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

[00:00:02] Speaker 05:
May it please the Court?

[00:00:04] Speaker 05:
This case involves an error by the Patent Office, by the Board, who erred by not measuring the reasonable expectation of success against the claimed invention.

[00:00:16] Speaker 05:
First, with respect to grounds one, two, and five of the petition, the petition clearly set forth how the primary reference, Voight,

[00:00:26] Speaker 05:
disclosed each and every limitation of the claim with the exception that Voigt had a single camera and the claim called for a plurality of cameras.

[00:00:35] Speaker 05:
But the petition then went on to detail separate independent teachings found in the prior art or otherwise known to persons of skill which motivated the addition of cameras to the Voigt system at various locations relative to the image subject and the board acknowledged these teachings.

[00:00:54] Speaker 05:
And the petition explained how the elements of claim one and its dependent claims, claims which merely called for vertically spaced cameras and cameras that were laterally disclosed on opposite sides of a center line, how those limitations were met, at least in one instance, without requiring a rear camera.

[00:01:14] Speaker 05:
In other words, Hanfield's petition argued that these claim limitations were mapped to cameras other than the cameras located behind the subject.

[00:01:24] Speaker 05:
But the board nevertheless declared that including a rear camera capable of imaging the subject from the rear was necessary and was necessary to render the claims obvious.

[00:01:36] Speaker 05:
This is an error that the court here reviews de novo.

[00:01:42] Speaker 05:
The board also erred by requiring that Canfield's proposed configuration successfully image portions of the subject that were in contact with the Voight positioning sliders.

[00:01:55] Speaker 05:
The board's determination that the sliders would obscure portions of the subject, however, is irrelevant here because nothing in the claim precludes the obstruction of portions of the image subject.

[00:02:09] Speaker 05:
Once again, the board failed to measure the reasonable expectation of success against the claimed invention, which expressly recited that only a portion of the subject need be imaged.

[00:02:23] Speaker 01:
If looking at page 11 or page 6 of your reply brief, is what you're saying that having cameras 3, 4, 5, and 6 would satisfy the claim limitations and the cameras 1 and 2, that is the cameras supposedly obscured by the wall, are unnecessary to meet the claim limitation?

[00:02:47] Speaker 05:
That is correct, Your Honor.

[00:02:48] Speaker 05:
In connection with an interpretation of the claim where the center line

[00:02:53] Speaker 05:
is what is shown in that diagram on page six as the red dotted line.

[00:02:58] Speaker 01:
Well, the board said that the center line was the red dotted line, right?

[00:03:03] Speaker 05:
That is correct, Your Honor.

[00:03:05] Speaker 05:
We did offer an argument that cameras one and two could be incorporated into Voigt if it was necessary for those cameras to be opposite a center line, which was shown in green.

[00:03:19] Speaker 05:
But as you point out, Your Honor,

[00:03:21] Speaker 05:
The board found that the center line in this instance was the red line.

[00:03:25] Speaker 05:
In that case, cameras three, five, and six.

[00:03:29] Speaker 02:
Apologies.

[00:03:29] Speaker 02:
It appears that Judge Raina has dropped from the call.

[00:03:32] Speaker 02:
I'll stop the timer and try to reconnect Judge Raina.

[00:03:45] Speaker 05:
Could I also ask the clerk where I am on the clock, please?

[00:03:50] Speaker 04:
Oh, well, we'll make sure that we get to hear your argument.

[00:04:30] Speaker 02:
Hello, Judge Raina.

[00:04:31] Speaker 02:
This is Michael Lichtenberg.

[00:04:32] Speaker 02:
Can you hear me okay?

[00:04:34] Speaker 02:
Yes, I can.

[00:04:35] Speaker 02:
Okay.

[00:04:35] Speaker 02:
Judge Newman, whenever you're ready.

[00:04:37] Speaker 04:
Okay.

[00:04:38] Speaker 04:
Well, and how about Mr. Dustin's question of how much time does he have left in his argument in chief?

[00:04:48] Speaker 02:
Sure.

[00:04:48] Speaker 02:
He has reserved three minutes.

[00:04:51] Speaker 02:
There is 11 minutes and 30 seconds remaining in total, including his rebuttal.

[00:04:55] Speaker 04:
Okay.

[00:04:56] Speaker 04:
Well, proceed.

[00:04:56] Speaker 04:
We want to be sure we hear your argument, Mr. Dustin.

[00:04:59] Speaker 05:
Thank you, Your Honor.

