[00:00:00] Speaker 04:
argument next in number 20-1484 McCoy versus Heal Systems LLC, Mr. Catropia.

[00:00:09] Speaker 03:
Thank you, Your Honor, and may it please the Court.

[00:00:12] Speaker 03:
My name is Christopher Catropia, and I represent the appellant and inventor patent owner, James N. McCoy.

[00:00:18] Speaker 03:
The Board's decision on appeal to invalidate certain claims of the 779 patent should be reversed for four reasons.

[00:00:25] Speaker 03:
The first, the Board legally aired by expanding the FACETA definition

[00:00:29] Speaker 03:
to include access to and consultation with experts, creating harmful legal error throughout the board's anticipation and obviousness determinations.

[00:00:38] Speaker 03:
Second, the board legally erred by improperly using the 779 patent's own invention disclosure to invalidate itself.

[00:00:47] Speaker 03:
Third, the board lacked substantial evidence to find that Barnhart expressly disclosed the claimed reduce a pressure gradient in said tailpipe element

[00:00:56] Speaker 03:
when Barnhart discloses nothing about the pressure in its tellpipe.

[00:01:00] Speaker 03:
And fourth, the board erred in combining Gilbert with Barnhart to render the claims at issue obvious because A, the board failed to identify or cite a specific reason to combine, and B, Gilbert and Barnhart addressed diametrically opposed well operations and context.

[00:01:17] Speaker 03:
These independent legal errors improperly lowered the legal bar for determining invalidity and in turn mandate reversal

[00:01:25] Speaker 03:
of all of the board's findings of invalidity in this case.

[00:01:29] Speaker 04:
Turning to the first error, the board's erroneous adoption... On the first point that you have there and with respect to the anticipation finding, the board's definition of a POSA as being able to call on this expertise appears in this discussion of obviousness.

[00:01:49] Speaker 04:
I'm not clear

[00:01:52] Speaker 04:
in what respect the board relied on that expanded definition in the anticipation analysis?

[00:02:01] Speaker 03:
Your Honor, the board first explicitly relied on the FACETA definition at Appendix 27 when they were improperly using the 779 patent to teach what a ordinary skilled artist.

[00:02:14] Speaker 04:
I think I'm not making my question clear.

[00:02:16] Speaker 04:
I'm sorry.

[00:02:17] Speaker 04:
In terms of the analysis for anticipation, where is it?

[00:02:21] Speaker 04:
that the board relies specifically on some expert aspect of its POSA definition to reach the anticipation conclusion.

[00:02:34] Speaker 03:
So first, respectively, Your Honor, the only definition of OCDA when the court says what is this ordinary skilled artisan, it's one that accesses and consults with experts.

[00:02:44] Speaker 03:
So I would argue that that on 27 is an explicit usage of

[00:02:48] Speaker 03:
what we understand is the only interpretation of the board as to what a focita does, going to experts and accessing them.

[00:02:55] Speaker 03:
The second response I would have is that every citation to Hill's expert and the board's opinion is citation to an expert who throughout his expert declarations explicitly and quite frankly doubles down on the definition that when I'm talking about a person having ordinary skill in the art, that's a person who would access

[00:03:16] Speaker 03:
and consult with experts.

[00:03:18] Speaker 04:
I think you're not addressing my question specifically.

[00:03:21] Speaker 04:
What I'm asking you is where is the board's analysis of anticipation relying on what might be called additional expertise?

[00:03:33] Speaker 03:
In my response.

[00:03:34] Speaker 04:
Specifically with respect to what element of the anticipation analysis are they using that heightened definition?

[00:03:43] Speaker 04:
to reach a conclusion that, oh, yes, it's there because an expert would have told the poser that it's there.

[00:03:52] Speaker 03:
Your Honor, our argument would be that when they are, in their opinion, citing for reliance as substantial evidence heals experts' interpretation of, let's say, what Barnhart discloses in the pressure of the tailpipe, they are relying on expert testimony that is through the lens of a person having ordinary skill in the art

[00:04:13] Speaker 03:
that would be accessing and consulting with experts.

