[00:00:01] Speaker 03:
It leads us to our next case, which is number 21, 1732, Oris Health Inc.

[00:00:06] Speaker 03:
versus Intuitive Surgeon.

[00:00:49] Speaker 03:
Mr. Morris.

[00:00:59] Speaker 00:
May it please the court.

[00:01:01] Speaker 00:
The board's motivation to combine analysis in this case is legally and procedurally flawed.

[00:01:06] Speaker 00:
And I'd like to focus on two particular errors with regard to the board's determination.

[00:01:12] Speaker 00:
First, the board's use of general skepticism towards robotic industry

[00:01:18] Speaker 00:
an entire field was legal error.

[00:01:21] Speaker 00:
And second, the board erred by failing to address an important aspect of the case, rendering the decision arbitrary and capricious.

[00:01:28] Speaker 00:
Turning first to the board's treatment of skepticism.

[00:01:32] Speaker 03:
Well, if one assumes that that was a mistake, is that harmless error?

[00:01:38] Speaker 00:
No, there's no way in which to pull apart the board's determination.

[00:01:43] Speaker 00:
The board viewed everything in this case through the prism of this generalized skepticism and came to the conclusion that in light of that,

[00:01:53] Speaker 00:
the disadvantages and other aspects of the combination would add too much complexity.

[00:01:57] Speaker 00:
But it was only because, as it said, there was generalized skepticism.

[00:02:01] Speaker 04:
Well, that's what I mean.

[00:02:03] Speaker 04:
Can we focus on that a bit?

[00:02:04] Speaker 04:
Because I certainly get your point about reliance on general industry skepticism as arguably being problematic.

[00:02:14] Speaker 04:
But the board did a little more than that.

[00:02:17] Speaker 04:
I mean, it looked at, is it Dr. Choset?

[00:02:21] Speaker 04:
I believe so.

[00:02:21] Speaker 04:
And they had another factor in that.

[00:02:23] Speaker 04:
It didn't seem to be just industry skepticism.

[00:02:27] Speaker 04:
It seemed to be this lack of precision in surgery, which seems to me a pretty important thing, like precision in surgery.

[00:02:35] Speaker 04:
And that was the problem with the combination of these two elements.

[00:02:41] Speaker 04:
Am I mixing this up with another case?

[00:02:44] Speaker 00:
The board had a discussion of that, but all of that stemmed to the idea that there would be a

[00:02:51] Speaker 00:
missing or no remaining input degree of input of freedom.

[00:02:55] Speaker 00:
There was a way in which you have to combine this and there was no way that you could do that in their view because Smith already used all the inputs necessary.

[00:03:05] Speaker 04:
But that's a substantial evidence review on these matters and if you look at the analysis on Appendix 22 and most particularly 23 and 24, I mean they do talk about

[00:03:18] Speaker 04:
They don't explain that much about it, but they talk about it.

[00:03:22] Speaker 04:
And what's hardest for me is not the skepticism about precision in surgery, but they say that the petitioner did not sufficiently articulate how one would have combined Smith and Farris.

[00:03:38] Speaker 04:
They don't really explain a lot of detail about how the how is missing, but the how is a legally sufficient basis for finding lack of motivation.

[00:03:48] Speaker 00:
Well, not necessarily.

[00:03:52] Speaker 00:
If there's a reason why you would put those two together.

[00:03:55] Speaker 00:
There's a reason to combine the thing.

[00:03:57] Speaker 00:
There's not like an added how you necessarily do it.

[00:04:00] Speaker 00:
There are complications.

[00:04:02] Speaker 00:
And the board said there were complications.

[00:04:03] Speaker 00:
But all of that was viewed through, and this is at appendix 25, where the board summarizes its determination.

[00:04:09] Speaker 00:
It says that it would not, or a skilled artisan wouldn't be motivated to complicate Smith systems.

[00:04:14] Speaker 00:
not that it couldn't be done or that you wouldn't actually achieve the goal of putting the two together, but you wouldn't complicate Smith systems when there's general skepticism in the industry towards robotic surgery.

[00:04:25] Speaker 00:
So I don't think you can pull the decision apart.

[00:04:28] Speaker 04:
Well, you're right about that.

[00:04:29] Speaker 04:
But if you look at what the discussion on 24, it seems to be somewhat detailed, citing to Dr. Choset, about the difficulty on the how piece of it.

