[00:00:00] Speaker 02:
Okay, the last case before the court this morning is case number 20-1600, Ethicon LLC versus Intuitive Surgical Inc.

[00:00:10] Speaker 02:
Mr. Pepe has reserved five minutes for rebuttal.

[00:00:14] Speaker 02:
Counsel, you may proceed when you're ready.

[00:00:17] Speaker 04:
Thank you, Your Honors.

[00:00:18] Speaker 04:
Good morning and may it please the court.

[00:00:20] Speaker 04:
I'm going to begin with the board's decision with respect to the issue claims of the 658 patent.

[00:00:27] Speaker 04:
The specification draws a clear distinction

[00:00:30] Speaker 04:
between a stapling system that has the claimed rotary drive member and a stapling system that includes only linear drive members, such as the stapler that's disclosed in the whale's prior art reference.

[00:00:43] Speaker 04:
The board's final written decision included a construction of the rotary drive member limitations that was unreasonably broad in light of the specification because it encompassed instruments that include only linear drive members, such as whales.

[00:00:59] Speaker 04:
Despite this being a critical issue to the patentability of the claims at issue, the board's analysis consisted of only a single paragraph.

[00:01:06] Speaker 04:
The board didn't analyze the specification and also didn't address whether its construction was reasonable in view of the additional limitations of dependent claims 4, 9, and 12.

[00:01:19] Speaker 04:
And the result was an overly broad construction that encompasses any component that rotates to drive another component.

[00:01:27] Speaker 04:
Now, as a threshold issue, I'd like to address intuitive's argument that claim construction argument is mute because the board purportedly adopted and applied Ethicon's construction in the final written decision.

[00:01:38] Speaker 04:
The full review of the record clearly shows that that's not what the board did.

[00:01:44] Speaker 04:
Now, although the board stated in its final decision of Appendix 18 that it was applying patent owner's construction, in the very same sentence, the board indicated that Ethicon's construction

[00:01:55] Speaker 04:
only requires that the rotary drive member must itself rotate to drive another component.

[00:02:01] Speaker 04:
But that wasn't the construction that Ethicon proposed.

[00:02:05] Speaker 04:
Ethicon proposed construing rotary drive member as a component that rotates to drive another component in response to actuation of the stapling system.

[00:02:14] Speaker 04:
In contrast, it was intuitive that proposed construing the term to mean just any component that rotates to drive another component.

[00:02:24] Speaker 04:
which is the construction that the board actually adopted in its claim construction seven section.

[00:02:31] Speaker 02:
Did the board, I mean, what the board I thought did was say we're not gonna limit what is otherwise broad claim language just because the specification doesn't specifically describe an embodiment that appears to be covered by that broad language.

[00:02:53] Speaker 02:
Isn't that right?

[00:02:55] Speaker 04:
Yes, Your Honor.

[00:02:56] Speaker 04:
The Board effectively, in our view, interpreted the claim language in the way it did because the specification in their view did not prescribe a broad or prescribe limiting the narrow language.

[00:03:12] Speaker 04:
That being said, the proper standard is not whether the specification prescribes the broadest possible construction, but whether it's the broadest reasonable interpretation in light of the specification.

[00:03:24] Speaker 02:
So you're saying if there's really only one embodiment disclosed that by definition the language can't go beyond that?

[00:03:31] Speaker 04:
No, Your Honor.

[00:03:31] Speaker 04:
That's not our position.

[00:03:32] Speaker 04:
Our position is that the specification consistently describes what a rotary drive member is in the context of the 658 patent.

[00:03:43] Speaker 04:
And the board's construction clearly went beyond that.

[00:03:46] Speaker 04:
And the board didn't address any of that

[00:03:50] Speaker 04:
text in the specification in rendering its final decision and construing the term.

[00:03:56] Speaker 04:
And the board acknowledged in its decision that it didn't discern a difference between the constructions that the parties had proposed.

[00:04:05] Speaker 04:
But there was a substantial difference which affected the patentability of the claims with respect to the Wales reference.

[00:04:12] Speaker 01:
Ethicon explicitly... This is Judge Soule.

[00:04:16] Speaker 01:
So did your claim construction at this point

[00:04:20] Speaker 01:
include the idea that the construction must exclude a trigger or something that's integral with the trigger from the rotary drive?

[00:04:35] Speaker 04:
Yes, Your Honor.

[00:04:37] Speaker 04:
Our construction is that the rotary drive cannot be the component that the user actuates when initiating the stapling system.

[00:04:47] Speaker 04:
In certain cases, that can be a trigger.