[00:04:16] Speaker 03:
So you're correct, Your Honor.

[00:04:17] Speaker 03:
They don't say explicitly.

[00:04:18] Speaker 03:
It's an expert that we're looking at here, except when they define what a person having ordinary skill in the art is later in the opinion.

[00:04:28] Speaker 04:
But when they're citing Hill's expert testimony, they are relying on... What finding a fact needs that additional ingredient to?

[00:04:39] Speaker 04:
To me, the findings I made with respect to anticipation are simple levels rather than a sophisticated level.

[00:04:50] Speaker 04:
Where do they need to draw on sophisticated expert testing to reach the conclusion about that?

[00:04:59] Speaker 03:
Well, Your Honor, I believe on both of the factual findings with regards to Barnhart's pressure in the tailpipe limitation

[00:05:06] Speaker 03:
And you're looking at, so we can start on that one, which starts on the appendix at page, let's say, 19 through 20.

[00:05:15] Speaker 03:
They are citing Barnhart's, I mean, HEAL's expert.

[00:05:19] Speaker 03:
So looking at the discussion on 19 where there's this discussion of, okay, Barnhart's tailpipe, the disclosure says nothing about pressure, but there's this pressure gradient, if it's a slippage dominated versus a,

[00:05:34] Speaker 03:
friction-dominated, and those citations there on 19 are citations to Hill's expert.

[00:05:42] Speaker 03:
And so that's reliance on Hill's expert who's looking at Barnhart through the lens of a faceta that's accessing and consulting with experts to try to interpret what Barnhart means.

[00:05:55] Speaker 03:
And so our argument, Your Honor, is that is a reliance on a faceta definition that's improper.

[00:06:02] Speaker 03:
And then if you go to the discussion of the

[00:06:05] Speaker 03:
the discussion of the requirement for the pump to induce flow up the tailpipe, and that's the discussion that starts on Appendix 23.

[00:06:13] Speaker 03:
This is where we believe, Your Honor, on Appendix 27, they say petitioner persuasively explains the manner in which a ordinary skilled artisan, and through the board's eyes, an ordinary skilled artisan is someone who has access to and consults with experts.

[00:06:31] Speaker 03:
That's how they would understand

[00:06:33] Speaker 03:
And then if you look at the citations there, on that page in particular, the citations to exhibit 1025 is a citation to Hill's expert who's looking at it through that improper lens.

[00:06:48] Speaker 04:
Did you argue that on the anticipation issues that any one of these findings required this high level of expertise?

[00:06:58] Speaker 03:
Your Honor, we argued that through the proper definition of the first data.

[00:07:02] Speaker 04:
No, no, answer my question.

[00:07:04] Speaker 04:
Did you argue that any of the anticipation opinion by the expert required and properly required that level of expertise?

[00:07:14] Speaker 03:
We did not explicitly argue that it would require it.

[00:07:18] Speaker 03:
Our argument is actually even under an expert interpretation, the law is basically a barrier to finding that Barnhart has these elements

[00:07:27] Speaker 03:
because the plain language of Barnhart doesn't talk about either of these elements.

[00:07:32] Speaker 03:
So our argument was actually the FACETA definition is improper.

[00:07:37] Speaker 03:
It raises the bar here and makes it very difficult to find these claims valid.

[00:07:42] Speaker 03:
But even if you accept their FACETA definition and you take a look at Barnhart, and that was our position below, basically, was that the FACETA definition... What is the problem with the definition of the FACETA in this case?

[00:07:55] Speaker 00:
It just seems to me that when the Supreme Court looked at a posita in KSR and said that a posita is also a thinking creature, that it's practical, it has practical sense.

[00:08:13] Speaker 00:
It's difficult for me to understand how one can even rise to be a posita with a college education and not ever consult experts in the field or

[00:08:24] Speaker 00:
read reports that are germane to the procedures field.

[00:08:31] Speaker 00:
Where in the statute does it prohibit, let's start here, where in the statute does it prohibit the definition that the PTAB arrived at?

[00:08:43] Speaker 03:
The statute talks about, so Section 103 talks about ordinary skill, and I think here it's those terms together.

