[00:00:00] Speaker 03:
Our final case this morning is number 21, 1733, ORS Health versus Intuitive Surgical.

[00:00:47] Speaker 01:
The board found all elements of claims 51 and 53 of the 906 patent were taught by the combination of the Borscht and the Wong 99 patents.

[00:01:06] Speaker 01:
And we agree with those findings.

[00:01:09] Speaker 01:
But when the board went on to consider the rationale for combining the references and whether there'd be a reasonable expectation of success, it made two groups of mistakes.

[00:01:17] Speaker 01:
The first group of mistakes that it made was that it found that Oris had to show that the combination of references showed the step of dissociating the master from the end effector.

[00:01:28] Speaker 01:
which is a concept.

[00:01:29] Speaker 01:
Can I ask you back up a second?

[00:01:31] Speaker 03:
Yes.

[00:01:32] Speaker 03:
I spent a lot of time reading this and I must say I came away somewhat confused as to what the Borst and Wang 99 combination is.

[00:01:43] Speaker 03:
It appears in the decision to initiate the IPR that the board viewed that combination as using the hand controls

[00:01:55] Speaker 03:
for the manipulation of the surgical instruments and perhaps the foot pedal or something else for selecting the additional information.

[00:02:04] Speaker 03:
What is the proposed combination?

[00:02:06] Speaker 03:
Is it using the hand controls for both purposes or does it involve using the hand controls for the surgical instruments and the foot pedal or something else like that for the additional information?

[00:02:19] Speaker 03:
And this is particularly pertinent because it bears on these five difficulties

[00:02:25] Speaker 03:
that the patentee says would be involved in using the hand controls for both purposes.

[00:02:32] Speaker 01:
They said, I'll come back to the hand control, so that's an important point.

[00:02:35] Speaker 01:
But the combination is using Borch's hand controls for both purposes.

[00:02:40] Speaker 01:
And this is shown, and how to do this is shown in the Wong 99 reference.

[00:02:45] Speaker 01:
Wong 99 shows how you can use a single master controller

[00:02:49] Speaker 01:
to control multiple devices that are in the operating room.

[00:02:53] Speaker 01:
And it shows that the way this is done is that the master controller has a selection mechanism that when the surgeon selects a particular device, all the inputs that go into that master will be sent to the particular device.

[00:03:06] Speaker 01:
When a surgeon would like to use a different device, the surgeon tells the master and then that master will send all the controls from the surgeon's inputs to a different device.

[00:03:17] Speaker 01:
And within the Wong 99 reference, it is undisclosed.

[00:03:21] Speaker 03:
It's a different device.

[00:03:22] Speaker 03:
I thought you were saying the combination uses the hand controls for both purposes.

[00:03:28] Speaker 03:
Correct.

[00:03:30] Speaker 03:
Well, so why doesn't that create the problem that they articulate in these five steps that by the hand controls to secure the information might have been manipulated so that they're in a different position.

[00:03:45] Speaker 03:
than they were when you were performing the surgery.

[00:03:47] Speaker 03:
And it doesn't explain how to get back to a situation in which the hand controls are in the same position that they were when you stopped the surgery to get the initial information.

[00:04:00] Speaker 01:
Right.

[00:04:00] Speaker 01:
So first of all, that particular testimony and argument is with respect to the combination of Borst and Salvati.

[00:04:07] Speaker 01:
And Salvati has a different mechanism for switching between the devices that it controls.

[00:04:12] Speaker 01:
That testimony was in paragraph 81 of Dr. Rentschel's declaration, and he didn't provide that same testimony or opinion with respect to Wong 99.

[00:04:19] Speaker 03:
And I think part of the reason for that is that Wong 99 shows a different- Does the board rely on that testimony in rejecting the Borst and Wong 99 combination?

[00:04:33] Speaker 01:
Yes, it did rely on that testimony, but I don't think that testimony is directly relevant to the Borst and Wong 99 combination.

[00:04:40] Speaker 01:
And that's because Wong 99 shows a different way of connecting and disconnecting or associating and re-associating the master with the different controls in the operating room.

[00:04:51] Speaker 01:
And the issue that your honor mentioned about bringing the controls back to the same place, if you look in the 906 patent, it doesn't explicitly explain how to do that.

[00:05:01] Speaker 03:
It relies on a testimony.

[00:05:04] Speaker 03:
They may have an enablement problem, but that's a different issue.

[00:05:07] Speaker 01:
Well, I think it actually goes to what a person of ordinary skill in the art knows and how these systems work.

[00:05:13] Speaker 01:
The surgical system doesn't have to put the controls back in the same place.

[00:05:17] Speaker 01:
And in fact, that's because in these systems, they're designed to let a surgeon put their hands where they want and be ergonomically pleasant.

[00:05:24] Speaker 03:
But you're saying this, did you have an expert say this to address the five points?

[00:05:31] Speaker 03:
I didn't see that you had expert testimony on that subject.

[00:05:35] Speaker 03:
Am I mistaken?

[00:05:36] Speaker 01:
We did not supply rebuttal expert testimony on this point, and there's a couple reasons for that.

[00:05:42] Speaker 01:
One is that within the testimony itself, Dr. Rentschler is relying on this concept of disassociating the master with the end effectors, and that's not how Wong 99 works.