[00:04:50] Speaker 04:
There's a clear distinction in the specification between the rotary drive number and the component that actuates the system.

[00:04:57] Speaker 01:
And the specification... Is that... We have a number of cases that talk about negative limitations.

[00:05:03] Speaker 01:
That's where you're saying not just what a claim construction... What a claim limitation requires, but also what it can't be.

[00:05:14] Speaker 01:
And so it seems to me that you're trying to read in a negative limitation.

[00:05:19] Speaker 01:
into this claim construction.

[00:05:22] Speaker 01:
And my question is, you know, do you know what the standard is for reading in a negative limitation into a claim construction?

[00:05:31] Speaker 04:
Yes, Your Honor.

[00:05:32] Speaker 04:
We understand that's a very high burden.

[00:05:34] Speaker 04:
We don't believe that's what our construction is here.

[00:05:36] Speaker 04:
Our construction is simply that the component that actuates the stapling system is a separate component from the rotary drive member.

[00:05:45] Speaker 04:
We don't believe that's imparting a negative limitation into the claims.

[00:05:49] Speaker 04:
It's simply making explicit that the rotary drive member is not the component that actuates or is used to actuate the stapling system.

[00:05:59] Speaker 01:
It's hard because you said earlier in response to my question that what your construction was was that the rotary drive could not be the trigger or the component for actuation or even part of it, which does sound like a negative limitation.

[00:06:17] Speaker 04:
We don't believe that's a negative limitation, Your Honor.

[00:06:20] Speaker 04:
Certainly any construction... Why not?

[00:06:24] Speaker 01:
What is the difference between when something's a negative limitation and when it's not?

[00:06:28] Speaker 04:
Well, any construction would likely include certain components and exclude certain components, depending on the construction and the definition.

[00:06:35] Speaker 04:
The fact here that the component that is being actuated is not the rotary drive member does not mean that it's a negative limitation.

[00:06:44] Speaker 04:
It just means it doesn't fall within the definition of that term.

[00:06:48] Speaker 04:
And we think that's a reasonable construction in light of the specification here.

[00:06:54] Speaker 04:
For example, in column 1123, line 23 to 51, the specification describes an exemplary system where the rotary drive shaft, which is a rotary drive member, is a component that rotates in response to actuating the system.

[00:07:13] Speaker 04:
In contrast, the system that's disclosed in Wales,

[00:07:19] Speaker 04:
When the system is actuated, it results in linear translation of other drive components.

[00:07:26] Speaker 04:
So there's a clear description in the specification distinguishing between systems that have rotary drive members that rotate in response to actuating the system and systems that only have linear drive components, such as what's disclosed in the Wales reference.

[00:07:44] Speaker 02:
Do you want to move on to your proposed amended claims?

[00:07:50] Speaker 04:
Yes, I can do that, Your Honor.

[00:07:52] Speaker 04:
I think there was a clear error by the board with respect to the proposed substitute claims.

[00:07:57] Speaker 04:
In particular, the board failed to adhere to the standards set forth in Duncan.

[00:08:02] Speaker 04:
Under Duncan, the board was required to determine what portions of the Shelf and One prior art reference were allegedly conceived by another, and then compare those portions with a reference to what intuitive had relied on for its anticipation argument.

[00:08:19] Speaker 04:
Now, although the board concluded that individuals other than Mr. Shelton made inventive contributions to Shelton 1 reflected in paragraphs 59 to 65, the board failed to conduct the other part of the required analysis, which was to assess whether intuitive it actually relied on those portions of Shelton 1.

[00:08:42] Speaker 02:
Do you think that the board was confused between Shelton 1 and Shelton 2?

[00:08:50] Speaker 04:
I don't believe the board was confused between the references, Your Honor.

[00:08:55] Speaker 04:
Shelton, too, Ethicon had successfully explained why that did not anticipate the claims.

[00:09:05] Speaker 04:
Our understanding of their decision is that they were confused as to what the analysis should be with respect to Duncan, and they determined that once they assessed that the other inventors had identified

[00:09:20] Speaker 04:
Any portion of Shelton 1 that was used in intuitive analysis, that would apply to all the claims.

[00:09:27] Speaker 04:
But the standard should have been that the board assess that on a claim-by-claim basis.

[00:09:32] Speaker 04:
And it is clear from intuitive briefing on this issue that they never relied on paragraphs 59 through 65 in its anticipation argument for claims 20 and 21.

[00:09:44] Speaker 02:
If we agreed with you, what

[00:09:49] Speaker 02:
I mean, is that a situation where we'd have to say, you know, we'd have to vacate and remand with instruction to allow the amendment, or is there something more that the board would be permitted to do in its assessment of the proposed amendment that we would just have to leave open on remand?