[00:08:50] Speaker 03:
Judge Raina, we're not arguing that a posita never accesses an expert.

[00:08:55] Speaker 03:
What we're saying is improper.

[00:08:58] Speaker 00:
But that's what the definition here says.

[00:08:59] Speaker 00:
It says it can consult, or it does have access to.

[00:09:06] Speaker 00:
I don't see that the definition that was adopted has bound the board in any way.

[00:09:15] Speaker 00:
And then now I agree with what Judge Dyke is asking you.

[00:09:21] Speaker 00:
Where can you point at and say that here the board relied on expert opinion when the shit had just been a placida?

[00:09:32] Speaker 03:
So to the first point, Judge Raina, we contend there is a difference between what builds up the ordinary skill versus their definition of an expert, which means that

[00:09:44] Speaker 03:
The focita gets to see what the problem is and then can go ask an expert and say, okay, I'm looking at Barnhart.

[00:09:50] Speaker 03:
What should I be seeing here?

[00:09:52] Speaker 03:
Or should I combine Barnhart with Gilbert?

[00:09:54] Speaker 03:
And their expert even admitted that this would elevate the focita's ability to solve problems compared to lacking access to them.

[00:10:03] Speaker 03:
So it essentially allows you to backdoor in an expert to the focita because they get access to the focita.

[00:10:11] Speaker 03:
And that runs contrary to

[00:10:13] Speaker 00:
the hypothetical person having... Show me in this case where that backdooring occurred.

[00:10:22] Speaker 03:
We believe the backdooring occurred when Heal's expert, when talking about, and I'll take it as an example, and that is the Barnhart question of whether Barnhart discloses a pressure gradient differential in the tailpipe.

[00:10:36] Speaker 03:
And when you read Barnhart, Barnhart says nothing.

[00:10:40] Speaker 03:
about the pressure gradient in the tailpipe.

[00:10:43] Speaker 03:
There's no discussion in the actual text of Barnhart that there would be a reduction in that pressure gradient, nor is there a discussion that the flow in Barnhart would be slippage dominated.

[00:10:55] Speaker 03:
And so then you need to talk to an expert, like Hill's expert, who would say, I understand you don't see it there, but there are these two things called friction dominated and slippage dominated,

[00:11:06] Speaker 03:
And Hills expert even says, as the board quotes on Appendix 19 footnote 6, that most people just ignore the slippage dominated, but the court still finds, the court, the board still finds that it is slippage dominated possible and then finds that Barnhart anticipates.

[00:11:25] Speaker 03:
And so we think that is where this expertise

[00:11:29] Speaker 03:
Drew Hill's expert allows you to add a lot to Barnhart, what an expert would understand, Judge Raina, not a ordinary skilled artisan.

[00:11:39] Speaker 03:
And that's what generates these errors in the different findings by the court.

[00:11:46] Speaker 03:
I see my rebuttal time has gone off, and I'd like to reserve the rest for rebuttal.

[00:11:55] Speaker 04:
OK.

[00:11:55] Speaker 04:
How much time do you have left?

[00:11:59] Speaker 03:
Just under three and a half minutes, Your Honor.

[00:12:02] Speaker 04:
Okay.

[00:12:05] Speaker 04:
Thank you.

[00:12:06] Speaker 04:
Okay.

[00:12:10] Speaker 04:
We'll hear from Mr. Pivnik.

[00:12:15] Speaker 02:
Good morning, Your Honor, and may it please the court.

[00:12:18] Speaker 02:
Scott Pivnik on behalf of Heal Systems.

[00:12:23] Speaker 02:
I want to jump right into the FACITA issue, and first,

[00:12:29] Speaker 02:
My friend on the other side asserted that the board legally erred in its faceta definition.

[00:12:36] Speaker 02:
But I remind the court that the definition of faceta is reviewed for substantial, not legal, error.

[00:12:42] Speaker 02:
And there is substantial evidence to support the finding of a faceta.

[00:12:49] Speaker 02:
The dispute really focuses on whether the access to experts elevates a faceta to someone

[00:12:58] Speaker 02:
beyond a faceta and has expertise.

