[00:00:00] Speaker 06:
Okay, the next case before the court is 20-1528 at the Con LLC versus Intuitive Surgical Inc.

[00:00:09] Speaker 06:
In this case, we have both an appeal and a cross-appeal from a decision of the Patent Trial and Appeal Board.

[00:00:16] Speaker 06:
Mr. Ferguson, you're going first with respect to the main appeal, and as I understand it, you want five minutes for rebuttal.

[00:00:23] Speaker 06:
Is that correct?

[00:00:24] Speaker 01:
Yes, Your Honor.

[00:00:26] Speaker 06:
Okay, if you're ready, you may proceed.

[00:00:28] Speaker 01:
Thank you.

[00:00:29] Speaker 01:
Good morning and may it please the court, Brian Ferguson for Ethicon.

[00:00:33] Speaker 01:
With respect to Ethicon's main appeal, the evidence before the board showed that there's three relevant types of surgical systems at the time of the 431 PAT.

[00:00:43] Speaker 01:
The first type were the devices where the surgeon holds and manually operates the device, like in Figure 1 of the 431 PAT.

[00:00:52] Speaker 01:
The second type were the robotics systems.

[00:00:55] Speaker 01:
shown in figures 34 and 35 of the 431 patent, and also in figures 1 and 2 of the prior R-tyrany patent, where robotic arms moved and manipulated the surgical tools while the surgeon was remotely located at a control panel.

[00:01:12] Speaker 01:
And the third type were motor-controlled surgical tools under a computer direction, but where the surgeon still physically held the device during the surgery.

[00:01:24] Speaker 01:
And an example of that third type is the Whitman Prior Art.

[00:01:28] Speaker 01:
And there were other publications describing the same at appendix 1915 to 1930.

[00:01:33] Speaker 01:
The board erred when it construed the claims of the 431 patent so broadly that it found them anticipated by the third type of device when the claims are plainly directed to the second type of system.

[00:01:48] Speaker 01:
And as such, when properly construed, are not anticipated by Whitman.

[00:01:53] Speaker 01:
Ethican raised two claim construction issues before the board, robotics system and tool mounting portion, which together in the context of the disclosed invention confirmed that the claims do not cover Whitman's handheld system.

[00:02:10] Speaker 01:
First.

[00:02:11] Speaker 06:
Counsel, can we talk about the mounting question first?

[00:02:15] Speaker 06:
I'm having a hard time understanding exactly what you're saying in your blue brief.

[00:02:23] Speaker 06:
Is it your claim that the mounting tool portion is what provides support for the surgical tool, or are you arguing that the robotic system provides support for the surgical tool?

[00:02:36] Speaker 05:
Good question, Your Honor.

[00:02:37] Speaker 05:
It's both.

[00:02:38] Speaker 06:
Thank you.

[00:02:39] Speaker 05:
That's why I asked it.

[00:02:41] Speaker 01:
I'm kidding.

[00:02:42] Speaker 01:
Go ahead.

[00:02:45] Speaker 01:
The tool mounting portion is on the surgical tool.

[00:02:53] Speaker 01:
And it is then mounted to the robotic arm of the robotic system.

[00:03:01] Speaker 01:
So the tool mounting portion, what is being mounted is the tool itself to the robotic arm of the robotic system.

[00:03:13] Speaker 07:
Mr. Ferguson, this is Judge Stoll.

[00:03:15] Speaker 07:
It seems to me, in looking at the plain claim language and the specification,

[00:03:22] Speaker 07:
It seems equally plausible that the tool mounting portion, the mounting term that you are emphasizing, the board didn't give enough effect to, that that could also reasonably mean that the tool is mounted on the tool mounting portion.

[00:03:40] Speaker 07:
And the board's construction does at least have some of that in it by saying that

[00:03:47] Speaker 07:
I think it's that transmission is supported by the toll mounting portion.

[00:03:53] Speaker 07:
And other parts of the toll, they use the word support, which comes from the plain claim language itself later in the claim.

[00:04:00] Speaker 07:
But nonetheless, why is it that I'm supposed to understand that the toll mounting portion means that it's mounted on the robotic system, as opposed to what might, you know, in the plain claim language seem to be more logical

[00:04:16] Speaker 07:
which is that the tool is mounted on the tool mounting portion.

[00:04:21] Speaker 01:
In the context of what's written in the specification, Your Honor, I think it's very clear that the tool mounting portion, as described, is the portion that's mounted to the robotic arm.