[00:10:14] Speaker 04:
Well, we believe the proper course would be for the court to reverse the anticipation binding of claims 20 and 21 with respect to Shelton 1.

[00:10:23] Speaker 04:
However, remand would be required because there were, I believe, one or two other combinations with respect to claims 20 and 21 that the board did not consider in its final written decision.

[00:10:35] Speaker 04:
So ultimately... I have a quick question.

[00:10:40] Speaker 01:
Go ahead.

[00:10:41] Speaker 01:
Why is it that...

[00:10:43] Speaker 01:
that we would remand, why wouldn't the board be able to look at this anticipation issue again, you know, understanding that it previously was looking at the wrong portions of Shelton that were being relied on for anticipation, Shelton one that is.

[00:11:01] Speaker 01:
Why wouldn't that, why doesn't that present a factual issue that we shouldn't be deciding in the first instance that the board must look at on remand?

[00:11:11] Speaker 04:
I think as we explained in that... I believe in our blue brief and gray brief that there really is no evidence that could support that.

[00:11:18] Speaker 04:
However, you know, the only conclusion that could be drawn from the evidence that was put in is that Shelton 1 can't anticipate because those were not... The board already made the necessary factual findings.

[00:11:32] Speaker 03:
Mr. Clevenger, I'm looking at the board's decision that...

[00:11:40] Speaker 03:
Appendix 34, where they say that the petitioner relies directly and expressly on content appearing in 50 paragraphs 57 to 66 of Shelton 1, and that that matches the very content specifically identified by Shelton as the other invaders were.

[00:12:04] Speaker 03:
Are you saying that finding there is clearly erroneous?

[00:12:10] Speaker 04:
Yes, Your Honor, that finding is erroneous because the board did not assess each claim individually.

[00:12:21] Speaker 03:
The sentence, if the sentence is true, they are saying that the petitioner is relying on content in 5766, and that matches to, for anticipation, and then that matches up to the work that was done by the others.

[00:12:44] Speaker 04:
So, Your Honor, while 57 through 66 may have been relied on with respect to claims other than 20 and 21, it's clear from the record that paragraphs 59 through 65 were not relied on for claims 20 and 21.

[00:13:05] Speaker 04:
And the error in the board's analysis was that they just lumped in all the claims together without assessing them on a claim by claim basis.

[00:13:14] Speaker 03:
Well, at Appendix 7-12, you see them relying on Shelton 1, paragraph 57, with regard to Claim 20.

[00:13:32] Speaker 03:
So I don't know how you can say this.

[00:13:35] Speaker 03:
That's totally, clearly erroneous.

[00:13:37] Speaker 03:
Claim 20, if you look at page A7-24,

[00:13:43] Speaker 03:
The explanation for the anticipating art on 20 is references back to claim 15.

[00:13:51] Speaker 03:
And we look at claim 15 on page 712, and it shows Shelton 1, paragraph 57, figure 7.

[00:14:01] Speaker 03:
So at least I think the board got it right with regard to that reference.

[00:14:08] Speaker 04:
Yes, Your Honor.

[00:14:09] Speaker 04:
The issue is on Appendix 34.

[00:14:12] Speaker 03:
Would you agree with that, what I've just said?

[00:14:16] Speaker 04:
Yes, Your Honor.

[00:14:17] Speaker 04:
We would agree that the board or intuitive relied on Paragraph 57.

[00:14:21] Speaker 03:
However, on page 34 of its decision... Four claim 20, correct?

[00:14:29] Speaker 04:
Yes.

[00:14:30] Speaker 03:
Okay.

[00:14:31] Speaker 04:
However, I would just point out that in page 34 of its decision, the board only indicated

[00:14:38] Speaker 04:
that Mr. Morgan and Mr. Auerkirk contributed to paragraphs 59 through 65.

[00:14:45] Speaker 04:
So the fact that intuitive relied on paragraph 57.

[00:14:51] Speaker 04:
I'm sorry, Your Honor.

[00:14:57] Speaker 03:
Help me out with the last sentence you said where the Morgan and their contributions were at 59.

[00:15:03] Speaker 04:
59 through 65, that's at appendix 34.

[00:15:11] Speaker 03:
So... I'm looking on 34.

[00:15:15] Speaker 04:
Okay.

[00:15:17] Speaker 04:
And so it's the beginning of the second paragraph.

[00:15:25] Speaker 04:
Okay.