[00:05:53] Speaker 01:
It doesn't have to break communications between

[00:05:57] Speaker 01:
the master and the end effector.

[00:05:59] Speaker 01:
And so the testimony that the board relied on these five factors isn't actually relevant to claims 51 and 53.

[00:06:05] Speaker 03:
I'm confused.

[00:06:05] Speaker 03:
I mean, you have to switch, if you're using the same hand controls, you have to switch back and forth between the two modes, right?

[00:06:13] Speaker 03:
Yes.

[00:06:14] Speaker 03:
in order to make the combination, even if there's no disassociating claim limitation in what is it, 51 and 53, you still would have to figure out, you'd have to be able to switch back and forth, right?

[00:06:26] Speaker 01:
That's correct, yes.

[00:06:28] Speaker 04:
Which requires the temporary interruption, right?

[00:06:32] Speaker 01:
It does not require temporary interruption in communications as that was interpreted.

[00:06:37] Speaker 01:
positive by intuitive.

[00:06:38] Speaker 01:
It does require that when the master is moved, that it doesn't move the end effectors.

[00:06:44] Speaker 01:
But in order to do that, that doesn't mean you have to break all communications between the master and the end effectors.

[00:06:49] Speaker 01:
For example, in Wong 99, it uses a logical step to switch from where it goes.

[00:06:55] Speaker 01:
But going back to the question about realigning the hand input devices,

[00:07:03] Speaker 01:
We did cite and describe the Wong 850 reference, which shows that what the system does is it has this mechanism for letting the surgeon disconnect the master from the end effectors, and then reposition it so that it's in a comfortable position, and then reengage the master with the end effectors.

[00:07:22] Speaker 01:
And the reason it does this is because the surgeon wants his hands to be in a position that in his mind will map to what he's seeing on the screen.

[00:07:29] Speaker 01:
And sometimes that means that he has to put his hands in a slightly different position.

[00:07:33] Speaker 01:
To get a little bit of analogy, if you think of a screwdriver, holding the screwdriver you turn, but then you reach the end of your movement, so you have to let go and turn back, grab it again, and keep turning in order to screw a screw in.

[00:07:45] Speaker 01:
It's a similar concept with these systems.

[00:07:47] Speaker 01:
The surgeon will operate the master and move it.

[00:07:53] Speaker 01:
Well, we have an explanation about the Wong 850 reference, and we do have testimony of the Wong 850 reference, which describes this exact process.

[00:08:03] Speaker 03:
Where?

[00:08:12] Speaker 01:
So, in Appendix 1157, Wong 850... Hold on, is it 1157?

[00:08:18] Speaker 04:
Is that volume two?

[00:08:20] Speaker 01:
Yes.

[00:08:28] Speaker 04:
No, 1157 is the 850.

[00:08:31] Speaker 04:
OK.

[00:08:32] Speaker 04:
This is the Wong 850 reference.

[00:08:33] Speaker 04:
OK.

[00:08:35] Speaker 01:
And there's two Wong references there.

[00:08:36] Speaker 01:
One's 099, one's 85.

[00:08:38] Speaker 03:
So where does this discuss the hand movements?

[00:08:43] Speaker 01:
If you look at column three, lines two onward, it just talks about the input button that allows the surgeon to adjust the position of the handles without moving the end effector so the handles can be moved to a more comfortable position.

[00:09:06] Speaker 03:
And we... No, it doesn't quite address the problem of moving them back into the same position that they were in when you stopped the surgery.

[00:09:21] Speaker 01:
It doesn't address the problem, but I think what it does show is that that problem doesn't actually exist because what this does is explicitly lets the surgeon disconnect it and put the masters where he wants them to be.

[00:09:33] Speaker 01:
The system doesn't have to align them.

[00:09:34] Speaker 01:
It's not designed so that the hand controllers must exactly mimic what the end effectors are doing.

[00:09:40] Speaker 01:
It's designed so that the movements that the surgeon makes will be translated to the end effectors.

[00:09:45] Speaker 01:
So there's not actually a requirement that these systems realign the masters.

[00:09:52] Speaker 01:
And there's no description of realigning the masters like that in the 906 patent either.

[00:09:58] Speaker 01:
And I think that goes.

[00:10:01] Speaker 03:
I mean, the problem again, as in the last case, is where's your expert?

[00:10:05] Speaker 03:
Where's your expert testimony addressing that?

[00:10:10] Speaker 03:
Our expert does.

[00:10:11] Speaker 03:
Pardon me?

[00:10:12] Speaker 03:
I find it odd that you didn't do that.

[00:10:16] Speaker 01:
In our view, the references themselves explain how these processes work.

[00:10:21] Speaker 01:
We pointed the board back to these references and the descriptions that are explicitly in them to explain how these concepts work.

[00:10:28] Speaker 01:
We didn't think that we needed the expert to explain what was already listed out in the reference.

[00:10:33] Speaker 01:
In particular, this seems significant where the testimony that we're looking at from intuitive experts is contrary to what's in these references.

[00:10:45] Speaker 01:
expert testimony that's contrary to the direct disclosure of the reference is not substantial evidence.

[00:10:58] Speaker 01:
Going back to the board's decision with respect to claims 51 and 53, it relied, I think, exclusively on this concept of dissociating, which it applied the meaning of interrupting communications between a master and an end effector.