[00:13:02] Speaker 02:
The board looked at the testimony of HEAL's expert, Mr. Simpson, who testified that it is industry practice for engineers to consult with others on their team, an expert, and that doing so does not convert that person into an expert.

[00:13:25] Speaker 02:
Most importantly, Mr. Sutton, who is McCoy's expert, also admitted during his deposition that he routinely talks with engineers, that his discussions with those engineers do not convert those individuals to experts.

[00:13:42] Speaker 02:
So the board, in assessing the evidence and Mr. Sutton's admissions, found that a faceta who has access to experts does not become an expert themselves.

[00:13:54] Speaker 02:
They are simply

[00:13:55] Speaker 02:
a faceta and nothing more.

[00:13:59] Speaker 02:
The board assessed Mr. Sutton's opinions and found them to be wholly unsupported by any citation to objective evidence and relied heavily on his admission that it would not convert them to experts.

[00:14:13] Speaker 01:
This is Judge Toronto.

[00:14:17] Speaker 01:
I'm I guess interested in how this notion

[00:14:23] Speaker 01:
is properly cabined.

[00:14:27] Speaker 01:
Would it always be the case that a person of ordinary skill in the art, just as we assume that person knows all the prior art, also has access to at least quick consultations with experts?

[00:14:45] Speaker 01:
And if that's the case, what's left of this

[00:14:48] Speaker 01:
notion of an ordinary skilled artisan?

[00:14:51] Speaker 01:
Or is it industry specific so that if the relevant industry is one in which the ordinary artisan works in the same lab with or on the same field as experts and the consultation is a regular part of ordinary artisan's problem solving, then in that context, expert knowledge can be built into what the skilled artisan has.

[00:15:18] Speaker 02:
And so the answer to that is it's industry specific.

[00:15:21] Speaker 02:
There was extensive testimony by Mr. Simpson and by Mr. Sutton that this type of consultation regularly happens in this industry.

[00:15:31] Speaker 04:
And because of that... The problem, though, is when you say this type of consultation, I'm not sure that the record shows what type of consultation we're talking about.

[00:15:41] Speaker 04:
For example, in this business, there's seismic readings that have to be read.

[00:15:48] Speaker 04:
and that the POSA would consult an expert on how to help him read the seismic data.

[00:15:54] Speaker 04:
I mean, yeah, I mean, you can understand that that's, as Judge Carano suggests, that's cabining the thing.

[00:16:02] Speaker 04:
Yes, the POSA can have somebody read the seismic data for them, but this definition

[00:16:11] Speaker 04:
perhaps doesn't cabinet in that way.

[00:16:13] Speaker 04:
It doesn't say what an expert in the field, what a pose in the field here would need expert advice about.

[00:16:22] Speaker 04:
And it can't be that he can just consult any expert on any issue that he wishes.

[00:16:31] Speaker 02:
Well, I would first point out, Your Honor, that the board here never held that CEDA did or would have had to access an expert

[00:16:40] Speaker 02:
to make any of the determinations that the board made.

[00:16:45] Speaker 02:
They just said in the definition that they could have access to experts and that would not turn them into something that was not a faceta.

[00:16:54] Speaker 02:
And that is really the issue is the board analyzed the evidence including Mr. Sutton and McCoy's admissions that simply having access to an expert or even accessing an expert does not turn that faceta into an expert.

[00:17:10] Speaker 01:
Can you focus on the particular place that Mr. Katropia was, I think, focusing on at A19 and 20 of the appendix where the board is reciting and quoting from the expert about what would be understood to have been alluded to

[00:17:39] Speaker 01:
in Barnhart in particular that some language alludes to an understanding about slippage effects.

[00:17:53] Speaker 01:
Either the board is saying, well, the expert understood it that way, which seems like maybe it's not the right standard.

[00:18:02] Speaker 01:
The right standard is what a ordinary artisan would

[00:18:09] Speaker 01:
would understand, or the board is actually relying on some notion that an ordinary artisan would understand that without consultation, which I don't think it says, or to return to what Judge Dyke was saying, some notion must be there that for this kind of reading of prior art, an ordinary artisan would consult an expert and the board's

[00:18:37] Speaker 01:
The board never says that with any specificity.