[00:04:35] Speaker 01:
For example, at column 28, this is at appendix 190,

[00:04:41] Speaker 01:
the first paragraph, which begins at line one, going down through line 16.

[00:04:47] Speaker 01:
It says specifically that the surgical tool, 1200, so that's the tool, is operably coupled to the manipulator.

[00:04:58] Speaker 01:
The manipulator is the robotic arm by a tool mounting portion, generally designated as 1300.

[00:05:06] Speaker 01:
And that's shown in

[00:05:11] Speaker 01:
Figure 38, for example, which is at appendix 93, the tool, the end effector, is obviously the rod that's coming out of the box.

[00:05:25] Speaker 01:
The box, 1300, that is what is mounted to the robotic arm manipulators.

[00:05:33] Speaker 07:
Would you say, though, that this

[00:05:36] Speaker 07:
the tool that's coming out of 1300 is also supported by 1300 as it's attached in there.

[00:05:46] Speaker 01:
That is definitely true and we do not take issue with that because that is specified in the claim language itself.

[00:05:52] Speaker 01:
Our issue is that the board only construed the claim tool mounting portion to address, as what Your Honor just raised, that the tool is

[00:06:06] Speaker 01:
attached to that but does not take into account that the specification describes the tool mounting portion as being supported and connected to the manipulators, the robotic arms of the robotic system itself.

[00:06:25] Speaker 01:
So where the board

[00:06:27] Speaker 07:
We believe... The board did say that it's operably coupled.

[00:06:30] Speaker 07:
That is, the tool mounting portion, I think they said, was operably coupled.

[00:06:34] Speaker 07:
You just want more than that.

[00:06:35] Speaker 07:
You want it to be that the tool mounting portion is actually supported by the robotic system.

[00:06:43] Speaker 01:
That's right, because that is the entire context of this particular invention.

[00:06:50] Speaker 01:
The invention is not directed towards a tool that is held by a surgeon at all.

[00:06:56] Speaker 01:
The whole point of this invention was to take existing end effectors, which are the surgical staplers, and be able to use... Was that my... No.

[00:07:15] Speaker 01:
be able to use them on these robotic systems.

[00:07:18] Speaker 01:
And the only way to do that is what's shown in the specification, which is where they are mounted to the robotic arms.

[00:07:26] Speaker 01:
And we think the board's construction was just too broad.

[00:07:31] Speaker 01:
Yes, it is the broadest reasonable interpretation, but it's unreasonable to interpret to a mounting portion in this context to not be mounted to the robotic arms of the robotic system.

[00:07:45] Speaker 02:
Council, isn't part of the problem.

[00:07:47] Speaker 02:
So, Mr. Judge Clevinger, so what if it is mounted to that?

[00:07:52] Speaker 02:
The shaft assembly is being operably supported on the tool mounting portion, not operably supported by the tool mounting portion.

[00:08:08] Speaker 02:
So why isn't it up just to have it connected to the tool mounting portion?

[00:08:14] Speaker 01:
And that, I think, is covered in the claim, Your Honor.

[00:08:19] Speaker 01:
But what is missing?

[00:08:21] Speaker 02:
I'm pointing out the difference between the word on and the word by.

[00:08:24] Speaker 02:
And the transmission arrangement is operably supported on the till mounting portion, not supported by.

[00:08:32] Speaker 02:
So it's not supporting the weight of.

[00:08:39] Speaker 01:
And I might not be understanding your question entirely, Your Honor, and I apologize for that.

[00:08:45] Speaker 01:
But I do think that in the context of the specification, again, the tool.

[00:08:53] Speaker 02:
Help me out.

[00:08:54] Speaker 02:
What's precisely wrong with the board's interpretation?

[00:08:59] Speaker 02:
Structure for operable attachment to the tool drive assembly.

[00:09:04] Speaker 02:
So they're going to have it.

[00:09:05] Speaker 02:
They agree that it's going to be operably attached

[00:09:09] Speaker 02:
to your tool drive assembly.

[00:09:12] Speaker 02:
Do you agree with that part of the interpretation?

[00:09:15] Speaker 01:
We do, because that's the language of the claim.

[00:09:17] Speaker 01:
OK.

[00:09:17] Speaker 02:
That's the language of the claim.