[00:04:40] Speaker 04:
I mean, they kind of combine this how thing with the precision in surgery, which I'd like you to address too, because if it would be problematic, I mean, your argument is, well, it decreases the number of assistants.

[00:04:52] Speaker 04:
So that's enough of a motivation.

[00:04:54] Speaker 04:
But if it on the other side of that is substantially interferes with precision in surgery, that seems to be a pretty big deal.

[00:05:01] Speaker 00:
Dr. Chozen's view.

[00:05:04] Speaker 00:
is that you have to add additional joints and in that process you get slopping.

[00:05:08] Speaker 00:
And what we pointed to below, and the board noted this at the bottom of appendix 24, is that there were other ways, other inputs you could do, foot switches, finger switches, other things that would allow you to do it.

[00:05:20] Speaker 00:
And Faraz indicated that you could put motors on all sorts of joints.

[00:05:23] Speaker 00:
So our point was that... Why didn't you have an expert?

[00:05:26] Speaker 03:
I find that very puzzling.

[00:05:28] Speaker 03:
I mean, this is...

[00:05:29] Speaker 03:
Maybe not the world's most complex technology, but normally a petitioner has an expert on things like this.

[00:05:38] Speaker 03:
Why didn't you have an expert?

[00:05:39] Speaker 00:
We had an expert.

[00:05:40] Speaker 00:
We had an expert with our petitions.

[00:05:42] Speaker 00:
At the time, we believed that the references spoke for themselves and that the work we had done with the expert previously laid the groundwork for why it was obvious to do so.

[00:05:55] Speaker 02:
But the bigger point here is that... But Dr. Chelsea's testimony was unrebutted.

[00:06:01] Speaker 02:
I mean, the evidence that he put on, you did not rebut.

[00:06:05] Speaker 00:
Not with an expert.

[00:06:06] Speaker 00:
We did rebut it in our reply.

[00:06:07] Speaker 02:
And we're looking at substantial evidence here.

[00:06:10] Speaker 02:
Correct.

[00:06:11] Speaker 04:
Well, do you concede, then, what the board says?

[00:06:14] Speaker 04:
You concede.

[00:06:15] Speaker 04:
He says, addition of joints.

[00:06:18] Speaker 04:
would add a degree of complexity that would interfere with the precision of surgery.

[00:06:24] Speaker 04:
Is your position, yeah, but who cares, because that's not enough to say there's lack of motivation?

[00:06:31] Speaker 04:
Or are you saying that this is just the board's findings, as Judge Rayner referred to, on what we would view as substantial evidence, which is incorrect?

[00:06:38] Speaker 00:
Well, our view is there were alternative ways in which to make the combination work.

[00:06:43] Speaker 00:
that aside.

[00:06:44] Speaker 00:
And the fact that that didn't disqualify it from all surgery and it didn't specify exactly how much of the precision would be lost.

[00:06:59] Speaker 04:
true and correct, it's not enough to satisfy the legal requirements of lack of motivation.

[00:07:06] Speaker 04:
I'm just really trying to understand what your position is.

[00:07:09] Speaker 00:
Yeah, our position is we put forward evidence that there were alternative ways, aside from what Dr. Choset said, to accomplish the combination of the two.

[00:07:18] Speaker 00:
One additional point is that it wasn't necessary to say exactly how the two would work together because we're talking about the concepts.

[00:07:25] Speaker 04:
But did you dispute the fact that it would compromise the degree of precision and just say, yeah, but it had other advantages?

[00:07:32] Speaker 04:
Or do you concede that there would have been a problem raised with respect to the degree of precision in surgery?

[00:07:41] Speaker 00:
No, our point was that there were alternative inputs.

[00:07:44] Speaker 00:
So all of that discussion stemmed.

[00:07:45] Speaker 03:
Please explain that, because I don't understand what you're saying.

[00:07:48] Speaker 00:
Alternative inputs so alternative ways of Dr. Joseph's position was and if this is that at page 23 to 24 of the board is that there were no remaining so all of the inputs for Smith were taken up because it's essentially Replicating the arms right so there weren't there wasn't another way in which you could because everything that's being done with the arms is being done with the effectors there wasn't another way in which to control the robotic arms on the stand itself and

[00:08:16] Speaker 00:
What we pointed to is, that's not necessarily true.