[00:05:01] Speaker 05:
So just to return to page six in the diagram there, if we imagine this camera configuration transplanted into the Voigt reference, and we're talking about cameras three, five, four, and six, we would then have cameras that were both vertically spaced and cameras that were laterally disposed on opposite sides of the center line.

[00:05:21] Speaker 05:
And that is really all claim one requires, Your Honor.

[00:05:25] Speaker 05:
So it was an error for the board to insist that,

[00:05:29] Speaker 05:
Canfield was required to establish a reasonable expectation of success for cameras that were located behind the individual if the center line is indeed the red line that's drawn from front to back in the diagram.

[00:05:47] Speaker 05:
I wanted to turn for a moment to ground four.

[00:05:50] Speaker 05:
And again, in this particular instance, this is the ground that evolved the combination

[00:05:56] Speaker 05:
of Voight and Hurley and then the addition of Danen to that combination.

[00:06:01] Speaker 05:
The board in that instance improperly ignored arguments in the petition for why a person of ordinary skill in the yard would further multiply the number of cameras used.

[00:06:11] Speaker 05:
That motivation was clearly spelled out in the petition to your honors that the number of cameras, an increase in the number of cameras leads to an increase in the resolution

[00:06:22] Speaker 05:
that the total system can obtain from the individual because each camera, if multiplied, more cameras can focus on smaller areas of the body and therefore lend the entirety of their CCD arrays to that smaller area of the body and therefore achieve more image capture, greater resolution.

[00:06:46] Speaker 05:
That was clearly spelled out in the petition.

[00:06:52] Speaker 05:
further held that, again, finding that a wall would have obscured any rear cameras, it indicated that Hanfield had failed to establish a reasonable expectation of success.

[00:07:09] Speaker 05:
Again, in this particular instance, we acknowledged that in the mappings we made for ground four, because

[00:07:19] Speaker 05:
the claims that are addressed in that ground, claims six and seven, involve a third and fourth array of cameras that in the mappings that we made in the petition, we mapped those additional camera arrays to camera positions that would have led to the positioning of cameras behind the subject.

[00:07:42] Speaker 05:
Our argument here, your honors, is that the board's conclusion that there was a wall described in

[00:07:50] Speaker 05:
void, the primary reference, lacks substantial evidence as one, on one basis.

[00:07:57] Speaker 05:
And the second argument we make here, Your Honors, is that the Board indicated that there was evidence of record, declared by the Board to be of record, evidence of record as to how simple it would be to remove any such wall should it actually be disclosed, and to

[00:08:18] Speaker 05:
retain the sliders that Voigt describes or otherwise make modifications to retain those and that those modifications would have been within the skill of the art.

[00:08:31] Speaker 05:
And the board credited that testimony on institution, indicated it was of record, declared that the trial would proceed on that basis.

[00:08:40] Speaker 05:
The patent owner in its patent owner response did not object

[00:08:44] Speaker 05:
to that evidence, in fact dealt with it substantively and nor did it file a motion to exclude that evidence as it was required to do to preserve any objections to it.

[00:08:56] Speaker 05:
And it was only after the trial in this matter that the board abruptly and unilaterally changed its theory midstream and announced that it was going to ignore that evidence because it believed that evidence violated

[00:09:13] Speaker 05:
37 CFR 42.683 that it represented an improper incorporation by reference from the expert declaration.

[00:09:22] Speaker 05:
And our argument here, Your Honors, is that abrupt midstream change after the trial was conducted was an arbitrary and capricious act, an arbitrary and capricious application of this rule by the board and is a violation of the APA and that the board should have

[00:09:42] Speaker 05:
considered that evidence, and therefore for at least ground four, we're asking at minimum that this court remand this matter for reconsideration by the board of that evidence in connection with ground four.

[00:09:58] Speaker 05:
On grounds one, two, and five, however, your honor, I think that there is sufficient evidence here that the board's conclusions about reasonable expectations of success

[00:10:12] Speaker 05:
are sufficient, that they are unsupported by the record.

[00:10:18] Speaker 05:
In fact, the record supports the opposite, and therefore we think that it is appropriate to reverse the decisions with respect to those grounds.

[00:10:29] Speaker 04:
Okay, any questions at this point for Mr. Dustin?

[00:10:35] Speaker 04:
Then let's hear from the other side.

[00:10:38] Speaker 05:
Your Honor, I reserve my remaining time for rebuttal then.

[00:10:40] Speaker 04:
Yes, good.

[00:10:44] Speaker 04:
Mr. Garotano?

[00:10:46] Speaker 00:
Yes, good morning, Your Honor.

[00:10:47] Speaker 00:
It's Mark Garotano with McCarter in English, representing the patent owner, Milana Scan, and the appellee.