[00:11:12] Speaker 01:
You can see this because it quotes, for example, Dr. Rentschler at paragraph 99 of his declaration, where Dr. Rentschler explicitly requires dissociating the masters from the end effectors.

[00:11:25] Speaker 01:
The real problem with the combination is not this idea of breaking communications, it's configuring it so that the master controllers can be moved

[00:11:35] Speaker 01:
by the surgeon for accessing information without moving the robotic arms.

[00:11:40] Speaker 01:
Because obviously, if you try to move the mouse and the arms are going like this in the person, it's going to hurt them.

[00:11:46] Speaker 01:
And this is the problem that Dr. Rentschler actually identified with adding a second mode to bores.

[00:11:52] Speaker 01:
And this is in Appendix 1905.

[00:11:57] Speaker 01:
And he states that

[00:12:05] Speaker 01:
that the problem is that Orr supposedly hadn't explained how a skilled person would have used Borch master controller to add information without translating the movements of the master to the end effector and cause harm to the patients.

[00:12:20] Speaker 01:
But Wong 99 shows exactly how to do that.

[00:12:23] Speaker 01:
And he actually recognizes this both in the next sentence and also in paragraph 104 of his declaration, which is at appendix 1908, where he says that in Wong,

[00:12:31] Speaker 01:
when the surgeon selects to access information from the database, movements of the master will not cause the arms to move.

[00:12:41] Speaker 01:
Intuitive also admitted that this is how the Wong 99 reference worked, and that's the appendix 384.

[00:12:48] Speaker 01:
But then in Dr. Rensselaer's testimony in paragraph 98, he goes on and says, well, even though Wong shows how you can do that, the combination fails because Oris hasn't showed how you dissociate the master from the end effectors.

[00:13:02] Speaker 01:
dissociating as necessary to accomplish the problem that he identified with it.

[00:13:06] Speaker 01:
And in fact, he recognized that Wong 99 provides the exact solution to it.

[00:13:10] Speaker 01:
And that is what we argued in the combination in the briefs that you would pull in Wong 99's functionality for the second mode to use the masters for a second purpose to make them so they don't move the end effectors and instead are used to access information from a database.

[00:13:27] Speaker 04:
Can I just put you back to something that's

[00:13:30] Speaker 04:
a little more mundane than the discussion you've been having with Judge Dyke with regard to the references, which is I understood your first sort of preliminary argument to be simplistically disassociating is a limitation in claim 16.

[00:13:47] Speaker 04:
It does not appear in claim 51 or 53.

[00:13:51] Speaker 04:
And the board added that limitation to 51 and 53, full stop.

[00:13:59] Speaker 04:
is when you make a due process argument, and you complain that it wasn't part of the construction.

[00:14:05] Speaker 04:
And I'm not clear on that, because I didn't know, did the board ever construe that claim?

[00:14:10] Speaker 04:
Disassociating seems to be defined kind of in the patent, right?

[00:14:16] Speaker 01:
I don't think it's defined.

[00:14:19] Speaker 01:
Sorry, there are a few questions there.

[00:14:20] Speaker 01:
I don't think that the term disassociating is defined in the 906 patent.

[00:14:24] Speaker 01:
If you look in column 23, lines 1 through 30-ish, it uses the term disassociating to mean it doesn't

[00:14:31] Speaker 01:
operate the end effectors.

[00:14:33] Speaker 01:
So there's nothing in there about communications, which is what the board's decision was focused on.

[00:14:40] Speaker 01:
Does Wong 99 halt communications?

[00:14:43] Speaker 01:
You can see that on Appendix 33.

[00:14:45] Speaker 04:
But is your position that that wasn't a limitation that was included in these claims at all, so it didn't matter?

[00:14:51] Speaker 01:
It was not included in claims 51 and 53.

[00:14:54] Speaker 01:
So whether in the combination abortion of Wong 99,

[00:14:59] Speaker 01:
There's dissociation to halt communications between the mass and the end effectors.

[00:15:03] Speaker 01:
That's not a relevant consideration.

[00:15:05] Speaker 03:
But you're still going to be able to switch back and forth, right?

[00:15:07] Speaker 01:
That's correct, yes.

[00:15:09] Speaker 01:
You do have to switch back and forth, but you don't have to dissociate in order to break the communication.

[00:15:13] Speaker 01:
Wang shows a different way without breaking the communication.

[00:15:16] Speaker 03:
When you switch back and forth, it has to be that you stop communicating with the instruments, that your hand movements will not control the instruments when you're seeking the additional information.

[00:15:25] Speaker 01:
In that sense, but that's not how the board applied communication.

[00:15:29] Speaker 01:
They meant communication as in there's no communications like system level communications that go from the master to the end effector.

[00:15:36] Speaker 01:
And so in Borch, I think it's unquestionable that when the surgeon selects to access the database and moves the master, it does not move the end effectors.

[00:15:47] Speaker 01:
Intuitively admit this, Dr. Rentsch will admit it, and that's been our position.

[00:15:50] Speaker 01:
So there's no dispute on that particular factual point.

[00:15:57] Speaker 01:
I see that I'm out of time.

[00:15:58] Speaker 01:
I'm happy to answer questions.

[00:16:00] Speaker 03:
How about the reserve?