[00:09:19] Speaker 02:
And then they say it operably supports the elongated shaft assembly, which is what the language calls for.

[00:09:28] Speaker 02:
And it operably supports a transmission arrangement.

[00:09:32] Speaker 02:
What's missing?

[00:09:35] Speaker 02:
Don't you agree that that interpretation is correct in so far as it goes?

[00:09:40] Speaker 01:
It is.

[00:09:41] Speaker 01:
It is.

[00:09:43] Speaker 01:
We believe there are three requirements of the tool mounting portion of the board.

[00:09:47] Speaker 02:
Help me out and say what has to be added to the, precisely added to the board's interpretation?

[00:09:55] Speaker 02:
What words to satisfy you?

[00:09:58] Speaker 01:
that the board needed to recognize that the tool mounting... Can you add the words?

[00:10:05] Speaker 01:
Yes.

[00:10:06] Speaker 01:
The tool mounting portion is attached to a support, which is the manipulator of the robotic arm.

[00:10:15] Speaker 01:
That's what's missing.

[00:10:17] Speaker 07:
And as a result of... This is Judge Stoll.

[00:10:22] Speaker 07:
Can I ask you a question?

[00:10:23] Speaker 07:
With your construction,

[00:10:25] Speaker 07:
Wouldn't you be rendering the language operable attachment to the tool drive assembly of the robotic system redundant?

[00:10:33] Speaker 01:
No, because there's a difference between operably, which means that it is then under control, and physically, which means that it is attached to.

[00:10:45] Speaker 01:
That's why the board is lacking.

[00:10:48] Speaker 06:
I have one more question before you save your rebuttal time.

[00:10:53] Speaker 06:
Why should the claim term encompass the robotic system when the function that appears to be served with respect to this claim is directed to supporting the surgical tool?

[00:11:07] Speaker 01:
Well, again, Your Honor, this goes to the disclosure and the specification.

[00:11:12] Speaker 01:
The claim can't be broader than what is disclosed in the specification.

[00:11:17] Speaker 01:
And reasonably, what is disclosed in the specification is that the tool

[00:11:23] Speaker 01:
has to be mounted to the robotic arm.

[00:11:26] Speaker 06:
Part of the problem here is that this looks very much like a means-plus-function claim, and if it's not, then the claim language itself has to really call out the structure.

[00:11:37] Speaker 06:
You're asking us to go through several steps to figure out what the structure is.

[00:11:46] Speaker 01:
Again, I think the board said that no one interpreted this term below as being a means plus function term.

[00:11:54] Speaker 01:
If I may take one minute, and I know I'm in my rebuttal, I'll use that.

[00:11:59] Speaker 01:
I also did want to discuss the term robotic system in my opening argument because there again, the board construed robotic system too broadly

[00:12:12] Speaker 01:
There is only one robotic system disclosed in the entire specification.

[00:12:16] Speaker 01:
It's robotic system 1000.

[00:12:18] Speaker 01:
It requires the control unit and the car having the robotic manipulator arms.

[00:12:26] Speaker 01:
And to construe the claim so broadly that the robotic arms are missing or not included is, again, not consistent with the specification.

[00:12:36] Speaker 01:
If there are any questions on that, otherwise I'll reserve my remaining time.

[00:12:41] Speaker 06:
Okay.

[00:12:42] Speaker 06:
Thank you.

[00:12:42] Speaker 06:
Let's hear from Mr. Katz.

[00:12:46] Speaker 04:
Thank you, Your Honors.

[00:12:48] Speaker 04:
So I'll address the appeal briefly, and then move on to the cross-appeal.

[00:12:53] Speaker 04:
On the tool mounting portion, I think that Your Honors expressed through your questions their understanding of the issues here.

[00:13:01] Speaker 04:
And I think, as Your Honors pointed out, the tool mounting portion, the word mounting doesn't state where the mounting occurs, even under ethical.

[00:13:12] Speaker 04:
construction of that.

[00:13:14] Speaker 04:
And I guess the one thing I did hear my friend mention is that, you know, the specification repeatedly says the tool mounting portion must be mounted to the robot.

[00:13:24] Speaker 04:
And of course, that's not correct.

[00:13:26] Speaker 04:
And in fact, the passage that my friend read on column 28 at appendix 190 doesn't say that, right?

[00:13:34] Speaker 04:
Assuming, I presume this is the best passage they have for their position.