[00:10:53] Speaker 00:
May it please the court?

[00:10:55] Speaker 01:
Your Honor, the... If we look at page six of the reply brief, and we see the... This is Hurley.

[00:11:03] Speaker 01:
We see these cameras three, four, five, and six.

[00:11:06] Speaker 01:
If those were incorporated into Voigt, that would satisfy the claim, right?

[00:11:11] Speaker 01:
Because the claim

[00:11:12] Speaker 01:
requires only imaging a portion of the body.

[00:11:17] Speaker 00:
We agree, Your Honor, that the claim does not require cameras behind the person or the person being imaged.

[00:11:27] Speaker 01:
And so incorporating three, four, five, and six into Voight would satisfy the claim limitation, right?

[00:11:35] Speaker 00:
If, Your Honor, if they were properly incorporated in a proper

[00:11:40] Speaker 00:
obviousness argument and evidence were put forward, that would be possible in the sense that the claim does not preclude having cameras that, having a camera arrangement that does not include cameras behind the person being imaged.

[00:11:57] Speaker 01:
That's correct.

[00:11:57] Speaker 01:
My problem with the board decision is they focus entirely on this question of whether there's a wall and void that would obscure cameras one and two.

[00:12:08] Speaker 01:
And yet, you've agreed, and I think that's right, that cameras one and two aren't required to satisfy the claim limitation.

[00:12:16] Speaker 01:
So whether there's a wall or there's not a wall in Voigt is really irrelevant to the question of whether the incorporation of the other cameras, three, four, five, and six, from Hurley into Voigt would satisfy the claim and render the claim obvious.

[00:12:37] Speaker 00:
Well, Your Honor, I would submit that the board did not focus exclusively on the rear wall.

[00:12:41] Speaker 00:
That was part of the issue.

[00:12:43] Speaker 00:
And I think, Your Honor, we have to take a step back and we have to look at the petition and we have to look at the grounds for unpatentability as they were fairly presented in the petition.

[00:12:53] Speaker 00:
And if we look, Your Honor, at page 1059 of the appendix, that sets forth the single theory of unpatentability with respect to ground one.

[00:13:04] Speaker 00:
And if we look at the second and third line on page 1059, the petitioner argued that a POSA would have been motivated to modify VOIP to incorporate the multiple cameras of Hurley.

[00:13:20] Speaker 00:
Okay?

[00:13:21] Speaker 00:
So he's talking about the combination and the single theory presented was incorporating the multiple cameras of Hurley.

[00:13:28] Speaker 00:
Nowhere in the petition or in the supporting declaration did they set forth evidence or argument

[00:13:34] Speaker 00:
that the proposed combination was including less than all of the multiple cameras in Hurley.

[00:13:40] Speaker 01:
Okay, that may be, but if you incorporated all the cameras in Hurley, even if two of them were blocked, you'd still satisfy the claim.

[00:13:51] Speaker 00:
You may satisfy the claim, Your Honor, but I think the point was is that in order to prove obviousness, they have to first prove a motivation to combine, and then they have to prove a reasonable likelihood of success.

[00:14:02] Speaker 00:
I'm sorry, a reasonable expectation of achieving what's in the claim.

[00:14:06] Speaker 00:
Okay?

[00:14:06] Speaker 00:
So with respect to the first point, Your Honor, the Board again took Canfield at its word as it was presented in the position and squarely addressed the motivation to combine arguments.

[00:14:18] Speaker 00:
And so the motivations to combine, Your Honor, are set forth on page 1059.

[00:14:24] Speaker 00:
And they set forth several rationales on page 1059, immediately following the theory of obviousness.

[00:14:33] Speaker 00:
They then set forth various rationales for why a person of ordinary skill would have been motivated to make that combination.

[00:14:42] Speaker 00:
And the board fully considered the evidence

[00:14:46] Speaker 00:
with respect to all of those rationales.

[00:14:49] Speaker 01:
Well, I don't think they considered the one rationale, which was to do whole body imaging, which, as you point out, wouldn't be satisfied if two cameras, one and two, were blocked.

[00:15:00] Speaker 01:
But they didn't address the other rationales, which don't require whole body imaging.

[00:15:06] Speaker 01:
Increased resolution, avoidance of shadows.

[00:15:09] Speaker 01:
There's no discussion of that in the board opinion.

[00:15:13] Speaker 00:
I submit, Your Honor, that they did consider that, and there's substantial evidence to that effect.

[00:15:17] Speaker 00:
Dr. Vanderweede?

[00:15:18] Speaker 01:
Where did they consider those other rationales?