[00:15:26] Speaker 04:
I'm fine.

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

[00:15:28] Speaker 04:
So ultimately, whether paragraph 67 was relied on doesn't demonstrate that Shelton 1 would be by another.

[00:15:36] Speaker 02:
Okay.

[00:15:37] Speaker 02:
We'll give you two minutes for rebuttal since we used it all up.

[00:15:42] Speaker 02:
Ms.

[00:15:43] Speaker 02:
Fiorella?

[00:15:45] Speaker 00:
Yes, good morning, Your Honors.

[00:15:47] Speaker 00:
May it please the court, Natika Fiorella on behalf of the Appellee Intuitives.

[00:15:51] Speaker 00:
Your Honors, I'd like to start with whether the board's finding that Wales anticipates the Rotary Drive member limitation is actually, as my colleague suggests.

[00:16:03] Speaker 03:
Ms.

[00:16:03] Speaker 03:
Fiorella, before you do that, so we don't start a train of thought, on the substantive claims, can you go back and show us precisely where

[00:16:13] Speaker 03:
your client was satisfying its burden to point out specifically the portions of Shelton 1 where there had been contribution by Morgan and Ornick, then you're claiming that there were anticipation of those sections?

[00:16:34] Speaker 00:
Certainly, Your Honor.

[00:16:35] Speaker 00:
So if I could invite the court's attention to Appendix 719,

[00:16:42] Speaker 00:
Really, the spanning 716 through 719, this is where we are mapping Shelton 1 or the 957 application to Claim 15, which is fully referenced and incorporated into our Claim 20 analysis.

[00:16:58] Speaker 00:
And throughout, you can see that we do rely on... Which page is he talking about, ma'am?

[00:17:05] Speaker 00:
So, if we start with Appendix 714,

[00:17:13] Speaker 00:
We have in the middle of the box, we say Shelton 1's housing includes a rotary drive shaft, e.g.

[00:17:21] Speaker 00:
drive shaft 48.

[00:17:23] Speaker 00:
We cite paragraph 54 and we cite figure 7.

[00:17:28] Speaker 00:
So this is one example of where we are mapping the 957 application, Shelton 1.

[00:17:33] Speaker 03:
54 doesn't match to the contribution of the others.

[00:17:40] Speaker 00:
It doesn't.

[00:17:42] Speaker 00:
Well, your honor, in our opinion, paragraph eight, yes.

[00:17:46] Speaker 03:
Isn't it irrelevant if it's a map to the other inventors?

[00:17:52] Speaker 00:
No, your honor.

[00:17:52] Speaker 00:
Our position is that Mr. Shelton may have identified just those paragraphs 59 through 66, but he did not say that there was no other contribution from the joint inventors to any other paragraph in Shelton one.

[00:18:07] Speaker 00:
And importantly,

[00:18:09] Speaker 00:
So I apologize, I have two responses to that.

[00:18:11] Speaker 00:
So first is, we shouldn't just be looking at 59 through 66.

[00:18:16] Speaker 02:
There- By the board never found, the board never found a contribution to any other paragraph?

[00:18:21] Speaker 02:
So are you saying the board erred?

[00:18:23] Speaker 00:
No, Your Honor.

[00:18:24] Speaker 00:
If we look at Appendix 35, what the board continues to say after focusing on the paragraph 57 through 66, is it says the content, and this is Appendix 35 at the top, the content of Shelton's figures seven through 10

[00:18:39] Speaker 00:
was relied upon considerably by petitioner in support of its theory of anticipation of the substitute claim.

[00:18:45] Speaker 00:
In our view, such circumstances reasonably suggest that the contributions of Morgan and Oerker were sufficiently significant when measured against the full anticipating disclosure.

[00:18:55] Speaker 00:
Figure seven is all over our mapping of claim 15, which is incorporated in for analysis of claim 20.

[00:19:03] Speaker 00:
Even Ethicon doesn't dispute that we certainly rely on figure seven very heavily.

[00:19:08] Speaker 00:
And Figure 7, which the board says is relied upon by us, reflects the contribution of these other two inventors.

[00:19:18] Speaker 00:
And how do we know that?

[00:19:19] Speaker 02:
So you're saying that if Figure 7 is relied upon for purposes of a 15, we should just assume that you meant it was also supposed to be relied upon for Claim 20.

[00:19:31] Speaker 00:
Well, actually, I don't think you need to make that assumption, Your Honor, because in our charge for Claim 20, we say go back to our analysis for Claim 15.

[00:19:39] Speaker 00:
So we fully incorporate our entire analysis for Claim 15 into Claim 20.