[00:08:18] Speaker 00:
There's a foot switch and there were finger switches that you could implement.

[00:08:22] Speaker 00:
We pointed to Wong.

[00:08:23] Speaker 00:
We pointed to what was already there in Smith itself.

[00:08:27] Speaker 00:
There are other ways in which you could control those.

[00:08:30] Speaker 00:
And that's what we pointed to.

[00:08:31] Speaker 04:
Going back to Judge Jike's point about you're not having an expert, this seems like the kind of stuff that if you had an expert testimony,

[00:08:39] Speaker 04:
to rebut Dr. Chostat, maybe things would have been different.

[00:08:44] Speaker 04:
But you're giving us attorney argument about these technical matters, trying to rebut an expert's testimony about how well this would work or how this would work.

[00:08:54] Speaker 04:
Don't you appreciate that that's a problem for you?

[00:08:57] Speaker 00:
The court generally can look to tribunal and arguments to the evidence itself and what they disclose.

[00:09:04] Speaker 00:
The primary art references themselves disclose much of this information.

[00:09:09] Speaker 00:
Yes, it was argument in the sense that we were putting them forward without an expert, but it's still evidence that rebuts the points made.

[00:09:15] Speaker 02:
You're not suggesting that we engage in fact-finding here.

[00:09:19] Speaker 00:
No.

[00:09:20] Speaker 00:
Our view is the board's error with regard to this general view of skepticism and how it's employed infected the entire thing, and it's the prism through which it viewed.

[00:09:29] Speaker 00:
So at a bare minimum, you should go back

[00:09:32] Speaker 00:
be vacated for that purpose for the board to apply the correct standard because it's impossible to pull the board's decision apart in a way that would just alleviate the particular error that it had here.

[00:09:44] Speaker 00:
And then on top of that, there's the additional error that

[00:09:47] Speaker 00:
even to the extent that this generalized skepticism is okay to consider, the board ignored an important aspect of the problem, which was the Wong reference.

[00:09:54] Speaker 04:
And you need to explain that to me, because I'm frankly pretty confused about that.

[00:09:58] Speaker 04:
I mean, that wasn't presented as one of your references for combination for obviousness.

[00:10:03] Speaker 00:
No, it wasn't.

[00:10:03] Speaker 04:
This was just an add-on.

[00:10:05] Speaker 04:
And you cited it in three places, as I recall looking back, including the background.

[00:10:11] Speaker 04:
What was the boy supposed to do with that that it did not do?

[00:10:15] Speaker 00:
So it's critical to take a look at pages 559 and 560 of the appendix because at that point we were rebutting directly this notion that there was generalized skepticism in the area of robotic surgery and taking that on we said combining robotic arms with surgical instruments was known

[00:10:37] Speaker 00:
We then specifically pointed to Wong and described Wong, which was a reference that came out one year prior to... Wait a minute.

[00:10:45] Speaker 04:
I'm looking at... You said 559 to 560.

[00:10:47] Speaker 04:
559 to 560.

[00:10:49] Speaker 00:
Okay.

[00:10:50] Speaker 00:
I can't really find Wong here.

[00:10:52] Speaker 00:
I'm just getting my... So on the top of page 560, appendix 560, we call out Wong.

[00:11:01] Speaker 00:
And we note the fact that its priority date was one year prior to

[00:11:05] Speaker 00:
the skepticism in 1997 that it dealt with robotic arms, et cetera.

[00:11:11] Speaker 00:
We also talked about some other evidence.

[00:11:12] Speaker 00:
But at the bottom of that page in our reply, where we're attacking the particular evidence of skepticism, we say that this evidence

[00:11:27] Speaker 00:
showed that the nature of robotics as a field where practitioners successfully modify and adapt robotics using known components and concepts.

[00:11:35] Speaker 00:
So Wong was a part of showing that to combat skepticism,

[00:11:42] Speaker 00:
we were showing that practitioners in this field generally were doing exactly what we're saying a skilled artisan would do here, which is putting them together.

[00:11:50] Speaker 00:
So it rebutted the notion that this is general.

[00:11:52] Speaker 04:
Oh, please.

[00:11:53] Speaker 04:
I guess what's puzzling to me is you're making this a separate freestanding standalone issue with Wong.