[00:15:21] Speaker 01:
I don't see it in the board opinion.

[00:15:22] Speaker 01:
Could you tell me where?

[00:15:23] Speaker 00:
Your Honor, yeah, if we go to the appendix, Your Honor, page at page 31, the appendix at page 31, at the very last three lines of that page,

[00:15:43] Speaker 00:
the boards facing pertinent part.

[00:15:45] Speaker 00:
First, they do point out about Voight's rear wall would have blocked the view of two rear-facing cameras.

[00:15:51] Speaker 00:
And then they go on to say, Voight's horizontally adjustable sliders would have partially blocked the views of the remaining cameras.

[00:16:00] Speaker 00:
And that was a significant part of Dr. Van Der Wees' testimony, Your Honor.

[00:16:04] Speaker 01:
The corners would block the view of the rear cameras, not three, four, five, and six.

[00:16:10] Speaker 00:
Yes, well, it does partially, at least partially, block the views of four, five, and six, Your Honor, because the sliders, Voight, if you recall, Voight has a single camera.

[00:16:24] Speaker 01:
The sliders are behind the individual, right?

[00:16:28] Speaker 00:
No, they are not.

[00:16:30] Speaker 00:
The sliders are not behind the individual.

[00:16:32] Speaker 00:
The sliders, if we go to page, if we look at Voight, Your Honor,

[00:16:37] Speaker 00:
which is, yeah, yeah.

[00:16:42] Speaker 00:
If we look at what, Your Honor, 573 in the appendix and 574, we can see that the horizontally adjustable sliders, they project outwardly from the rear wall or inwardly into the enclosure, such that they engage the lateral sides of the person being imaged.

[00:17:01] Speaker 01:
Okay, but even if they do block part of the person, the claims don't require scanning the entire person.

[00:17:09] Speaker 01:
It just requires scanning a portion of the person.

[00:17:13] Speaker 00:
Well, Your Honor, okay, so now we're talking about a reasonable expectation of success prong as opposed to the motivation to combine prong, okay?

[00:17:21] Speaker 00:
And I want to make something very clear on this.

[00:17:23] Speaker 00:
First of all,

[00:17:24] Speaker 00:
Canfield never argued reasonable expectation of success in its petition or in its supporting declaration.

[00:17:32] Speaker 00:
Nowhere does the petition mention the reasonable expectation of success, much less argue it or argue that there's evidence supporting a reasonable expectation of success.

[00:17:43] Speaker 00:
It's devoid of that.

[00:17:44] Speaker 00:
That's a new argument on appeal that was not presented below in the original petition.

[00:17:49] Speaker 01:
What Canfield argued... I'm trying to look at what the board said here.

[00:17:54] Speaker 01:
And we have to review what the board said, not what it might have said.

[00:17:58] Speaker 01:
And what the board said is there's no motivation here because the rear cameras would be blocked.

[00:18:06] Speaker 01:
But the rear cameras are not required to satisfy the claim limitation.

[00:18:11] Speaker 01:
That's the basic problem here.

[00:18:14] Speaker 00:
So, Your Honor.

[00:18:15] Speaker 00:
The motivation to combine, first of all, that inquiry does not need to be commensurate in scope with the claimed invention.

[00:18:22] Speaker 00:
I understand that the reasonable expectation of success does, but not the motivation to combine.

[00:18:27] Speaker 00:
The motivation to combine is based on the rationales that are presented by the petitioner in the petition.

[00:18:35] Speaker 00:
And the board went through and examined those.

[00:18:38] Speaker 00:
And the board found at the bottom of page 31, and by the way, this court reviews judgments, not decisions,

[00:18:45] Speaker 00:
And we submit, Your Honor, that there is substantial evidence in the record to support the board's finding, number one, with respect to no motivation to combine, which was the only argument presented and argued by Canfield below.

[00:18:58] Speaker 00:
And there, the board, the inquiry is not limited to only what's recited in the claimed invention.

[00:19:06] Speaker 00:
The inquiry is a fair analysis of the rationales that were presented by Canfield, which were thoroughly vetted

[00:19:15] Speaker 00:
Uh, and the board agreed with, uh, and credited the testimony of melanoscan expert, Dr. VanderWee.

[00:19:24] Speaker 01:
I don't see where the board addressed these other motivations to combine, which don't involve whole body imaging.

[00:19:31] Speaker 01:
That is the, the increased resolution, the avoidance of shadows.

[00:19:36] Speaker 01:
They don't address those motivations in the decision.

[00:19:41] Speaker 00:
Well, your honor, they, they do reference.

[00:19:44] Speaker 00:
Two things.