[00:16:00] Speaker 03:
We'll give you two minutes for a rebuttal.

[00:16:04] Speaker 01:
Okay.

[00:16:04] Speaker 01:
Thank you.

[00:16:06] Speaker 01:
I believe I had three.

[00:16:07] Speaker 01:
Thank you.

[00:16:07] Speaker 01:
Thank you.

[00:16:10] Speaker 03:
You can take your time, but there's nothing left.

[00:16:15] Speaker 03:
Ms.

[00:16:15] Speaker 03:
Brattachera?

[00:16:23] Speaker 00:
Good morning, Your Honors.

[00:16:24] Speaker 00:
I'm Pita Bhattacharya from Finnegan on behalf of Intuitive Surgical.

[00:16:28] Speaker 00:
May it please the court?

[00:16:30] Speaker 00:
Your Honors, first I will address the points raised by Oris with respect to claims 51 and 53, and then I will quickly address the issues related to claim 16.

[00:16:40] Speaker 00:
So for claims 51 and 53, the board agreed with intuitive that there was no motivation to modify borst.

[00:16:49] Speaker 04:
But did it add a limitation of dissociating, which is found in claim 16, but not at least not stated in claim 51 and 53?

[00:16:59] Speaker 00:
No, Your Honor.

[00:17:00] Speaker 00:
The board did not add a disassociating limitation to claims 51 and 53.

[00:17:06] Speaker 00:
To the contrary, the board specifically said that claim 53 does not recite.

[00:17:13] Speaker 03:
Where are you reading from?

[00:17:14] Speaker 00:
I'm reading from the final written decision appendix, page 35.

[00:17:18] Speaker 00:
The board said, claim 53 does not recite disassociating the master control

[00:17:27] Speaker 00:
from the surgical instruments.

[00:17:29] Speaker 00:
So the board specifically said that.

[00:17:31] Speaker 00:
And the board had already found that Borst and Vang 099.

[00:17:37] Speaker 04:
Wait, wait, wait.

[00:17:39] Speaker 04:
I finally got to appendix 35.

[00:17:41] Speaker 04:
It says, even though 53 does not recite dissociating the master control from the surgical instrument, Pat Nona argues that this step is still necessary.

[00:17:52] Speaker 00:
Yes, Your Honor.

[00:17:52] Speaker 00:
This step is necessary if borst is modified to have a second operating mode.

[00:17:59] Speaker 03:
Oh, that's not true.

[00:18:00] Speaker 03:
I mean, you've got to be able to switch back and forth.

[00:18:03] Speaker 03:
But you don't have to have this additional disassociating limitation, which seems to go beyond disengaging the instruments from hand control.

[00:18:13] Speaker 00:
Your Honor, disassociating means disengaging the master from the end effector.

[00:18:19] Speaker 03:
And there is- That's all it means?

[00:18:21] Speaker 00:
Yes, Your Honor, and break of communication.

[00:18:24] Speaker 03:
Oh, that's true in Claim 16, too.

[00:18:26] Speaker 00:
That is true in Claim 16, but Claims 51 and 53 is... No, no.

[00:18:33] Speaker 03:
What you're saying is that that's all Claim 16 requires and disassociated was that the hand control is disconnected from the search of instruments.

[00:18:41] Speaker 00:
Yes, your honor.

[00:18:43] Speaker 00:
Claim 16 specifically recites disassociating, which means the master would be disengaged from the end effector.

[00:18:50] Speaker 04:
And are you saying that limitation, the board concluded that limitation was in 5153 or that it did not?

[00:18:56] Speaker 00:
It did not.

[00:18:57] Speaker 00:
That limitation is not in the invention as claimed.

[00:19:02] Speaker 04:
No, that's what I'm saying.

[00:19:03] Speaker 04:
And that's the question I have because it appears to me at least arguable.

[00:19:07] Speaker 04:
that the board added that limitation, or that you were advocating that the board add that limitation to 51 and 53.

[00:19:13] Speaker 04:
So tell me why I'm wrong.

[00:19:15] Speaker 00:
Your Honor, only if BORST is modified to have a second operating mode, then in BORST, to make BORST operational and not to

[00:19:27] Speaker 00:
hurt the patient inadvertently when using BORST in the second operating mode, this association will be required.

[00:19:35] Speaker 03:
Oh, it is part of 51 and 53, too, in your view.

[00:19:41] Speaker 00:
If BORST is modified to have a second... That's the proposal is to modify BORST.

[00:19:48] Speaker 00:
If BORST is modified, then BORST will require this association.

[00:19:52] Speaker 00:
The claims do not require this association.

[00:19:55] Speaker 00:
if there was a different piece of prior art.

[00:19:57] Speaker 00:
For instance, if Wang 099 was used as a primary reference and it was used with the hand controls.

[00:20:05] Speaker 03:
I don't know why you don't just say, yeah, it's not there on the face of 51 and 52, but to make it work, you have to disassess it.

[00:20:15] Speaker 00:
Your Honor, it's not in the face of Claims 51 and 53, and this association is not always required to make Claims 51 and 53 work.

[00:20:28] Speaker 00:
It's only required in borst if borst is to have a second operating work.

[00:20:33] Speaker 03:
It's only required if you're going to make this combination.

[00:20:35] Speaker 00:
If to make the combination work, then boards will be required.