[00:12:00] Speaker 04:
Given your citation to it, we don't require that the board respond to every detailed sentence or reference that the petitioner makes in his submissions.

[00:12:11] Speaker 04:
Seems to me, maybe your argument about Wong just goes to your more general issue that you raised a few minutes ago, which is the board was just wrong to rely on this general skepticism.

[00:12:26] Speaker 04:
One, because it was too broad a reliance, and two, because we had rebuttal evidence to do it.

[00:12:32] Speaker 04:
So it seems to me, at best, this argument about Wong maybe goes to your more global argument about motivation to combine an industry skepticism being too broad a brush.

[00:12:43] Speaker 00:
Well, I think it definitely supports that, but I do think it's for purposes of the Administrative Procedure Act.

[00:12:49] Speaker 00:
The board is required to address an important aspect of the case.

[00:12:52] Speaker 00:
To the extent skepticism is an important aspect of the case, it should have responded to the notion that practitioners were doing exactly what the skepticism said they wouldn't do.

[00:13:02] Speaker 00:
You should have relied on Wong as a prior art director.

[00:13:06] Speaker 03:
Not on the skepticism issue, but on the notion that using robotic arms was common.

[00:13:13] Speaker 00:
We did point to Wong in that response.

[00:13:16] Speaker 00:
And we also pointed to Wong in the- It was not part of the combination.

[00:13:19] Speaker 00:
It's not part of the combination, no.

[00:13:21] Speaker 00:
But we did point to it in rebutting the notion that you couldn't do this with foot switches.

[00:13:26] Speaker 00:
I mean, it supported the idea that there were alternative paths to get the inputs into the combination that we were proposing.

[00:13:34] Speaker 04:
I'm not recalling right now, but are there any cases, any of our precedent that's on point that would embrace

[00:13:42] Speaker 04:
theory you're pointing out here on an APA violation because there was some reference cited for some proposition, and the board's failure to deal with that is an APA violation.

[00:13:55] Speaker 00:
What are your cases on?

[00:13:56] Speaker 00:
State Farm is from the Supreme Court saying that the principle remains, and is bedrocked with administrative law, that the board, the agency, is required to address an important aspect of the problem.

[00:14:12] Speaker 00:
And there was how to deal with seat belts.

[00:14:15] Speaker 00:
But here, we had an argument that said that rebutted.

[00:14:18] Speaker 04:
Did you say re-hearing on this?

[00:14:20] Speaker 04:
I know your answer is you're not required to.

[00:14:22] Speaker 04:
But typically, one would assume that if the board really just drops, I mean, doesn't say anything about anything, re-hearing is the way to cure the possibility that the board just forgot about it or didn't notice it.

[00:14:38] Speaker 00:
It's one way, and your honor is correct, that we're not required to take that path.

[00:14:43] Speaker 00:
We did not.

[00:14:44] Speaker 00:
See, I'm getting close to my time.

[00:14:48] Speaker 00:
All right.

[00:14:48] Speaker 00:
We'll give you two minutes for a moment.

[00:14:59] Speaker ?:
Thank you.

[00:14:59] Speaker ?:
Mr. Safeman.

[00:15:04] Speaker 01:
Good morning, your honors, and may it please the court

[00:15:06] Speaker 01:
This is a substantial evidence case.

[00:15:09] Speaker 03:
Not just.

[00:15:11] Speaker 03:
There's this question of whether it's appropriate to rely on general skepticism as opposed to the skepticism about the particular combination.

[00:15:21] Speaker 03:
If that's an error, it's a legal error.

[00:15:25] Speaker 03:
So why isn't it a legal error?

[00:15:27] Speaker 01:
Yes, Your Honor.

[00:15:29] Speaker 01:
The board didn't find general skepticism undermined any motivation in this space.

[00:15:33] Speaker 01:
The board was specific.

[00:15:34] Speaker 03:
That skepticism... Do you agree that general skepticism is not an appropriate consideration?

[00:15:40] Speaker 01:
I disagree.

[00:15:41] Speaker 01:
I believe it's an appropriate consideration.

[00:15:42] Speaker 01:
What case says that?

[00:15:45] Speaker 01:
Well, I would think that any number of this court's cases say you have to consider the knowledge of one order in your skill.

[00:15:52] Speaker 01:
I'm not saying it's dispositive by any means, just that it must be considered... No, no, no, but I mean...