[00:19:44] Speaker 00:
We just didn't rewrite every limitation.

[00:19:46] Speaker 00:
So we don't need to make that assumption.

[00:19:48] Speaker 00:
And I don't believe my colleague on the other side is suggesting that we needed to rewrite everything for Claim 15 and Claim 20 in order to accurately show these anticipatory disclosures.

[00:19:59] Speaker 00:
So the questions really come down to just based on the board's finding that we relied on Figure 7, four key elements of these claims.

[00:20:10] Speaker 00:
Is that enough given that the only description in the Shelton 1 application of what Figure 7 shows is in paragraphs 59 through 66?

[00:20:20] Speaker 00:
Those are the exact same paragraphs that Mr. Shelton himself says were contributed to by the joint inventors.

[00:20:28] Speaker 00:
We have figure seven, no one's disputing that.

[00:20:31] Speaker 00:
And we know that where we describe, where the patent describes that figure is exactly the paragraph that Mr. Shelton said was contributed by others.

[00:20:39] Speaker 00:
But I'd also like just to make one more point, kind of stepping back.

[00:20:44] Speaker 00:
That's in one, many of the paragraphs and the ones that we rely upon to show, for example, the rotary drive shaft limitation, which is part of claim 20.

[00:20:56] Speaker 00:
It describes what that shaft does in maybe a different paragraph, like 54.

[00:21:02] Speaker 00:
But I could direct Your Honor's attention to where it incorporates that very same driveshaft, 48, which I pointed to that we mapped to the claim.

[00:21:11] Speaker 00:
And on page, appendix page 2719 in paragraph 54, it tells us what that rotary shaft does, that main rotational shaft does.

[00:21:24] Speaker 00:
And then in 55, it says we have this firing trigger.

[00:21:29] Speaker 00:
That firing trigger, when you actuate it, it moves the rotary main shaft, which we just described.

[00:21:36] Speaker 00:
And then when you get to paragraphs 59 through 66, which are, again, the very ones that Mr. Shelton himself says were contributed to by the other inventors, on paragraph 60, we see when you take that firing drive and you click it back,

[00:21:52] Speaker 00:
That causes the sensor to tell the motor, OK, now you should run.

[00:21:56] Speaker 00:
And when the motor runs, it rotates the same rotary drive shaft.

[00:22:01] Speaker 00:
So to us, Your Honor, what Epicon is proposing is an overly formalistic reputation that Duncan doesn't require.

[00:22:10] Speaker 00:
We certainly relied on the key areas of the 957 application in order to match the limitations.

[00:22:17] Speaker 00:
And Mr. Shelton himself said that the motor, I mean the title of

[00:22:21] Speaker 00:
the Shelton 1 application is motor-driven surgical cutting and fastening instruments, he himself said the motor is the area that the other two inventors contributed to.

[00:22:31] Speaker 02:
So we feel that all of this... But the board didn't cite figures 1 through 7 of Shelton, though, did they?

[00:22:38] Speaker 00:
The board cited figures 7 through 10 of Shelton, and we relied certainly on figure 7, which the board also pointed out.

[00:22:49] Speaker 00:
Figure seven, which is the actual embodiment that shows how the motor system works, there's no dispute that we cited for substitute claims 20 and 21.

[00:22:58] Speaker 01:
I just want to confirm.

[00:23:02] Speaker 01:
You did not, though, cite any of those paragraphs that are describing figure seven, right?

[00:23:09] Speaker 01:
I mean, just to make sure I understand, you did not identify paragraph 59 through 65, right?

[00:23:18] Speaker 00:
Yes, Your Honor is correct.

[00:23:19] Speaker 00:
We did not expressly cite those paragraphs in asking charts.

[00:23:23] Speaker 01:
Why not?

[00:23:24] Speaker 01:
I mean, it seems a little like post-hocs, you know, argument now to be able to say, well, what we really meant was 59 to 65 because we cited figures one through seven.

[00:23:36] Speaker 00:
Your Honor, to be honest, we believe that the full nine by seven disclosure is very related.

[00:23:42] Speaker 00:
So we were just trying to really direct the board's attention to

[00:23:45] Speaker 00:
When we say rotary drive shaft, where is the first place that Shelton-1 tells us what the rotary drive shaft is?

[00:23:52] Speaker 00:
We just didn't say every time that the 957 application actually, you know, puts the rotary drive shaft into use, for example, in the motor-driven embodiment.

[00:24:04] Speaker 01:
And the reason is because, you know... I'm a little confused because you're emphasizing the importance of Figure 7 now, but you

[00:24:11] Speaker 01:
And you've said that their description of Figure 7 is only a paragraph 59 to 65, but you never actually cited those.