[00:20:41] Speaker 00:
But if a different set of prior art was selected, then this association may not have been required.

[00:20:47] Speaker 00:
So it depends on the architecture of the prior art that is being used.

[00:20:51] Speaker 00:
For instance, Wang 099 can be used

[00:20:55] Speaker 00:
likely in two separate modes.

[00:20:57] Speaker 03:
You have to disassociate so you're not moving the surgical instruments when you're securing the additional information, right?

[00:21:06] Speaker 03:
Any combination would require that you disconnect the surgical instruments from the control when you're doing the second mode.

[00:21:14] Speaker 00:
I would give the specific example of N099, which can be operated in two separate modes

[00:21:20] Speaker 00:
without having to disassociate because of the architecture of Wang 099.

[00:21:25] Speaker 00:
So in Wang 099, there is a master controller and there are multiple slave controllers.

[00:21:31] Speaker 00:
So the communication from the master to an end effector, to the different surgical instruments, to the network gateway, which is used to access the information,

[00:21:41] Speaker 00:
is done through different slave controllers.

[00:21:44] Speaker 00:
So there is no cross talk, no cross communication between these different slave controllers.

[00:21:51] Speaker 00:
So the master can transmit commands through one slave controller to an end effector and let the end effector do what it is doing.

[00:22:01] Speaker 00:
And then at the same time, the master can access a different slave controller

[00:22:05] Speaker 00:
and access information from the network.

[00:22:08] Speaker 04:
So are you describing Claim 51 and 53, which does not have a dissociating limitation?

[00:22:13] Speaker 00:
Yes, Your Honor.

[00:22:14] Speaker 00:
But Wang 099.

[00:22:17] Speaker 03:
If you're operating in two modes, you have to disconnect the first mode when you use the second mode.

[00:22:22] Speaker 03:
And that's all you say disassociating requires.

[00:22:25] Speaker 03:
So the requirement is there.

[00:22:28] Speaker 03:
I mean, I just don't understand your argument.

[00:22:30] Speaker 03:
Disassociation?

[00:22:32] Speaker 00:
As there's unrebutted testimony from Intuitive's expert Dr. Ranchler, disassociation requires lack of communication.

[00:22:39] Speaker 00:
But in Wang 099, the master can communicate.

[00:22:45] Speaker 00:
through multiple slave controllers to multiple instruments.

[00:22:50] Speaker 00:
So multiple instruments can remain active at the same time.

[00:22:54] Speaker 00:
So when multiple instruments remain active, there is communication going on.

[00:22:59] Speaker 00:
There is no crosstalk.

[00:23:01] Speaker 00:
So the commands coming from the master that is going to the network gateway to access information, that command is not going to contaminate the command going to a different slave controller

[00:23:14] Speaker 00:
to the end effector that is supposed to be performing a surgery.

[00:23:18] Speaker 00:
So having an architecture of different slave instruments, slave controllers, crosstalk is eliminated.

[00:23:26] Speaker 00:
So the disassociation, which means lack of communication, doesn't become a part of 9099.

[00:23:33] Speaker 00:
But in Borst, it does not have that architecture.

[00:23:36] Speaker 00:
And Dr. Ranchler testified to that, which is under-budded.

[00:23:40] Speaker 00:
And so the point of...

[00:23:42] Speaker 04:
Where this all leads us is to, there would have been no, this is a question, there would have been no motivation to combine borst because it has the disassociate.

[00:23:54] Speaker 00:
Because it borst would require disassociation because it doesn't have the architecture of Wang 099.

[00:24:00] Speaker 00:
And the petitioner did not provide any explanation of how you would modify Wang to have

[00:24:08] Speaker 00:
a different architecture where you can switch back and forth.

[00:24:11] Speaker 03:
It's not complicated.

[00:24:13] Speaker 03:
You have to rely on the fact that somehow putting both controls into the hand control and controller, both modes into the hand controller creates a problem.

[00:24:24] Speaker 00:
It does create a problem, Your Honor, and that was actually the main reason why the board agreed with Intuitive that there wouldn't be any motivation to modify borst.

[00:24:37] Speaker 00:
The board agreed with the unrobotted testimony of Intuitive expert Dr. Grossi, who is a robotic cardiothoracic surgeon.

[00:24:46] Speaker 00:
He testified that a surgeon using borst would have wanted to keep his or her hands

[00:24:54] Speaker 00:
focused on performing the surgery with the master controls and would not have wanted to relinquish control of the masters at any point in order to do ancillary tasks like zooming, freezing, or accessing information.

[00:25:10] Speaker 00:
Because BORST is designed to perform a very complex cardiothoracic surgery.

[00:25:16] Speaker 00:
Coronary artery bypass surgery is an open heart

[00:25:20] Speaker 00:
cardiac procedure that is performed on the beating heart.

[00:25:24] Speaker 00:
So the target is in constant motion, which can't be turned on and off.

[00:25:28] Speaker 00:
So the surgeon would have wanted to keep his or her hands focused on the master control to perform the surgery.

[00:25:36] Speaker 00:
This is underbred testimony that the board agreed with, and this is on appendix page 32.

[00:25:43] Speaker 00:
And this is substantial evidence to find that there is no motivation to modify boards

[00:25:49] Speaker 00:
to have a second operating mode.