[00:15:59] Speaker 03:
Considering the general knowledge of someone skilled in the art, part of it answers the specific question we're dealing with here as to whether general skepticism in the art is a relevant consideration or not.

[00:16:13] Speaker 03:
Is there any case that says that general skepticism is a relevant consideration?

[00:16:19] Speaker 01:
Not that I'm aware of, Your Honor, but I don't think you need to go that far in this case because here in the board's decision in Appendix 22,

[00:16:28] Speaker 01:
The board credits Dr. Chosett's testimony.

[00:16:31] Speaker 01:
The board cites Dr. Chosett at paragraphs 98, 99, and 100.

[00:16:34] Speaker 01:
And what Dr. Chosett explained, the context for his analysis was that Smith teaches the servo motor may be clamped to an operating table or other support.

[00:16:44] Speaker 01:
So the question became, how would one of ordinary still in the art have understood what an other support was as of the priority date?

[00:16:51] Speaker 04:
Yeah, but look at page 22 of the appendix.

[00:16:55] Speaker 04:
What the board says is it starts off, and Dr. Chosut's relying on that.

[00:17:01] Speaker 04:
It says, he attests that at the time of the invention, there was great skepticism with respect to robotic surgery.

[00:17:09] Speaker 04:
That's a pretty global, general statement, right?

[00:17:12] Speaker 04:
And then there's a bunch of parac... And then they say, we credit Dr. Chosut's testimony that at the priority date of the invention, there was great skepticism for performing telesurgery.

[00:17:25] Speaker 04:
And it goes on to say, those are very global, broad things.

[00:17:31] Speaker 04:
Those are statements that the board seems to think are important.

[00:17:35] Speaker 04:
And indeed, in its final conclusory paragraph, which your friend cited,

[00:17:40] Speaker 04:
It talks about when there was skepticism at the time of the invention for using robotic systems during surgery in the first place.

[00:17:51] Speaker 04:
All of those seem like very global references to the whole field of robotic surgery, not to the details here.

[00:17:59] Speaker 04:
So am I missing something or what?

[00:18:00] Speaker 01:
Yes, your honor.

[00:18:01] Speaker 01:
And I think that's essential that the board credited Dr. Chosut's testimony and then look at how he set up this testimony in his declaration.

[00:18:09] Speaker 04:
Well, what do you make of the statements I just read you?

[00:18:11] Speaker 04:
Should we ignore them or do you agree that they by themselves would be problematic?

[00:18:16] Speaker 04:
But if you dress them up with the rest of the details of Dr. Chosut, we can cabin them or what?

[00:18:23] Speaker 04:
What's your response?

[00:18:27] Speaker 01:
I will agree that the board didn't include all the same logical steps that Dr. Choson included in his declaration.

[00:18:37] Speaker 01:
But the board provided no indication it was district.

[00:18:40] Speaker 03:
But that's not the question.

[00:18:40] Speaker 03:
The question is that the board's opinion appears to rely heavily on general skepticism.

[00:18:49] Speaker 03:
The question is, let's assume they were wrong about that.

[00:18:53] Speaker 03:
Can we still sustain the board's decision because they talked about these other things, or are the other things precision, whatever, so entwined with their conclusions about general skepticism that we have to send it back for a redo?

[00:19:08] Speaker 01:
No, I certainly think that even if this court agrees the appellant on general skepticism, that is harmless error.

[00:19:15] Speaker 01:
Because as we explained in our briefing, there are three other independent factual findings.

[00:19:20] Speaker 02:
Does it matter what's the field of endeavor that we're looking at here?

[00:19:25] Speaker 02:
I mean, we're talking about surgery here.

[00:19:28] Speaker 02:
Let's say we're talking about aviation instruments for an airplane and there's general skepticism.

[00:19:34] Speaker 02:
Well, in those situations, they can

[00:19:37] Speaker 02:
The skepticism could be the basis for harm to the general public.

[00:19:42] Speaker 02:
But in other cases, it's not.

[00:19:44] Speaker 02:
Does that affect your argument?

[00:19:47] Speaker 01:
I don't think it does in these other three factual findings.

[00:19:52] Speaker 01:
still stand as substantial evidence.

[00:19:53] Speaker 04:
Okay, so why don't you point us to those other three factual findings that you're resting on.