[00:24:21] Speaker 00:
Certainly, we cited Figure 7.

[00:24:23] Speaker 00:
We did not cite the paragraphs themselves that describe Figure 7.

[00:24:30] Speaker 00:
Certainly, we could have, but we thought that by showing the figure and mapping to the exact, you know, rotary dry shaft is 48, gear is 65, and so forth,

[00:24:40] Speaker 00:
we were providing enough information from which the board could see that we were relying on the motor-driven embodiment of Shelton 1, which Mr. Shelton himself said the other inventors contributed to.

[00:24:55] Speaker 00:
If I could, Your Honor, I just want to pull back a little bit from our focus on these paragraph numbers.

[00:25:02] Speaker 00:
Certainly, they are helpful because they are what Mr. Shelton said the joint inventors contributed to.

[00:25:08] Speaker 00:
But the board also found that Mr. Shelton's declaration was simply too vague to really say that these were the only contributions of the joint inventors.

[00:25:17] Speaker 00:
And why the joint inventors' contribution to the motor generally isn't enough to say that they were key people in the disclosure, the anticipatory disclosures that we relied on.

[00:25:29] Speaker 00:
So even just stepping back a moment, because it was Ethicon's burden of production, they needed to come forth with credible evidence to say,

[00:25:38] Speaker 00:
Look, here is what I invented.

[00:25:41] Speaker 00:
Here is how that maps to Shelton 1.

[00:25:43] Speaker 00:
Mr. Shelton didn't do that.

[00:25:45] Speaker 00:
He didn't walk through every single paragraph and say, I invented this.

[00:25:48] Speaker 00:
I invented that.

[00:25:49] Speaker 00:
He didn't.

[00:25:51] Speaker 00:
And that conclusory nature, I think, led the board to focus particularly on those paragraphs, which it was entitled to do.

[00:25:58] Speaker 00:
But that's not the only disclosure in Shelton 1.

[00:26:03] Speaker 00:
from which we can see that there is a anticipation argument for the substitute claims.

[00:26:10] Speaker 00:
So putting all of that aside though, Your Honors, even if we were to say that Mr. Shelton's declaration is enough, which obviously we disagree with, but if it were enough because, for example, the court were to find that we didn't rely on the exact paragraph numbers, Mr. Shelton's declaration still needs to be corroborated

[00:26:33] Speaker 02:
uh... because it is an inventive testimony and the board did go that extra step and make additional fact-finding that mr felton's declaration wasn't corroborated itself but what about what about the argument that that the board uh... in imposed a wrong or improper legal standard for corroboration because instead of uh... and they basically said that every breath he took had to be corroborated by somebody else uh... rather than than

[00:27:02] Speaker 02:
looking at the totality of everything that was presented.

[00:27:07] Speaker 00:
Your Honor, we disagree with that.

[00:27:08] Speaker 00:
We don't think that that's what the board did at all.

[00:27:10] Speaker 00:
The board looked at the only pieces of evidence that were provided to ICC by Ethicon to supposedly show corroboration.

[00:27:17] Speaker 00:
The one was a declaration from another inventor, Mr. Morgan, and the other was an attachment to Mr. Shelton's declaration of inventor disclosure statements.

[00:27:26] Speaker 00:
What the board did was look at all of those, and particularly important, it looked at them in light of the already vague declaration that the board found and made a factual finding that Mr. Shelton's declaration itself wasn't specific enough as to what his contributions were versus others.

[00:27:43] Speaker 00:
And then it looked, as it should have, to what Ethicon says purportedly corroborates the testimony, and simply found, again, with factual findings, that Mr. Morgan's declaration was again vague

[00:27:56] Speaker 00:
I mean, Mr. Morgan actually said he was involved in the decision and the conception of how to incorporate the motor into the design architecture.

[00:28:06] Speaker 00:
To the extent that is supposed to be such a non-inventive contribution to the Shelton 1 application, that was not in the declaration.

[00:28:16] Speaker 00:
So the board found that there was not enough information there for one to say Mr. Shelton himself

[00:28:23] Speaker 00:
came up with all of the important things that are relied upon by us in invalidating the substitute claims.

[00:28:30] Speaker 00:
But these other joint inventors, they just had to do with the motor.

[00:28:34] Speaker 00:
And that's not that important.

[00:28:37] Speaker 03:
Ms.

[00:28:37] Speaker 03:
Farrell, this is Judge Clevinger.