[00:18:42] Speaker 02:
Taking that last part, first of all, yes, but the board never did say that they would have to consult with an expert.

[00:18:47] Speaker 02:
But turning to your specific question and what my friend on the other side talked about, he cited to you the statement on the bottom of PENIX page 19 in which the board quotes Mr. Simmons, they call him, but truly Mr. Simpson, who is HEAL's expert,

[00:19:04] Speaker 02:
and talks about the difference between friction dominated flow and slippage dominated flow.

[00:19:10] Speaker 02:
But if you want to look up higher on that page, it does say that both experts agree that Barnhart's tailpipe, due to its diameter being smaller than the tubing string above it, would reduce the pressure gradient observed in the tailpipe when the fluid mixture flowing through the tailpipe exhibits slippage dominated flow.

[00:19:31] Speaker 02:
So the board was not just relying upon Mr. Simpson's explanation.

[00:19:35] Speaker 02:
They also relied upon McCoy's expert's explanation.

[00:19:39] Speaker 02:
They just decided to cite to Mr. Simpson in the footnote.

[00:19:43] Speaker 02:
But I'll also say that the friction-dominated flow versus slippage-dominated flow is not something that would require extra expert expertise.

[00:19:54] Speaker 02:
A preceded education and work experience definition here was

[00:20:00] Speaker 02:
of that of a bachelor's degree in petroleum, chemical, and mechanical engineering, and three to four years of experience working with electrification or artificial lift.

[00:20:14] Speaker 02:
And whether or not something is friction dominated versus slippage dominated is something that is fairly basic fluid dynamics and physics that they would have learned in that.

[00:20:23] Speaker 02:
It does not require expert testimony, or I'm sorry, expertise beyond that of a faceta.

[00:20:29] Speaker 02:
to assess whether or not a smaller diameter tailpipe would reduce the pressure gradient when it's exhibiting slippage dominated flow.

[00:20:38] Speaker 01:
What's the record material that says that no special expert consultation is needed to understand that?

[00:20:48] Speaker 02:
I don't believe there is a record site for that, Your Honor, but it's also not a record site that says would a board relied upon anything that said someone beyond a faceta

[00:20:59] Speaker 02:
would need to have expertise in this.

[00:21:08] Speaker 02:
But as you said, and that happens nowhere.

[00:21:11] Speaker 02:
Nowhere does the board ever say that something beyond the expertise of ACIDA is needed.

[00:21:17] Speaker 02:
And they specifically said in their definition of it that it does not turn them into an expert.

[00:21:26] Speaker 04:
I wonder on anticipation, and help me with this because I'm not sure that I remember the law correctly, in determining whether a feature exists in the prior art, is that necessarily from the point of view of a POSA or could an expert say that that feature is present in the prior art reference?

[00:21:51] Speaker 04:
Is our law clear about that?

[00:21:54] Speaker 04:
Yes, you know, a POSA has to, in the obviousness context, has to be able to say that the combination would occur and would work for its intended purpose and so on and so forth.

[00:22:10] Speaker 04:
But with anticipation in determining whether a particular feature is shown in the prior art, are we limited to what a POSA would know or is there a room for expert testimony about that?

[00:22:23] Speaker 02:
Your Honor, I believe it would be what does a person of ordinary skill in the art understand the reference to disclose, and that is exactly what the board did here.

[00:22:35] Speaker 02:
It applied what would a person of ordinary skill in the art understand it to be.

[00:22:42] Speaker 04:
Okay.

[00:22:44] Speaker 04:
Anything further?

[00:22:45] Speaker 02:
No, Your Honor, I mean, my friend on the other side never got to any other issues, so...

[00:22:53] Speaker 02:
I will rely on my briefs for that.

[00:22:56] Speaker 02:
But it's for the other issues unless the panel has questions on any of the other issues.

[00:23:02] Speaker 04:
Okay.

[00:23:03] Speaker 04:
Hearing no further questions, we'll hear from Mr. Katropia.