[00:13:38] Speaker 04:
And as he read it, it says that the

[00:13:41] Speaker 04:
the assembly is operably coupled to the tool through the tool mounting portion.

[00:13:47] Speaker 04:
So there's no requirement of mounting.

[00:13:49] Speaker 04:
It's not in the spec, and of course, it's not in the claim.

[00:13:54] Speaker 04:
With that, I will just touch on the robotic system very briefly.

[00:13:58] Speaker 04:
As we pointed out in our briefs, that Appendix 11, the patent specifically does

[00:14:08] Speaker 04:
And as discussed in the final decision, the patent specifically discusses that other types and forms of robotic systems other than just the particular one disclosed, discovered.

[00:14:19] Speaker 04:
So there's really no question there's not a definition here.

[00:14:22] Speaker 04:
And I just also want to point out that at Appendix 2158, we pointed out in our briefs that Dr. Cimino admitted that their definition was incorrect, that

[00:14:33] Speaker 04:
There's no requirement that you have a slave cart, for example, and he admitted that.

[00:14:37] Speaker 04:
So, given that admission, I'm not sure why they keep arguing that somehow there's a definition when their own expert disagrees.

[00:14:46] Speaker 04:
Turning to the Crospeel.

[00:14:47] Speaker 04:
The issue here is that the board, when it went to obviousness, did perform the wrong obviousness analysis.

[00:14:54] Speaker 04:
And frankly, we believe in direct contradiction of KSR.

[00:14:58] Speaker 04:
And so, the board, you know, noted

[00:15:03] Speaker 04:
that it would be, at a general level, obvious to combine all sorts of different instruments with the tyranny robot.

[00:15:12] Speaker 04:
And this makes sense.

[00:15:15] Speaker 04:
And that's Appendix 28.

[00:15:19] Speaker 04:
But then the board should have stopped there.

[00:15:20] Speaker 04:
The board should have said, OK, so it's obvious.

[00:15:22] Speaker 04:
It would have been obvious to combine the two.

[00:15:24] Speaker 04:
There's no dispute that all the elements would be there.

[00:15:27] Speaker 04:
But then the board essentially said,

[00:15:29] Speaker 04:
Now you need to show not only a motivation to convert Whitman to be connected to a robot, you need to show a motivation to keep the Whitman shifter intact as opposed to ripping it out.

[00:15:41] Speaker 04:
And there is no requirement for that in the law of obviousness.

[00:15:46] Speaker 06:
And in fact, it's directly... I really don't even understand your KSR argument.

[00:15:50] Speaker 06:
I mean, you're basically trying to say that you're going to substitute the motivation to combine requirement for some kind of a benefit.

[00:15:59] Speaker 06:
requirement?

[00:16:02] Speaker 04:
Actually, Your Honor, it's our understanding from KSR that the motivation to combine comes from finding a benefit, some benefit to the combination, and then that would motivate one of skill in the art to make the combination.

[00:16:18] Speaker 04:
And so what our KSR argument is this, Your Honor.

[00:16:21] Speaker 04:
In KSR, there was an asano pedal that had all sorts of features.

[00:16:27] Speaker 04:
that went beyond a typical adjustable pedal.

[00:16:31] Speaker 04:
In fact, it had the ability, you know, to, you know, equalize the force as the pedal was pressed down.

[00:16:41] Speaker 04:
And the argument was, well, you know, you wouldn't necessarily pick this reference.

[00:16:45] Speaker 04:
There's other adjustable references, adjustable pedal references to pick.

[00:16:50] Speaker 04:
And what the Supreme Court I think says clearly is, well, that's not correct.

[00:16:54] Speaker 04:
You might start with,

[00:16:56] Speaker 04:
from scratch and just build a basic adjustable pedal.

[00:16:59] Speaker 04:
But you also might take the pre-existing ones, such as Asana.

[00:17:03] Speaker 04:
And so if it would be obvious to take an adjustable pedal and add an electronic throttle control, that would be obvious to apply to all the adjustable pedals, including Asana.

[00:17:17] Speaker 04:
And what we're saying is that's exactly what we have here.

[00:17:21] Speaker 04:
You start with Whitman.

[00:17:23] Speaker 04:
Whitman is a surgical stapler.

[00:17:26] Speaker 04:
with a shifter built in.

[00:17:28] Speaker 04:
And then the question is, would it have been obvious, would there have been a motivation to modify Whitman to be connected to the Tierney robot?