[00:28:39] Speaker 03:
If we were to reject your argument that Figure 7 serves to connect the dots, so to speak, to preserve your anticipation claim, then we wouldn't

[00:28:52] Speaker 03:
need to reach corroboration at all, correct?

[00:28:58] Speaker 03:
I'm sorry.

[00:29:01] Speaker 03:
If we were to read the record and say, well, we're sorry.

[00:29:06] Speaker 03:
We disagree with you.

[00:29:07] Speaker 03:
We don't think you sufficiently made your case that there is anticipation as to specific features of the invention.

[00:29:18] Speaker 03:
The contribution was by others to that part of the invention.

[00:29:23] Speaker 03:
You're using Figure 7 to connect up all those dots, correct?

[00:29:28] Speaker 00:
We are relying on Figure 7, yes.

[00:29:31] Speaker 03:
So if we rejected your Figure 7, I'm speaking figuratively, your connect the dots argument, then there's no longer any need to have a core operation, right?

[00:29:43] Speaker 00:
Your case.

[00:29:45] Speaker 00:
I disagree with that.

[00:29:48] Speaker 00:
So I disagree with that.

[00:29:50] Speaker 03:
What is there for us to analyze if we say that in your challenge, you failed to mount a sufficient challenge?

[00:30:01] Speaker 03:
You failed to point out anticipatory features of the patent that were invented by others?

[00:30:12] Speaker 00:
Well, Your Honor, what I would say is that the question here is whether or not

[00:30:18] Speaker 00:
Mr. Shelton was the sole inventor of the portions that we relied on.

[00:30:23] Speaker 00:
So if this court were to find that we did not rely on the specific paragraph that Mr. Shelton himself says were contributed to by the other joint inventors, all we're saying then, the only conclusion that you would draw from that is the Mr. Shelton's declaration says he is the sole inventor of what we relied on.

[00:30:44] Speaker 00:
But Mr. Shelton's declaration, because it's his own testimony, still needs to be corroborated in order for you to find that he is, in fact, the full inventor.

[00:30:52] Speaker 00:
So we believe you would still need to reach the corroboration issue, even if you find that his declaration where he says, I invented everything else, and therefore I'm the only inventor, is correct.

[00:31:08] Speaker 00:
Did I answer your question?

[00:31:11] Speaker 03:
I think I take your argument to be that if we were to decide that Mr. Shelton's statement was to be thrown out because it's not corroborated, then we're left with a situation which is all we have is a patent that has three names on it and presumptively the other two were joint inventors.

[00:31:31] Speaker 00:
Exactly, Your Honor.

[00:31:33] Speaker 00:
That is our argument.

[00:31:34] Speaker 01:
I have a quick question, Judge Stahl.

[00:31:39] Speaker 01:
There are several statements in the board's corroboration analysis that refer to the content of Shelton 1 on which the petitioner relied in order to establish anticipation.

[00:31:53] Speaker 01:
For example, on page JA36, it says, Mr. Morgan does not provide adequate explanation that such a limit is outside of, quote, the content of Shelton 1 on which petitioner relies for anticipation of the substitute claims.

[00:32:08] Speaker 01:
Now, here,

[00:32:09] Speaker 01:
If we think that the board was wrong in saying the content of Shelton 1 on which the petitioner relies, because the board said that the petitioner relied on certain paragraphs that it did not in fact rely on, doesn't that mean we have to send the corroboration analysis back to?

[00:32:30] Speaker 00:
No, Your Honor.

[00:32:31] Speaker 00:
And the reason is because we did rely, just to set the stage a little bit, we certainly did rely on all of the things that the Board says we relied on for the full scope of the substitute claims.

[00:32:42] Speaker 00:
When it got limited just to on appeal, when Ethicon only appealed substitute claims 20 and 21, that scope got a little bit narrowed.

[00:32:51] Speaker 00:
But what the corroboration analysis that the Board did is trying to figure out is how important

[00:32:57] Speaker 00:
were the contributions of these joint inventors to what they say, figuring out how to make the motor function in the housing unit.

[00:33:08] Speaker 00:
So in our opinion, the board didn't need to mash up on the corroboration aspect or really in the other aspects, but didn't need to specifically mash up, you know, for claim 20, I want to see exactly what paragraph you relied on and then see what Mr. Morgan says about it.

[00:33:23] Speaker 00:
And the reason is because Mr. Morgan himself, nor Mr. Shelton, neither of them provided that claim by claim analysis.

[00:33:29] Speaker 00:
So the board had our general and overall disclosures before it, and it had vague testimony from Shelton and Mr. Morgan saying, we did various things, but it never matched them to what the claims actually require.