[00:23:09] Speaker 04:
I guess you have three and a half minutes or so left.

[00:23:12] Speaker 03:
Thank you, Your Honor.

[00:23:14] Speaker 03:
I'd like to first to the question that you just asked, Judge Dyke, does the case law agree with

[00:23:20] Speaker 03:
uh... counselor side sharing is one of the cases where you do look through the prior art uh... through the lens of a person having ordinary skill in the art and that's particularly true here when you're either trying to take a conventional pomp and somehow plug it into barnhart with the method claims or look at the tailpipe and say hey if there's something there that barnhart says nothing about uh... that the second point i would make is on the cabinet point

[00:23:47] Speaker 03:
One of the concerns with this approach of saying, hey, let's just see what factually happens in the field is, one, it runs counter to the idea that the Fosita is a hypothetical person.

[00:23:58] Speaker 03:
Just like in negligence law, there's no reasonable person.

[00:24:01] Speaker 03:
I can't go find that person.

[00:24:03] Speaker 03:
It's a judicial construct.

[00:24:05] Speaker 03:
That's the same with the Fosita.

[00:24:06] Speaker 03:
It's there for a purpose to balance the level of patentability.

[00:24:11] Speaker 03:
And the concern here is, let's say in some art fields, what Fositas do is they just use artificial intelligence.

[00:24:17] Speaker 03:
and we plug it into a machine and we see what the machine tells us to do.

[00:24:20] Speaker 03:
Well, then that would mean that in those fields nothing would be patentable because the FOSEDA, the ordinary skilled artisan, gets to have this access to someone who has a high level skill in the art.

[00:24:31] Speaker 03:
And I think the particular problems here with this definition adopted by the court is actually explained by Hill's expert where that expert agrees that this basically elevates

[00:24:43] Speaker 03:
the person having ordinary skill in the arts, ability to solve a problem.

[00:24:48] Speaker 03:
Because that means I can take a look at this.

[00:24:50] Speaker 00:
Council, let me ask you this.

[00:24:53] Speaker 00:
Where does the board rely on the event or the situation where a CEDA is consulted with an expert or actually had access to an expert in this case?

[00:25:06] Speaker 00:
And what does the board demonstrate the expert's knowledge was relevant to understanding the prior art?

[00:25:12] Speaker 03:
it in in your address rena it it's in the fight so i would say first they adopt that definition for their i would have to be a reason why i think you know about yet let's look at what i think i think i think the definition is is incorrect but i'm not convinced by air has happened in this case yet took to your honor uh... at my argue would be who like that with discussion with the other side on on pages nineteen three twenty if you remove

[00:25:38] Speaker 03:
all the citations to Heald's expert, which are based on the improper definition, there is no longer substantial evidence for the appellee who bears the burden to establish anticipation in this case or obviousness.

[00:25:55] Speaker 03:
And so that's the reliance.

[00:25:56] Speaker 03:
You are correct, Your Honor.

[00:25:58] Speaker 03:
It's not explicitly said.

[00:25:59] Speaker 03:
But when they're relying on an expert that in both of the declarations kind of doubles down on this improper definition,

[00:26:08] Speaker 03:
then we say that is actionable error.

[00:26:11] Speaker 03:
And I would ask the court to look to a case like intervention where they talk about when do we have actionable error versus harmless error with the setting of this FOSITA definition.

[00:26:19] Speaker 03:
And that one example they give is when you set the FOSITA definition high, which I believe happened here, and you have findings of invalidity, those are the kinds of cases where there's error.

[00:26:31] Speaker 03:
And the doubling down by the other side

[00:26:34] Speaker 03:
that we believe, Your Honor, is what creates the error in this case.

[00:26:39] Speaker 03:
Thank you very much, Your Honors.

[00:26:41] Speaker 04:
Okay.

[00:26:41] Speaker 04:
Thank both counsel.

[00:26:42] Speaker 04:
The case is submitted.

[00:26:43] Speaker 04:
That concludes our session for this morning.

[00:26:46] Speaker 04:
Thank you, Your Honors.

[00:26:48] Speaker 03:
The Honorable Court is adjourned from day to day.