[00:17:36] Speaker 04:
And the board pretty much has already said yes.

[00:17:39] Speaker 04:
Yes, we see that Tierney does make a suggestion to make this combination.

[00:17:43] Speaker 04:
And we pointed out all the benefits.

[00:17:44] Speaker 06:
But isn't that, isn't part of the problem that Whitman's shifter is optional?

[00:17:51] Speaker 06:
And didn't the board say that's not, that's not sufficiently motivating?

[00:17:56] Speaker 06:
And that's a factual conclusion.

[00:17:59] Speaker 04:
Actually, Your Honor, we think that's a legal error in the obviousness analysis because we concede that the shifter is optional in that there are two embodiments.

[00:18:09] Speaker 04:
What we're saying is, if I have a Whitman device with a shifter, would it have been obvious to take that and make it and roboticize it so it connects to the Tierney robot?

[00:18:22] Speaker 04:
Would there be a benefit to making that connect to the Tierney robot?

[00:18:26] Speaker 04:
And there is a benefit.

[00:18:28] Speaker 04:
It doesn't matter whether the shifter is needed or not in that circuit.

[00:18:33] Speaker 04:
There's a benefit to making that Whitman device work with the robot.

[00:18:37] Speaker 04:
And we believe that's what KSR says, that you don't parse out all the different functionality in the primary reference.

[00:18:45] Speaker 04:
If it's obvious to adapt Whitman for use with a Tierney robot, it's obvious to use the shifter in Whitman.

[00:18:52] Speaker 04:
It's already there.

[00:18:53] Speaker 04:
What could be more obvious?

[00:18:55] Speaker 04:
In some sense,

[00:18:56] Speaker 04:
Optional features come along for free.

[00:18:59] Speaker 04:
If it's obvious to convert a car from diesel to gasoline or gasoline to electric, and that car, prior car, has a radio in it, well, it would have been obvious to keep the radio.

[00:19:13] Speaker 04:
You don't need to show, well, it's because it's disclosed.

[00:19:17] Speaker 06:
Now, you argued that you told the board that

[00:19:24] Speaker 06:
Whitman and Tierney individually displayed more than four functions.

[00:19:29] Speaker 06:
In other words, they each displayed more than four functions.

[00:19:34] Speaker 06:
And you cite a bunch of stuff in your blue brief, but none of those appendix sites, I think, support what you're saying.

[00:19:41] Speaker 06:
All they suggest is that collectively there were more than four functions.

[00:19:47] Speaker 06:
But it doesn't say that either one used more than four functions.

[00:19:54] Speaker 04:
I'm sorry, I must have misspoke.

[00:19:56] Speaker 04:
I said that's correct too quickly.

[00:19:58] Speaker 04:
So let me be clear what our position is.

[00:20:00] Speaker 04:
Tierney shows four functions.

[00:20:03] Speaker 04:
Whitman shows four functions.

[00:20:05] Speaker 04:
They are a different set of four functions.

[00:20:07] Speaker 04:
That's what we've argued.

[00:20:08] Speaker 04:
We said was when you combine Whitman and Tierney, you would want the combined benefit of all those functions.

[00:20:15] Speaker 06:
And so the key is... But nothing in the prior art ever operated with more than four functions, right?

[00:20:22] Speaker 06:
Even if they had different functions.

[00:20:25] Speaker 04:
No, no, that's incorrect, Your Honor.

[00:20:26] Speaker 04:
The basic surgical stapler would have, with a single axis articulation, is four functions.

[00:20:34] Speaker 04:
A basic surgical stapler with dual axis articulation has five functions.

[00:20:40] Speaker 07:
The dual axis articulation.

[00:20:42] Speaker 07:
Mr. Katz, is an example of that in the record, the TEM reference?

[00:20:48] Speaker 04:
Exactly.

[00:20:48] Speaker 04:
The TEM application, which is prior art,

[00:20:51] Speaker 04:
which we used to combine for claim 11 is a dual axis stapler that has the five functions.

[00:20:58] Speaker 04:
So the PAR definitely shows that, but we're also saying that one of skill in the art, seeing that tyranny discloses dual axis articulation, would like to keep that in the combination.

[00:21:12] Speaker 04:
And therefore it's totally appropriate to say you have five functions, the four of Whitman plus the dual axis articulation.

[00:21:20] Speaker 04:
that Tierney teaches.