[00:19:46] Speaker 01:
Very quickly, what I can find again is the bottom... Where do they address those other motivations?

[00:19:51] Speaker 00:
Okay, at the bottom of page 16, they say that voice horizontally adjustable sliders would have partially blocked the views of the remaining cameras.

[00:20:00] Speaker 00:
And then they refer there to paragraph 55 through 58 as a Van Der Weed declaration.

[00:20:08] Speaker 00:
And if we go to the Van Der Weed declaration,

[00:20:11] Speaker 01:
They also, by the way, Your Honor, if I could find it real quickly, they cite to, they cite to... Yeah, but you're not showing me where they've addressed these other motivations other than the whole body imaging, where they addressed the increased resolution or shadowing, which don't depend on the rear cameras.

[00:20:36] Speaker 00:
Well, the shadowing, Your Honor,

[00:20:38] Speaker 00:
The shadowing, Your Honor, is impacted by the cameras that would be located in front of the patient.

[00:20:48] Speaker 01:
Where do they address these other motivations?

[00:20:52] Speaker 01:
That's the problem.

[00:20:54] Speaker 01:
And the fact that they cited to some part of the declaration in the opinion is not exactly addressing the argument.

[00:21:06] Speaker 00:
Well, they indicate that they have fully considered and agreed with Dr. Vander Weed's testimony on this subject matter, which... Where do they say that?

[00:21:18] Speaker 00:
Okay, they say that in a couple of places.

[00:21:22] Speaker 00:
They say it in... Bear with me one moment.

[00:21:27] Speaker 04:
I say it on page 16 at the bottom.

[00:21:30] Speaker 04:
We agree with and credit Dr. Vander Weed.

[00:21:33] Speaker 00:
Yes, yes.

[00:21:35] Speaker 00:
And they cite to paragraphs 55 through 58 of Dr. Vanderweede's declaration.

[00:21:44] Speaker 01:
And I'm trying to see if they agree with him on the rear wall, not that they agree with him on these other points.

[00:21:50] Speaker 00:
Well, if we look at Dr. Vanderweede, Your Honor, paragraph 55 through 58.

[00:21:55] Speaker 00:
Bear with me one second, Your Honor.

[00:22:03] Speaker 00:
So they.

[00:22:05] Speaker 00:
They talk on page 15 about the... They acknowledge on page 15 that the petitioner sets forth several rationales, okay?

[00:22:22] Speaker 00:
At the top of page 15, the first paragraph, they say the petitioner sets forth... This is in the first full paragraph of the last sentence.

[00:22:33] Speaker 00:
They say the petitioner sets forth several rationales for why a person would have had reason to combine the teachings of Voight and Hurley.

[00:22:40] Speaker 00:
But these rationales are general in nature and do not address any modifications of Voight specifically.

[00:22:46] Speaker 00:
So they, and when we look at the pages they're talking about, they're talking about the rationale, Your Honor, on the appendix of page 1059 that you're referring to.

[00:22:58] Speaker 04:
Well, you know, those rationales are,

[00:23:00] Speaker 04:
are broadly stated, but it seems to me that part of the problem which underlies a good deal of the concern is the breadth of the claims don't have the limitations that we're discussing.

[00:23:16] Speaker 00:
Well, Your Honor, if I may, the claims, the claims do require, first of all, the claims do require

[00:23:29] Speaker 00:
that if we look, for example, at Claim 1, Column 22, Line 23, the claims, really the wherein clause, which starts at Line 17 of Column 22, where they say each of said imaging devices generates an image of the illuminated person or portion thereof, and then they go on to say, in the last three lines, allowing precise measurement of imaged features

[00:23:59] Speaker 00:
of the person or portion thereof located at the specified imaging position.

[00:24:03] Speaker 00:
And so we submit, Your Honor, with respect to the reasonable expectation of success inquiry, as opposed to the motivation to combine inquiry, that the person of ordinary skill, and there was evidence to this effect by Dr. Vander Weed, that if you add any cameras over and above voice single camera,

[00:24:25] Speaker 00:
The image of that camera is either going to be partially or fully occluded.

[00:24:31] Speaker 00:
It'll be partially occluded if it's located to the side of the main camera because the horizontally scalable sliders are going to partially occlude that image.

[00:24:42] Speaker 00:
And it'll be fully occluded if it's located behind.

[00:24:45] Speaker 00:
And also, there would be shadowing.

[00:24:48] Speaker 01:
Your problem with the claim is it only requires imaging a portion of the body, not the whole body.

[00:24:56] Speaker 00:
Yeah, but let's first talk about the motivation to combine your honor.

