:01] Speaker 01:
Okay.

[00:33:02] Speaker 01:
Thank all counsel.