[00:19:58] Speaker 01:
Sure, so the second full paragraph on Appendix 23, where we agree with Paten owner that petitioners not sufficiently articulate how one would have combined Smith and Faraz to achieve the benefit.

[00:20:11] Speaker 01:
Then the very next paragraph, the second finding,

[00:20:15] Speaker 01:
Pat Manner explains, and we agree, the proposed combination would have limited a physician's ability to manipulate Smith's servo polytrane-related components.

[00:20:24] Speaker 01:
And then on appendix 24, the following paragraph, we believe this is a separate... What about the paragraph on top of 24?

[00:20:32] Speaker 04:
The board closes that paragraph by saying, citing Dr. Chosin as saying, it added complexity and limited motion.

[00:20:41] Speaker 04:
Does adding complexity do it for us here?

[00:20:47] Speaker 01:
I think that this, this court's decision in Henny Penny, for example, the court, Henny Penny, which you signed in our briefs.

[00:20:54] Speaker 01:
The court found that there may be trade-offs.

[00:20:56] Speaker 01:
And in that case, it was increased complexity and decreased efficiency.

[00:21:00] Speaker 01:
And the board found that was sufficient.

[00:21:02] Speaker 01:
There was not a motivation to combine the references.

[00:21:06] Speaker 01:
But here, I don't think this court needs to limit itself to complexity, because in the very next paragraph is the precision issue, which precision is different than the input issue, which we talked about earlier.

[00:21:18] Speaker 03:
But when I read Dr. Choson's declaration, I'm looking, for example, at 3751, it seems to me it kind of dances around.

[00:21:28] Speaker 03:
Instead of saying that the combination of Smith and Farans would

[00:21:36] Speaker 03:
these precision problems and it couldn't work for surgery, he makes general statements that seem to be sort of deliberately crafted not to address the specific combination and the consequences of what you would get with a specific combination.

[00:21:55] Speaker 01:
So if I understand you correctly, I believe that his testimony does directly address both Farras and Smith.

[00:22:02] Speaker 03:
Yeah, it does.

[00:22:03] Speaker 03:
But the conclusions, for example, in 110 and 111 seem to be dancing around the specific combination, making general statements.

[00:22:15] Speaker 03:
if the physician cannot know precisely where the instruments are located.

[00:22:20] Speaker 03:
He says that, but he doesn't say, in Smith and Forans, if combined, the physician would not know.

[00:22:26] Speaker 03:
I mean, we all know experts.

[00:22:32] Speaker 03:
sometimes give testimony which is very generalized as a way of avoiding specific problems with the thing that is at issue.

[00:22:45] Speaker 03:
And this looks a little bit like that, as though it's deliberately general and not specific to the Smith-Ferrands combination.

[00:22:55] Speaker 01:
Here, it was undisputed that Smith itself has robotic arms with as many as seven joints, and that Feroz would be a robotic stand with multiple joints.

[00:23:07] Speaker 01:
And to the general, there wasn't enough in the record to make an absolute statement.

[00:23:12] Speaker 01:
And so what he was explaining was when you combine these two systems, one with as many as seven joints to another system, it's at least multiple joints.

[00:23:21] Speaker 01:
That becomes problematic in this space because each additional joint adds slop and it makes it more and more difficult with precision.

[00:23:28] Speaker 03:
Yeah, more difficult, problematic, but it doesn't say you couldn't achieve the necessary precision for surgery using this combination.

[00:23:36] Speaker 03:
Right?

[00:23:37] Speaker 03:
Correct.

[00:23:48] Speaker 01:
To the point on harmless error, even if this court does agree that the board relied on general skepticism and it disagrees on the precision point, we still have these two other

[00:24:04] Speaker 01:
independent findings that constitute substantial evidence in support of the board's decision.

[00:24:10] Speaker 01:
That is, this issue of a failure to explain how the references would have been combined to achieve the alleged benefit that's separate and apart from any skepticism and any issue related to precision.

[00:24:22] Speaker 01:
And then on the very next paragraph, the issue of Pat Nohner explains, and we agree,

[00:24:28] Speaker 01:
the proposed combination wouldn't have necessarily allowed one ordinary skill in the art to achieve that alleged benefit, because there'd be limited motion at the end of first.