[00:25:00] Speaker 00:
And this is what the board considered.

[00:25:02] Speaker 00:
And this is what Dr. Vander Lee said.

[00:25:04] Speaker 00:
If, why would a person of ordinary skill be motivated to add an additional camera to the side of the camera in voice?

[00:25:13] Speaker 00:
If that, if that, if the image from that camera is going to be at least partially occluded and subject to shadowing, the board found that a person of ordinary skill would not have been motivated to make that combination.

[00:25:28] Speaker 00:
Okay, and that's very clear in paragraphs 55 through 58 of Dr. VanderWee's declaration.

[00:25:34] Speaker 00:
And the evidence shows that the person of ordinary skill would not have been motivated to add any cameras over and above the one camera of voice, because if you were to add any such cameras as shown in Hurley, you would have at least partial occlusion and shadowing.

[00:25:52] Speaker 03:
Does that occlusion and shadowing occur in both instances where you're taking a view of the entire person versus just a portion of the person?

[00:26:05] Speaker 00:
Well, Your Honor, if you were to, for example, add only cameras in the front and not the back, what we're talking about here is adding cameras to the side of the single camera in void.

[00:26:17] Speaker 00:
If you were to add a camera to the side of the single camera in void,

[00:26:20] Speaker 00:
And you only had, let's say, two cameras.

[00:26:24] Speaker 00:
One to the side and one dead-on is in void.

[00:26:26] Speaker 00:
Well, the camera to the side is going to be, the image from that camera is going to be partially occluded by the horizontally scalable sliders on the side of the page.

[00:26:36] Speaker 03:
Can't you move those sliders?

[00:26:39] Speaker 00:
No, you absolutely cannot, Your Honor.

[00:26:41] Speaker 00:
And if we look at voice, which is at 573, well, partially, Your Honor, that's part of the point, by the way, and that's the difficulty the board had.

[00:26:52] Speaker 00:
Canfield never explained how you would deal with the problem of voice position framework and the either partial or full occlusion or shadowing that it would create.

[00:27:07] Speaker 00:
And so that's why the board said, hey, Canfield hasn't identified what modifications, if any, you're going to make to Voight.

[00:27:15] Speaker 00:
That was necessary for Canfield to do in order to first establish there would be a motivation to combine.

[00:27:22] Speaker 00:
Because the person of ordinary skill would not be motivated to combine if adding that extra camera is going to, if that camera is going to be partially occluded or is going to be subject to shadowing.

[00:27:35] Speaker 00:
And Voight, on the other hand, your honor,

[00:27:37] Speaker 00:
Voight very clearly establishes the criticality of that position framework and how important it is to maintaining what's called registration reproducibility because what they do here in Voight is they take an image of the person at one point in time, the person then comes back, they image the person again and then they need to compare the images at those two points in time

[00:28:04] Speaker 00:
and assess whether there's any differences in the lesions that have been imaged.

[00:28:09] Speaker 00:
And so they need to maintain, and Voight is very clear about this, registration reproducibility.

[00:28:15] Speaker 00:
The way they do that is by virtue of the position framework, a significant part of which is the lateral sliders, which as you can see, Your Honor, if you go to figure two on page 574 of Voight, you can see that those sliders have to appear in the image.

[00:28:33] Speaker 00:
If they don't appear in the image, you cannot get registration reproducibility.

[00:28:39] Speaker 00:
Okay?

[00:28:40] Speaker 00:
So you can't just move those out of the way according to Voight.

[00:28:44] Speaker 00:
You can't just get rid of them.

[00:28:45] Speaker 00:
By the way, Canfield never proposed any modification to those sliders.

[00:28:50] Speaker 00:
But according to Voight, you can't get rid of those because if we look at Figure 2 of Voight and we look at his associated description, those sliders, they have to be imaged in accordance with his teachings.

[00:29:03] Speaker 00:
so that when the patient comes back in, you've got a fixed reference point in the second image.

[00:29:10] Speaker 00:
And that fixed reference point is the slider.

[00:29:13] Speaker 00:
And that's necessary to correlate one image to the next and measure very precise differences in the images from one period of time in the next.

[00:29:22] Speaker 01:
So, Your Honor, I know the bell went off.

[00:29:24] Speaker 01:
Maybe so, but you can still image a portion of the body with the sliders in place, correct?

[00:29:32] Speaker 00:
You can image a portion of the body with the fires in place, Your Honor.

[00:29:35] Speaker 00:
That is correct.

[00:29:36] Speaker 00:
And I would submit, though, that there's substantial evidence that shows that if you were to add a camera to do that, that camera would be at least, the image would be at least partially occluded, the image would be subject to shadowing, and therefore the person of ordinary skill would not have been motivated to make that combination.