[00:33:45] Speaker 00:
So we believe that you can, even if you find that

[00:33:49] Speaker 00:
The board didn't piece out exactly where we relied on what different references we certainly relied on portions of the nine five seven application that incorporated a motor.

[00:34:02] Speaker 00:
And if what Mr Morgan is saying is that he helped figure out how to use the motor the board is free to then as it did.

[00:34:09] Speaker 00:
say we needed more.

[00:34:10] Speaker 00:
We needed more from the patent owner in order to believe that these named inventors were presumed to have contributed to the invention actually had nothing to do with all of those paragraphs that you did cite, that we did cite.

[00:34:21] Speaker 02:
Okay, Council, we're way over your time.

[00:34:25] Speaker 02:
Thank you.

[00:34:26] Speaker 02:
Mr. Pepe, we'll actually restore your scroll rebuttal since we went so far over with Ms.

[00:34:32] Speaker 02:
Fiorella.

[00:34:34] Speaker 04:
Thank you, your honor.

[00:34:36] Speaker 04:
I will try to be brief.

[00:34:37] Speaker 04:
I just want to make a few points on rebuttal with respect to the proposed substitute claims.

[00:34:45] Speaker 04:
I think it's important for your honors to really understand what's in paragraphs 59 through 65 of Shelton 1 and how that relates to what Mr. Morgan and Mr. Powerkirk allegedly contributed to conceiving.

[00:35:00] Speaker 04:
And those paragraphs specifically describe the use of sensors.

[00:35:05] Speaker 04:
And Mr. Morgan was unequivocal in his declaration that his contribution was limited to incorporating censors.

[00:35:14] Speaker 04:
And the reason that intuitive did not specifically cite to paragraphs 59 through 65 in their opposition to the motion to amend is because the proposed substitute claims have nothing to do with censors.

[00:35:31] Speaker 04:
Now, the mere fact that Mr. Morgan and Mr. Auerkirch

[00:35:35] Speaker 04:
may have contributed to some small part of what appears in Figure 7.

[00:35:40] Speaker 04:
Even if that's true, that does not make them inventors of every single feature that appears in Figure 7.

[00:35:50] Speaker 04:
Figure 7 is discussed in detail in paragraphs 57 and 58, including the housing and the drive shafts.

[00:35:58] Speaker 04:
And there was no finding by the board that either Mr. Morgan or Mr. Auerkirch

[00:36:04] Speaker 04:
contributed to the conception of those aspects.

[00:36:08] Speaker 04:
And to the extent that the board would have made that finding, they needed to do a claim-by-claim analysis and determine which portions Mr. Morgan and Mr. Auerkirk contributed to, and then compare those to what intuitive had relied on.

[00:36:25] Speaker 04:
It's clear that the board didn't actually do that analysis.

[00:36:28] Speaker 04:
And therefore, their decision that Shelton One anticipated

[00:36:34] Speaker 04:
claims 20 and 21 has to be reversed here because they didn't assess that anything that those two individuals contributed were part of what intuitive that relied on for their anticipation analysis with respect to those claims.

[00:36:51] Speaker 04:
There's also a lot of discussion about how Mr. Morgan and Mr. Auerkirk contributed to the moders.

[00:36:58] Speaker 04:
But again, if your honors look at appendix 711 through 723,

[00:37:04] Speaker 04:
where intuitive identified the portions of Shelton 1 that it was relying on for anticipation.

[00:37:11] Speaker 04:
There's no reference or discussion of motors because the substitute claims 20 and 21 do not specifically require motors.

[00:37:20] Speaker 04:
And they didn't, I don't believe they relied on any motor specific aspects.

[00:37:25] Speaker 04:
So while a motor might be important to the disclosure of Shelton 1, it does not mean it's irrelevant anticipating

[00:37:32] Speaker 04:
disclosure with respect to the substitute claims 20 and 21.

[00:37:38] Speaker 04:
Your Honors, that's all I have.

[00:37:39] Speaker 04:
Are there any additional questions on that?

[00:37:43] Speaker 02:
No.

[00:37:43] Speaker 02:
Any more questions?

[00:37:47] Speaker 04:
No.

[00:37:47] Speaker 04:
Okay.

[00:37:48] Speaker 02:
Thank you.

[00:37:50] Speaker 04:
Thank you.

[00:37:51] Speaker 02:
Okay.

[00:37:51] Speaker 02:
The cases will be submitted.

[00:37:56] Speaker 03:
The Honorable Corey is adjourned until tomorrow morning at 10 a.m.