[00:21:22] Speaker 04:
Now, if there's one more question on that, I want to show that even if this core doesn't say it.

[00:21:29] Speaker 02:
Isn't that the assuming that we disagreed with you on isolating out the shifter as part of the analysis?

[00:21:39] Speaker 02:
No, I took it to be your argument that because there were five functions, that would be a need to use the shifter.

[00:21:46] Speaker 02:
And therefore, there would be a reason to include the shifter.

[00:21:49] Speaker 02:
Is that correct?

[00:21:50] Speaker 02:
That is correct, Your Honor.

[00:21:51] Speaker 02:
So it turns on the existence in the prior RFI motion.

[00:21:56] Speaker 02:
And so you'd argue that the board just committed a clear error when they said there's no known system more than four functions.

[00:22:08] Speaker 04:
Correct, Your Honor.

[00:22:09] Speaker 06:
So where did you say that in your petition exactly?

[00:22:12] Speaker 06:
I'm trying to figure that out.

[00:22:14] Speaker 04:
Okay, so in our petition, what we said is you could have more than four functions, and you could want the Tierney functions as well.

[00:22:23] Speaker 04:
And so, in our petition, we discussed the dual access of Tierney at, let me find that citation.

[00:22:35] Speaker 04:
That's important.

[00:22:35] Speaker 04:
Appendix 3.

[00:22:37] Speaker 04:
Yeah, sorry, Appendix, right, so Appendix 309.

[00:22:44] Speaker 04:
309.

[00:22:45] Speaker 04:
309.

[00:22:51] Speaker 04:
There is a discussion of Tierney having dual access capability.

[00:23:00] Speaker 04:
I'm looking at 309.

[00:23:01] Speaker 04:
So if you look towards the bottom of that first paragraph, it describes

[00:23:08] Speaker 04:
and this is showing that meets the element surgical end effector configured to selectively perform at least two actions.

[00:23:15] Speaker 04:
And it says, it shows articulation of the wrist about a first and second axes, A1 and A2, as well as into actuation of the two element end effector.

[00:23:27] Speaker 02:
And then on the next page... This is on A309.

[00:23:32] Speaker 04:
Appendix 309, correct, Your Honor.

[00:23:35] Speaker 04:
309.

[00:23:35] Speaker 04:
Towards the bottom of the paragraph, it mentions that

[00:23:39] Speaker 04:
that Tierney provides two-axis articulation.

[00:23:43] Speaker 02:
About a first and a second articulation with about a first and a second axis, is that what you're talking about?

[00:23:53] Speaker 02:
Yes.

[00:23:53] Speaker 04:
Yes, Your Honor.

[00:23:55] Speaker 04:
And then if you turn the page on 310, it shows a picture, and it points out that for our mapping, action one is articulation

[00:24:07] Speaker 04:
of an end effector about axis A1, and action two is movement about axis A2.

[00:24:17] Speaker 04:
And so it's showing the articulation over two axes.

[00:24:21] Speaker 02:
And how does that equate to the five functions?

[00:24:25] Speaker 04:
Oh, because when you're combining Whitman with tyranny, Whitman has four, but only single axis articulation, but we're already mapping

[00:24:35] Speaker 04:
tyranny, showing that tyranny has two-axis articulation.

[00:24:38] Speaker 04:
And so when you combine them, you get the five functions.

[00:24:43] Speaker 02:
Do you need to have said that much literally in the petition?

[00:24:48] Speaker 02:
I don't see that explanation.

[00:24:54] Speaker 04:
Your Honor, we don't say that.

[00:24:55] Speaker 04:
What we say is you could have more than four functions, possibly up to six to eight.

[00:25:01] Speaker 04:
We discuss that in the petition.

[00:25:03] Speaker 04:
We don't use the words, oh, by the way, once you combine Tierney's two functions with Whitman's four functions, you get five or six functions.

[00:25:15] Speaker 04:
That statement is not there, but we think the import, the fact that we're combining Tierney with Whitman, and we're clearly relying on Tierney for two-axis articulation, which is something Whitman doesn't have, that when you combine it with Whitman, you would carry that function over.

[00:25:32] Speaker 04:
So, and we had other motivations as well that the board just kind of disregarded.

[00:25:38] Speaker 04:
The most significant probably being the fact that you could control one.