[00:29:56] Speaker 04:
So you're saying that any combination with more than one camera is included in the claims?

[00:30:03] Speaker 00:
I'm not suggesting that, your honor.

[00:30:05] Speaker 00:
No, no.

[00:30:06] Speaker 00:
I, I, I, and if I did forgive me.

[00:30:08] Speaker 00:
Um, and so I may have spoken too loosely, but what I was suggesting, your honor, is that the evidence does show that if you add cameras in addition to the single camera of void.

[00:30:19] Speaker 00:
So if you were to add only the front four cameras of Hurley to void.

[00:30:25] Speaker 00:
There would be no motivation to do that because the images of those cameras would be partially occluded by the horizontally scalable sliders, and they would be subject to shadowing by those sliders.

[00:30:42] Speaker 00:
And so Dr. Vandrieu testified that the person of ordinary skill would not have been motivated to make that combination because of that problem.

[00:30:50] Speaker 00:
And Canfield,

[00:30:56] Speaker 00:
never dealt with that issue, never described in their petition or anywhere how to modify voice in order to create a motivation to combine, in order to prove a motivation to combine.

[00:31:11] Speaker 04:
Okay, any more questions from the panel from Mr. Garotano?

[00:31:20] Speaker 04:
Okay, I think we have the positions.

[00:31:23] Speaker 04:
Thank you.

[00:31:25] Speaker 04:
Mr. Dustin, you have some rebuttal time.

[00:31:35] Speaker 04:
When you're ready, Mr. Dustin.

[00:31:39] Speaker 05:
Thank you, Your Honor.

[00:31:40] Speaker 05:
I wonder if the clerk could let me know how much time I have remaining just so I can... Well, we have three minutes reserved.

[00:31:45] Speaker 04:
Let's see how that goes.

[00:31:47] Speaker 05:
All right.

[00:31:48] Speaker 05:
Very good, Your Honor.

[00:31:48] Speaker 05:
So first of all, I want to address

[00:31:50] Speaker 05:
counsel's arguments about what the basis of the board's decision was in this instance.

[00:31:56] Speaker 05:
I think it's pretty clear that the board did not find on the basis of motivation to abide, it's found on the basis of lack of reasonable expectation of success.

[00:32:06] Speaker 05:
That's fairly apparent from the appendix at 31 where the board says specifically, we find petitioner has failed to establish by a preponderance of the evidence that a person of origin or skill in the art

[00:32:20] Speaker 05:
recently have expected to be successful in combining unmodified Voight with Hurley's arrangement.

[00:32:27] Speaker 05:
Even in the portion that council cited for this notion that the board's decision was on the basis of motivation to combine, that is that flatter part of that same paragraph, which makes reference to Dr. Vanderweed's declaration, it says, we agree and credit the detailed testimony that an artesian

[00:32:49] Speaker 05:
would not reasonably have expected such a combination to be successful.

[00:32:52] Speaker 05:
There's frankly no statement in the board's decision that the basis of the decision was motivation and combined.

[00:32:59] Speaker 05:
But let's address what counsel says is the reason that would prevent this motivation from arising.

[00:33:06] Speaker 05:
And that is that these sliders in his view would partially occlude the view of additional cameras that were placed in front of the subject.

[00:33:17] Speaker 05:
Now, we didn't argue that one needed to perfect Voigt in that particular regard.

[00:33:23] Speaker 05:
We did not assert that one needed to eliminate or should dispense with Voigt sliders.

[00:33:30] Speaker 05:
We offered a configuration that would improve upon the imaging that Voigt already sought to achieve, which is the imaging of the front of the body by placing multiple cameras vertically spaced and then horizontally

[00:33:47] Speaker 05:
displacing them in an oblique angle, one was able then to image more effectively the curved surfaces of the front of the body that Voigt already sought to image.

[00:34:00] Speaker 05:
Also, that arrangement would have the advantage of increasing the area that could be imaged at one time because Voigt shows imaging capable from its movable camera of only the torso

[00:34:14] Speaker 05:
of the individual, whereas vertically spacing cameras would allow you to image basically from head to toe at the same time.

[00:34:22] Speaker 05:
So this existence of the sliders would not have prevented a person from approving the Voigt system with the teachings that both Hurley and Crampton describe.

[00:34:35] Speaker 05:
And therefore, even if this court were to view the board's decision as having

[00:34:41] Speaker 05:
instead been premised upon a motivation to combine, that motivation exists and the board has not dealt with all of these various rationales in its opinion to explain how the sliders would have prevented the achievement of those things.