[00:24:37] Speaker 04:
Can I ask you about the first point you raised?

[00:24:38] Speaker 04:
Because that one paragraph seemed a little lacking to me.

[00:24:42] Speaker 04:
I think the one you referred to on 23, appendix 23, where they do make the statement that the petitioner did not sufficiently articulate how one would have combined it.

[00:24:52] Speaker 04:
But then when I'm looking for, well, what was the problem here, whatever, they

[00:24:57] Speaker 04:
They conclude by saying, they go back to motivation.

[00:25:06] Speaker 04:
It's not how to me is a different thing than motivation.

[00:25:09] Speaker 04:
I mean, if it's impossible or really, really hard or almost impossible to combine stuff, that's the how question.

[00:25:17] Speaker 04:
It's not the why or would question.

[00:25:19] Speaker 04:
It's the how question.

[00:25:20] Speaker 04:
It seemed to me different in the analytical framework.

[00:25:23] Speaker 04:
And it seems to me the board's kind of squishes them into one here.

[00:25:27] Speaker 04:
So you want to explain to me what you think what the board was saying here?

[00:25:29] Speaker 01:
Sure.

[00:25:30] Speaker 01:
So I think in this court's activity of decision, the court clarified that how was an important part of the analysis.

[00:25:36] Speaker 01:
And part of that is to guard against hindsight.

[00:25:38] Speaker 01:
It's not so simply as all the elements are merely disclosed in the art.

[00:25:42] Speaker 04:
But is there a difference between the how question and the why question?

[00:25:46] Speaker 04:
Isn't there a difference?

[00:25:47] Speaker 01:
I believe they are related, and I believe that's how this court analyzed it in active video, and the board analyzed it here.

[00:25:55] Speaker 01:
They all go into the same inquiry.

[00:25:57] Speaker 04:
So if you don't know how to do it, you wouldn't be motivated to do it?

[00:26:01] Speaker 04:
I guess I'm just trying to figure out what the how, when they say didn't articulate how one would have combined that, what that means.

[00:26:09] Speaker 04:
Did they therefore walk away and say, well, nobody would have any idea how to do this combination.

[00:26:14] Speaker 04:
So of course they wouldn't have been motivated.

[00:26:16] Speaker 04:
Is that what the board was saying?

[00:26:17] Speaker 01:
I believe so, that it works against the motivation, that if the question is, or is contends, that you'd want to reduce the workload or number of assistants.

[00:26:28] Speaker 01:
and that this is a countervailing consideration that the board found.

[00:26:30] Speaker 01:
So the issue here is that Smith's provides an exoskeleton.

[00:26:34] Speaker 01:
You think of an exoskeleton as a remote control, right?

[00:26:37] Speaker 01:
And so the buttons are the shoulder, the elbow, the wrist, finger, the foot, any of these things.

[00:26:44] Speaker 01:
And so there's no way to control a multi-joint robotic stand during surgery.

[00:26:50] Speaker 01:
That was the issue here.

[00:26:55] Speaker 02:
that worked against the board found that... Well, I would take that another step and say that the problem with that is that it is during surgery and that can lead to endangering the health of the patient.

[00:27:10] Speaker 01:
Agree, Your Honor.

[00:27:11] Speaker 01:
And that is why the board has this combination of factors that it puts together and one of them is precision.

[00:27:19] Speaker 01:
And so it's all in the context of surgery.

[00:27:25] Speaker 01:
The last point I'll address is the point about Wang.

[00:27:29] Speaker 01:
So Oris argues that the board's failure to consider Wang was arbitrary and capricious.

[00:27:34] Speaker 01:
The board considered each and every one of Oris's arguments.

[00:27:37] Speaker 01:
So here, at appendix page 23, the board directly addressed and accepted as true the very point that Wang allegedly addresses.

[00:27:46] Speaker 01:
That is, that robotic systems and robotic arms were generally known.

[00:27:51] Speaker 01:
So for these reasons, we respectfully request this court affirm the board's final written decision.

[00:27:55] Speaker 01:
If there are no further questions, we'll see the remainder of our time.

[00:28:10] Speaker 00:
A few points, Your Honor.

[00:28:13] Speaker 00:
First, it is impossible to pull apart the Board's decision, and there are particular reasons why.