[00:25:42] Speaker 02:
They're basically arguing that in order to combine Tierney with Whitman, you need a shifter.

[00:25:49] Speaker 04:
No, actually we're not.

[00:25:50] Speaker 04:
We're saying in order to combine Whitman with Tierney and get the benefit of Tierney's second axis, you need a shifter.

[00:25:57] Speaker 04:
Or if you want to combine Whitman and Tierney and get the benefit of reducing the number of drives so you simplify the robot, you would need a shifter.

[00:26:06] Speaker 02:
And what we all say... That's what I mean.

[00:26:07] Speaker 02:
What I mean is you're saying in order to get the full use of a combination of the two, you need a shifter.

[00:26:15] Speaker 04:
Yeah.

[00:26:15] Speaker 04:
Well, I want to be careful, Your Honor.

[00:26:17] Speaker 04:
I think you're right.

[00:26:18] Speaker 04:
We do believe that.

[00:26:20] Speaker 04:
But there are... But it would have been obvious to do less than full uses as well.

[00:26:24] Speaker 04:
But our point is

[00:26:25] Speaker 04:
There are many ways to make a combination to be obvious, and you don't just pick, you know, the least, you know, the least troublesome path, so to speak.

[00:26:34] Speaker 04:
You know, both Whitman with a shifter is obvious, Whitman without a shifter is obvious.

[00:26:38] Speaker 04:
They're both equally obvious.

[00:26:40] Speaker 04:
The idea that the shifter somehow, it wouldn't have been obvious to keep the shifter when it's sitting in Whitman is what we say is where the board had legal error.

[00:26:51] Speaker 06:
Okay, Mr. Cass, we need to hear from Mr. Ferguson.

[00:26:53] Speaker 04:
Thank you.

[00:26:56] Speaker 01:
Thank you, your honor.

[00:26:59] Speaker 01:
Three points.

[00:27:00] Speaker 01:
First, on robotics system, and this is on Epicon's appeal, we believe the statement at column 26, lines 37 to 40 is definitional.

[00:27:11] Speaker 01:
If it's not, certainly the specification only describes one robotics system, which is consistent with that statement.

[00:27:20] Speaker 01:
Intuitives Council stated that our expert, Dr. Cimino, conceded that our construction was wrong.

[00:27:27] Speaker 01:
That's just not true.

[00:27:28] Speaker 01:
At Appendix 2158, you can read his testimony.

[00:27:33] Speaker 01:
He's asked a question about a totally hypothetical scenario.

[00:27:38] Speaker 01:
There is no evidence in the record of that hypothetical robotic arm ever being actually in the prior art.

[00:27:47] Speaker 01:
So that is not a concession.

[00:27:49] Speaker 01:
On tool mounting portion, I'll point to column 34 at lines 50 to 55 as another example.

[00:27:59] Speaker 01:
This states that the tool embodiment describes an interface arrangement that's particularly well suited for mounting the robotically controllable medical tool onto at least one form of robotic arm.

[00:28:15] Speaker 01:
That's the tool mounting portion.

[00:28:16] Speaker 01:
It's mounted to the robotic arm.

[00:28:21] Speaker 01:
Turning to intuitive's appeal, there needed to be evidence that a PACITA would have combined Whitman and Tierney and kept Whitman's shifter mechanism and making the combination.

[00:28:34] Speaker 01:
And the board made factual findings that the evidence supporting that combination was lacking.

[00:28:41] Speaker 01:
The evidence showed that even if there was a general motivation to combine Whitman and Tierney, they would not have included the shifter mechanism in that combination.

[00:28:50] Speaker 01:
because it would have been unnecessary.

[00:28:52] Speaker 01:
The board made factual findings on this.

[00:28:55] Speaker 01:
Appendix 3403 to 3408 is the testimony of our expert.

[00:29:01] Speaker 01:
Appendix 3460 to 61 is their expert's concession that the shifter is not necessary in Whitman.

[00:29:09] Speaker 01:
It's an optional embodiment.

[00:29:11] Speaker 01:
And Appendix 3474 to 75 intuitive expert agreeing that there are only four functions

[00:29:19] Speaker 01:
set forth in Whitman and in Tierney.

[00:29:24] Speaker 01:
The portion of the petition that Mr. Katz cited at Appendix 309 to 310, that does not support the argument that there are more than four functions.

[00:29:35] Speaker 01:
In fact, it shows instead the petition at Page 310, Figure 6, that shows four drive elements that are labeled there and pointed to.