[00:25:51] Speaker 00:
And the board further agreed with Dr. Grossi that his testimony was consistent with what BORST already teaches.

[00:26:00] Speaker 00:
BORST teaches to use voice control or foot pedals to do ancillary tasks like zooming or freezing.

[00:26:08] Speaker 00:
So a person looking at BORST, if wanted to use a voice control

[00:26:14] Speaker 00:
access auxiliary information during the surgery would have used voice control or foot pedals to do that.

[00:26:21] Speaker 00:
There was no reason to modify Borst to then use the hand controls to access information when system could easily use the voice controls or foot pedals to do that.

[00:26:35] Speaker 00:
That's what Borst is designed to do.

[00:26:38] Speaker 04:
So this was all a lack of motivation, because you look precisely just at the piece of prior art and say, would one have been motivated to make these changes?

[00:26:47] Speaker 04:
Doesn't that seem to you to be kind of a narrow way of applying motivation to combine?

[00:26:54] Speaker 00:
No, Your Honor, because there has always have to be a why.

[00:26:57] Speaker 00:
Why would you want to do that with Borst?

[00:27:00] Speaker 00:
And there is no reason to do that to Borst, because Borst already has all of the work.

[00:27:06] Speaker 00:
It's simpler to have hand controls through both.

[00:27:10] Speaker 00:
But the same argument goes for voice control.

[00:27:14] Speaker 00:
If the surgeon uses voice controls to, say, access patient file, then there is no reason to then have to disassociate the master from the end control, the end effectors at that point.

[00:27:28] Speaker 02:
Am I correct in that even to get to the point where you can toggle back and forth, if you're going to use Borg, you have to modify Borg.

[00:27:37] Speaker 02:
And Dr. Renssel said there's five steps that are required in order to modify Borg to even get to the position where you're toggling back and forth.

[00:27:45] Speaker 02:
And it's those five steps that create complexity and risk to the patient.

[00:27:51] Speaker 02:
Am I correct on that?

[00:27:52] Speaker 00:
Yes, Your Honor.

[00:27:53] Speaker 02:
And that testimony was not rebutted.

[00:27:56] Speaker 00:
Absolutely, Your Honor.

[00:27:57] Speaker 00:
It's unrebutted testimony that at least five steps would be required to modify BORST to have a second operating mode, to be able to use BORST as faster control in a second operating mode to access information.

[00:28:12] Speaker 00:
And those five steps, just toggling back and forth,

[00:28:17] Speaker 00:
disassociating the master from the end effectors and stuff would add complexity and significant risk to the bores system, which is performing a very complex surgery on the beating heart.

[00:28:30] Speaker 00:
And as Dr. Grossi, the cardiothoracic surgeon has testified, again, it's completely unrebutted.

[00:28:36] Speaker 00:
that a cardiothoracic surgeon using bores would not have wanted to do that.

[00:28:42] Speaker 00:
The surgeon, if he or she needed to access information, would use voice control to do that.

[00:28:49] Speaker 00:
That's what bores teaches.

[00:28:50] Speaker 00:
There is no reason to further complicate bores' already complex system to modify it to use the hand controls to do something.

[00:29:00] Speaker 00:
That's just hindsight.

[00:29:02] Speaker 00:
reasoning for arriving at the claimed invention.

[00:29:07] Speaker 00:
And there is also the lack of a reasonable expectation of success.

[00:29:13] Speaker 00:
Oris, in its reply brief at the PTAB, embraced that disassociation would be required if Boers is to be modified.

[00:29:22] Speaker 00:
In here on appeal, they're saying that that's not needed, but

[00:29:27] Speaker 00:
that the argument that any disassociation would not be required is forfeited.

[00:29:33] Speaker 00:
And this is in appendix page 421, where Oris said that, yes, a disassociation would be required, but they argue, without any expert testimony, that the skilled artisan would have known how to configure a boar's master to engage and reengage with the surgical instruments.

[00:29:52] Speaker 00:
But the board disagreed with that.

[00:29:54] Speaker 03:
So there's nothing in the 906 patch

[00:29:57] Speaker 03:
tells you how to solve this five-step problem, right?

[00:30:00] Speaker 00:
Not with respect to burst, Your Honor.

[00:30:03] Speaker 03:
No, no, no.

[00:30:04] Speaker 03:
Just in general, is to have it do, to perform the method or whatever it is.

[00:30:10] Speaker 03:
In 906 patent, it doesn't tell you how to solve the problem of using the same hand controls for both the surgery and the securing of the additional information.

[00:30:20] Speaker 00:
906 patent does, Your Honor.

[00:30:22] Speaker 00:
906 patent says that, and this is in column 23,

[00:30:27] Speaker 00:
lines about five to 20.

[00:30:31] Speaker 00:
This is appendix page 84 of the 906 pattern.

[00:30:36] Speaker 00:
It specifically says that when transitioning from a one mode to another, the operative association between the master and the slaves is temporarily interrupted and the slave instruments are held or locked in stationary positions at the surgical site.

[00:30:57] Speaker 00:
That's how the 906 patent changes.

[00:30:59] Speaker 00:
But wait a minute.

[00:31:00] Speaker 04:
But you're saying I'm getting more confused rather than less confused.

[00:31:04] Speaker 04:
And that's Claim 51 and 53, which don't recite a disassociating limitation.