[00:28:18] Speaker 00:
If you look at appendix 22 to 23, where the Board is getting into its discussion, and it says, because of this skepticism towards robotic surgery generally... Which page are you referring to?

[00:28:31] Speaker 00:
The bottom of 22, Your Honor.

[00:28:33] Speaker 00:
Because of skepticism, one of ordinary in the art, at the time of the invention, would not have felt compelled to complicate Smith's system further by including a robotic surgical stand.

[00:28:43] Speaker 00:
So then it goes through and it talks about complications, and you can see that on page 24, when they're talking about the loss of precision, this is at the first full paragraph.

[00:28:52] Speaker 00:
says, Dr. Chosut explains that adding additional joints in order to obtain an additional degree of freedom also adds further complexity.

[00:28:59] Speaker 00:
So the board's discussion to that point was about the complexity of the combination and whether or not there'd be motivation to combine.

[00:29:07] Speaker 00:
And it's looking at that through the prism of generalized skepticism.

[00:29:12] Speaker 00:
And then you see at the final conclusion of the board in the last paragraph on 25, it says,

[00:29:18] Speaker 00:
There is no motivation to complicate Smith's system when there is skepticism at the time of the invention for using robotics surgery.

[00:29:26] Speaker 00:
So it's not as though the board were making findings in the alternative such that they could point out substantial evidence and say that there was something to support it.

[00:29:35] Speaker 00:
All of the analysis is viewed through the prism of whether or not there was generalized skepticism towards robotic surgery.

[00:29:40] Speaker 00:
That was error, and it can't be pulled apart in some way, and the board needs to go back and readdress it.

[00:29:47] Speaker 00:
With respect to just briefly on the how and the why, KSR said there are a variety of different ways in which... Let me ask you the same question I asked your friend.

[00:29:57] Speaker 02:
Does it matter what the field is that we're dealing with?

[00:30:00] Speaker 02:
Does it matter that these are instruments for use in surgery?

[00:30:08] Speaker 00:
There wasn't any particular evidence and there wasn't anything by Dr. Choza that said that it went to such a degree that it couldn't necessarily be used.

[00:30:15] Speaker 00:
You know, it was just sort of a broad-sweeping story.

[00:30:17] Speaker 02:
If the discussion is based on a lack of precision, and we're talking about surgery, aren't we talking about the health of patients?

[00:30:27] Speaker 00:
There's no evidence that it would have endangered the health of the patient given where it's at in there.

[00:30:33] Speaker 04:
Well, he did say.

[00:30:34] Speaker 04:
I think you were talking about the torque stuff that the board cited.

[00:30:37] Speaker 04:
And that goes to paragraph 111 at page 3751, which I think Judge Dyke earlier was referring to.

[00:30:46] Speaker 04:
At the very conclusion of that paragraph 111 talking about this additional torque, he does say, if the physician cannot know precisely where the surgical instrument is located, going to Judge

[00:30:59] Speaker 04:
Reina's point, then mistakes can be made during surgery.

[00:31:04] Speaker 04:
That's a pretty serious, significant statement, right?

[00:31:08] Speaker 00:
It is, but it all goes, again, to the board's conclusion that there was complexity in the system and that a skilled artist wouldn't try to solve the complexity.

[00:31:16] Speaker 00:
because of the general skepticism in the area.

[00:31:19] Speaker 04:
Well, is it your position that, yeah, it could under certain circumstances make it a little less precise, but there's the benefit of decreasing the number of assistants, so you weigh all of that stuff?

[00:31:33] Speaker 04:
Or are you agreeing that in the context of precision, as Judge Raina points out, it's a pretty big deal?

[00:31:43] Speaker 04:
It could be.

[00:31:44] Speaker 00:
Our point was that there were alternative ways in which to solve the complication.

[00:31:49] Speaker 00:
So there are alternatives to doing this.

[00:31:51] Speaker 00:
The board merely said there were complications.

[00:31:53] Speaker 00:
And because of general skepticism, a skilled artisan wouldn't be motivated to complicate.

[00:31:58] Speaker 00:
Same over my time.

[00:31:59] Speaker 00:
So we'd ask the court to vacate and remand.

[00:32:02] Speaker 03:
OK.

[00:32:03] Speaker 03:
Thank you.

[00:32:03] Speaker 03:
Thank both counsel.

[00:32:04] Speaker 03:
The case is submitted.