[00:34:59] Speaker 05:
Now I wanted to also mention briefly the wall issue because a lot of this depends on

[00:35:06] Speaker 05:
the existence of a wall, and the board cited really to no evidence that a wall existed in Voigt.

[00:35:16] Speaker 05:
Really, the only statement it makes is in pointing to Figure 1, it says a wall is disclosed in Figure 1, and grooves in that wall are disclosed that hold the sliders.

[00:35:29] Speaker 05:
Now, in looking at Figure 1, and I think let me find a statement

[00:35:35] Speaker 05:
The best image, unfortunately, the repeated veeroxing of this sometimes leaves this a little bit unclear, but the Voight reference itself at Appendix 573.

[00:35:53] Speaker 05:
The Voight reference itself shows the sliders as attached to horizontally disposed

[00:36:04] Speaker 05:
what appear to be wires in my reading of this diagram, that stretch from this solid upright of the frame, this 90-degree framework, that stretch from one side of the frame to the other to hold the sliders.

[00:36:21] Speaker 05:
I don't see a groove here.

[00:36:23] Speaker 05:
I don't see any wall here.

[00:36:25] Speaker 05:
Voigt makes no mention of a wall.

[00:36:27] Speaker 05:
Milanskan at oral argument itself

[00:36:30] Speaker 05:
conceded that Voigt does not mention even the need for a wall.

[00:36:35] Speaker 05:
And the arguments that Milansky makes on appeal about grooves and lines and lead lines and the like were never presented to the board.

[00:36:45] Speaker 05:
And the board makes no reference to any of that as support or evidence in support of its determination of a wall.

[00:36:52] Speaker 05:
This is, I think, a textbook example

[00:36:54] Speaker 05:
of the board kind of going beyond their brief a bit here and imagining structures that are not disclosed in the primary reference.

[00:37:06] Speaker 05:
Let me also say one other thing about sliders.

[00:37:09] Speaker 05:
There's been a lot of talk about the sliders that would occlude portions of the individual.

[00:37:17] Speaker 05:
I don't think that Voigt makes any reference to the criticality of the size or dimensions of sliders.

[00:37:24] Speaker 05:
The Smith nephew decision, which we've cited in our brief, Your Honor, makes clear that while a structure might be referred to in a prior art reference, arguments that are intended to suggest that that has to have particular dimensions or sizes that would be sufficient to obscure large portions of the individual

[00:37:51] Speaker 05:
Those are not supported by the reference itself.

[00:37:54] Speaker 05:
There's no criticality given to the shape or size of these sliders.

[00:37:59] Speaker 05:
The only thing that the sliders need to accomplish is, as Council pointed out, is they need to provide some sort of reference point that would be visible in the image that is taken.

[00:38:12] Speaker 05:
And in this particular instance, sliders of really any dimension, even a minimal dimension that would obscure

[00:38:20] Speaker 05:
roughly a small portion, maybe even a bar or something that might have a one-inch diameter in contact with the individual to help position them would very clearly have little or no effect on obscuring any sizable portion of the individual.

[00:38:37] Speaker 05:
And so I think the argument about the sliders for that reason alone is unpersuasive, Your Honor.

[00:38:47] Speaker 05:
I have heard the bell, but I think unless the court has some additional questions, which I'm happy to answer, and I know we haven't spent much time on the wall issue, but as I said, we also touched briefly on the APA issue that we raised, which had to do with the sudden reversal by the court of considering modifications that were proposed in the petition and then determining

[00:39:16] Speaker 05:
in the absence of any objection from the petitioner or any argument to exclude, determining on its own motion after trial that it was going to ignore that evidence.

[00:39:25] Speaker 05:
And based on the decision to ignore that evidence, it was then going to find that the sliders could not have been retained without this phantom wall.

[00:39:35] Speaker 05:
I'm happy to answer questions on that aspect of our briefing as well, Your Honor.

[00:39:39] Speaker 04:
Let me ask, does the panel have any further questions for Mr. Dustin?

[00:39:45] Speaker 03:
No, I don't.

[00:39:47] Speaker 04:
Okay, hearing none, I believe we have the arguments of both sides of the cases submitted.

[00:39:53] Speaker 04:
And that concludes this panel's arguments for this morning.

[00:39:58] Speaker 04:
We will terminate the call.

[00:40:01] Speaker 00:
Thank you, Your Honors.

[00:40:02] Speaker 05:
Thank you, Your Honors.

[00:40:04] Speaker 02:
The Honorable Court is adjourned until tomorrow morning at 10 a.m.