[00:31:10] Speaker 04:
So are you saying that the disassociating limitation is required in Claims 51 and 53?

[00:31:15] Speaker 04:
It just isn't recited?

[00:31:17] Speaker 00:
It's not recited.

[00:31:22] Speaker 00:
Claims 51 and 53 don't require disassociation.

[00:31:25] Speaker 00:
The 906 pattern provides one embodiment, one example of how you can do that.

[00:31:32] Speaker 00:
But it is not required in claims 51 and 53, the disassociation step.

[00:31:37] Speaker 00:
Because there are other ways of using the same master control in two separate modes of operation.

[00:31:47] Speaker 00:
In some cases, disassociation will be required.

[00:31:49] Speaker 00:
In some cases, disassociation will not be required.

[00:31:53] Speaker 00:
Claims 51 and 53 do not require disassociation.

[00:31:57] Speaker 00:
But what petitioner has not explained, has not provided any testimony on or evidence on, is how borst could be modified to have two operating modes

[00:32:09] Speaker 00:
without requiring disassociation.

[00:32:12] Speaker 03:
Which is also not in the patent itself, because locking the instruments in place is not telling you how to switch back and forth using the same hand control.

[00:32:24] Speaker 00:
Once the instruments are locked in place, then the master is toggled to the second operating mode.

[00:32:32] Speaker 00:
So that's the way that the 906 patent teaches.

[00:32:35] Speaker 03:
That's all they had to show for the combination?

[00:32:38] Speaker 00:
With respect to borst, yes, that is one... They shown those same things?

[00:32:46] Speaker 03:
That would have been the motivation to combine them?

[00:32:50] Speaker 00:
Yes, Your Honor, but that is sorely lacking in the record because a petitioner did not provide any rebuttal testimony to explain how borst would be modified to have a second operating mode.

[00:33:04] Speaker 00:
Locking in, so there has, as Dr. Rentschler provided, there are at least five steps.

[00:33:09] Speaker 00:
So you have to first toggle from mode A to mode B. I thought you said that locking in place solved the five-step problem.

[00:33:18] Speaker 00:
No, Your Honor.

[00:33:19] Speaker 00:
Locking in place is one of the five steps.

[00:33:23] Speaker 03:
So the patent doesn't have the other four steps.

[00:33:27] Speaker 00:
It does, Your Honor.

[00:33:28] Speaker 00:
It does say that the Operative Association is temporarily interrupted.

[00:33:33] Speaker 00:
It says you lock the slaves in place.

[00:33:36] Speaker 00:
It does go through many different steps, but what Dr. Drenschler testified is with respect to borst, you would have to have at least five steps, which includes toggling back and forth, which includes locking the end effectors in place.

[00:33:51] Speaker 00:
There also has to be changes in the software and the control systems.

[00:33:55] Speaker 00:
There has to be multiple steps, which Petitioner has not explained at all how

[00:34:00] Speaker 00:
how it would be done.

[00:34:01] Speaker 00:
They simply said that, oh, a person's going to learn how to do that.

[00:34:04] Speaker 03:
Well, if the measure of what they have to do is what was explained in the patent, maybe they did it.

[00:34:10] Speaker 00:
Your Honor, but the patent is talking about one way of doing it.

[00:34:16] Speaker 00:
That same method may not necessarily apply to borst.

[00:34:20] Speaker 00:
And what's lacking in the record is any explanation of how borst would have been modified.

[00:34:27] Speaker 04:
So if they had had an expert that would run through these five

[00:34:30] Speaker 04:
criteria and explain how voice could be modified, that would have been sufficient.

[00:34:36] Speaker 00:
That would have gone to the how, how it would have, could have been done.

[00:34:42] Speaker 00:
Again, it's not in the record.

[00:34:43] Speaker 00:
The how is completely missing in the record, but there's also the question of why.

[00:34:47] Speaker 00:
Do you have the motivation to combine and also for, there also has to be a reasonable expectation of success.

[00:34:54] Speaker 00:
Dr. Rentschler and Dr. Grosse.

[00:34:56] Speaker 03:
Well, why is it simpler?

[00:34:57] Speaker 03:
They have both using the handcuffs.

[00:35:01] Speaker 00:
The board agreed with intuitive experts that the Y is not there because BORST already has other simplifications in place like voice controls and foot pedals to do that.

[00:35:16] Speaker 00:
So the Y is lacking the dress.

[00:35:18] Speaker 03:
That's not particularly convincing.

[00:35:19] Speaker 03:
The fact that it has another way of doing it doesn't teach away from simplifying it by having the hand controls do both.

[00:35:27] Speaker 00:
The board also found that

[00:35:29] Speaker 00:
It would add to the complexity of BORST, which is performing a very complex surgery.

[00:35:37] Speaker 00:
So the board agreed that the Y is not there.

[00:35:39] Speaker 00:
And then the board also agreed that... Is that complexity enough?

[00:35:45] Speaker 04:
I mean, this came up in the earlier case, too.

[00:35:49] Speaker 04:
I'm not sure you were here to listen to that.

[00:35:51] Speaker 04:
I mean, you say there's no motivation to combine because it would have added to the complexity of the existing system, full stop.

[00:35:58] Speaker 04:
Is that sufficient?