[00:29:48] Speaker 01:
This was a situation where if the art was combined, you would end up with four drive elements driving the four driven elements in Whitman.

[00:30:03] Speaker 01:
There was no need for a shifter.

[00:30:04] Speaker 01:
The board specifically found that Appendix 24 and Appendix 29.

[00:30:08] Speaker 07:
Mr. Stoll, I just want to ask you a quick question.

[00:30:14] Speaker 07:
The board said that there was no prior art that had five functions.

[00:30:20] Speaker 07:
Do you agree with that?

[00:30:22] Speaker 07:
I mean, I'm looking at 10, and I'm not sure that's correct.

[00:30:25] Speaker 07:
What's your response?

[00:30:27] Speaker 01:
My response, Your Honor, is that intuitive never pointed the board to specifically any prior art that does have more than four functions.

[00:30:40] Speaker 07:
It's been obvious to modify these two references in order to have more than four functions.

[00:30:45] Speaker 07:
In order to have the shifter, you would want to have, you'd include the shifter in order to have more than four functions.

[00:30:52] Speaker 07:
I know that they knew that they had to say that additional point that there is priority that has more than four functions, given the existence of TIM and statements in the specification.

[00:31:04] Speaker 01:
Well, the board, I believe, Your Honor, made factual findings to that extent.

[00:31:10] Speaker 01:
That was intuitive's argument.

[00:31:11] Speaker 01:
It should have been made clear in the petition, and it was not.

[00:31:14] Speaker 01:
And as we pointed out in our yellow brief at pages 33 to 39, intuitive made numerous new arguments on appeal that it never presented before the board.

[00:31:28] Speaker 01:
I believe I'm out of time unless the panel has any other questions.

[00:31:34] Speaker 06:
Any questions?

[00:31:36] Speaker 01:
No.

[00:31:37] Speaker 06:
I guess not.

[00:31:39] Speaker 06:
So we'll go back to Mr. Katz.

[00:31:43] Speaker 04:
Thank you, Your Honor.

[00:31:46] Speaker 04:
So the board's statement that we provided no motivation is not supported by substantial evidence, because there is no evidence establishing that fact.

[00:32:01] Speaker 04:
We pointed out lots of bases, and we talked about the Kearney one

[00:32:08] Speaker 04:
but one I think that I believe just should be dispositive.

[00:32:12] Speaker 04:
We pointed out that one of the benefits of a shifter is that you can control one function at a time.

[00:32:20] Speaker 04:
And you're going to basically make sure you don't control two functions simultaneously, so you don't articulate in a fire at the same time.

[00:32:27] Speaker 04:
This was in Dr. Nodell's expert declaration, and I'll direct your attention to appendix 1378.

[00:32:36] Speaker 04:
where Dr. Nodell states that.

[00:32:38] Speaker 04:
And now they say, well, this wasn't quoted in the petition.

[00:32:42] Speaker 04:
Well, it wasn't quoted, but certainly paragraph 54 of Dr. Nodell's declaration, which is what I'm pointing you to, was cited in the petition for support.

[00:32:54] Speaker 04:
And if I may just finish that one thought.

[00:32:56] Speaker 06:
Yes, you may.

[00:32:57] Speaker 04:
And in fact, far from bearing this, we brought this up at oral argument.

[00:33:01] Speaker 04:
At appendix 246 to 247, I read portions of this into the record.

[00:33:06] Speaker 04:
And the board didn't deal with it.

[00:33:08] Speaker 04:
And so they ignored a clear benefit of keeping the shifter.

[00:33:14] Speaker 06:
And that alone, we believe, warrants reversal.

[00:33:17] Speaker 06:
What appendix 246 and 247?

[00:33:19] Speaker 06:
Is that what you said?

[00:33:20] Speaker 04:
Appendix 246 and 247 is the oral argument.

[00:33:23] Speaker 04:
Appendix 1378 is the declaration.

[00:33:30] Speaker 06:
OK.

[00:33:31] Speaker 06:
Anything else from the other judges?

[00:33:35] Speaker 06:
No, thank you.

[00:33:37] Speaker 06:
Okay.

[00:33:38] Speaker 06:
Thank you, Counsel.

[00:33:39] Speaker 06:
The case will be submitted.

[00:33:41] Speaker 04:
Thank you very much, Your Honors.