[00:36:01] Speaker 00:
It would be sufficient because this is a very complex surgical procedure.

[00:36:08] Speaker 00:
I think it depends on the field of art as well.

[00:36:15] Speaker 00:
What Dr. Rentschel and Dr. Grossi also testified was the safety and efficacy.

[00:36:19] Speaker 00:
So patient safety is important.

[00:36:21] Speaker 00:
So it's not just about complexity.

[00:36:24] Speaker 04:
To point us to where the board, when the board was talking about adding to complexity, did it talk about patient safety or cost?

[00:36:34] Speaker 00:
Yes, Your Honor.

[00:36:46] Speaker 00:
on the board has talked about

[00:37:05] Speaker 00:
On pages 33 to 36, the board goes through all of the reasonings about for why there wouldn't be a motivation to combine unreasonable expectation of success.

[00:37:21] Speaker 03:
Where do they talk about complexity?

[00:37:29] Speaker 00:
On page 33, the board says, we agree with patent owner's position that adding a second operating mode into Boar's master controller would introduce disadvantages into the system, further supporting the position that there is no motivation for making these changes.

[00:37:56] Speaker 03:
Thank you, Mrs. Board Chair.

[00:38:00] Speaker 03:
We'll hear from Mr. Brown for a couple minutes.

[00:38:05] Speaker 03:
Yes, sir.

[00:38:06] Speaker 00:
Thank you, Your Honor.

[00:38:07] Speaker 00:
I know I exceeded my time.

[00:38:08] Speaker 00:
I apologize for that.

[00:38:09] Speaker 01:
That was our fault, not you.

[00:38:10] Speaker 01:
That's our fault.

[00:38:30] Speaker 01:
I'd like to start with the five steps to the five modifications to make abortion.

[00:38:36] Speaker 01:
If you look at Dr. Rentschler's testimony, one of those steps is disassociating the master from the end effect.

[00:38:42] Speaker 01:
So his opinions with respect to these modifications don't pertain to the modification that needs to be made to meet claims 51 and 53.

[00:38:49] Speaker 01:
And because his opinions with respect to these modifications are based on incorrect understanding of the claims, as this court stated in the Homeland Housewares case, it must disregard the testimony of an expert that is plainly inconsistent with the record or based on an incorrect understanding of the claims.

[00:39:07] Speaker 01:
So Dr. Runster's testimony here with these five steps cannot be relied upon in order to affirm the board.

[00:39:13] Speaker 04:
Wait, so you're arguing that the testimony should have been struck by the board?

[00:39:17] Speaker 01:
Not that it should have been struck, but that it should not have been accorded weight.

[00:39:21] Speaker 01:
Expert testimony based on incorrect understanding of the claims is not entitled to weight.

[00:39:26] Speaker 03:
That's what this court says.

[00:39:28] Speaker 03:
If disassociating means just arranging it so that you can't operate the first mode when you're in the second mode,

[00:39:37] Speaker 03:
There's nothing wrong with his saying that that's something that has to be done.

[00:39:41] Speaker 01:
Two responses to that, Your Honor.

[00:39:43] Speaker 01:
First is he said in his deposition, dissociating means all communications.

[00:39:47] Speaker 01:
But second, when he talked about Boris, he said he agreed that Wong 99 showed how you could access a network gateway without moving the end effectors.

[00:39:57] Speaker 01:
But he then went on to say, but Wong 99 doesn't show disassociating.

[00:40:01] Speaker 01:
So his opinions on these steps and what needs to be done is based on his improper understanding of the claims.

[00:40:06] Speaker 01:
And so it's not relevant to the issue before the board with this particular element.

[00:40:10] Speaker 04:
Yeah, but the problem you have, and I think we alluded to it in your earlier name, is that it's a substantial evidence case, and the board is relying on unrebutted expert testimony.

[00:40:24] Speaker 04:
And it seems like this is certainly complex enough when we're talking about all these details that maybe you could have easily rebutted.

[00:40:34] Speaker 04:
what this expert said, but there's none of that.

[00:40:38] Speaker 04:
I assume there's attorney argument about this.

[00:40:43] Speaker 04:
Why isn't it fair play for the board?

[00:40:47] Speaker 04:
to just go with that and just say, look, this is highly technical that we've already all established that it's complex.

[00:40:56] Speaker 04:
And we've got an expert crossing all the T's and dotting all the I's.

[00:41:02] Speaker 04:
And no matter what you say, they called it unrebutted expert testimony.

[00:41:06] Speaker 04:
That's unassailable, right?

[00:41:09] Speaker 01:
That's what they stated.

[00:41:10] Speaker 01:
But when you look at that actual testimony, all of it is based on requiring

[00:41:15] Speaker 01:
claims 51 and 53 to have this dissociating step and that is not required on the face of the claims and it's not required by the combination either because we pulled in Wong 99, which everyone agrees is able to access information without moving to the masters.

[00:41:30] Speaker 01:
So the testimony the board relies on is not pertinent to the issue because it's based on incorrect understanding of the claims.

[00:41:37] Speaker 01:
And so it cannot support substantial evidence from the board.

[00:41:43] Speaker 01:
And because of those legal errors, I don't think the board's decision can be sustained and it needs to be reversed.

[00:41:49] Speaker 01:
No further questions?

[00:41:51] Speaker 03:
Thank you.