[00:00:00] Speaker 00:
Our next case for argument is 21-1777, Boston Scientific versus Nebrow.

[00:00:21] Speaker 00:
Mr. Schall, please proceed.

[00:00:35] Speaker 01:
May it please the court, Pratik Shah for Appellant Boston Scientific.

[00:00:39] Speaker 01:
The PTAB's obviousness determination for the 496 patent, which relates to implant devices such as spinal stimulators that can switch between multiple stored sets of operational parameters, suffers from two main problems.

[00:00:53] Speaker 01:
First, the PTAB's reliance on the Shelton prior art rests on a fatal claim construction error.

[00:01:00] Speaker 01:
A set of operational parameters most naturally means as reinforced by the 496 specification more than one operational parameter.

[00:01:09] Speaker 01:
Because both sides agree that Shelton discloses only one type of operational parameter, Nevereau has never disputed that Shelton cannot support the PTAB's judgment under our straightforward construction.

[00:01:22] Speaker 01:
That leaves the PTAB's reliance on nap-holds.

[00:01:26] Speaker 01:
As Nevereau acknowledges, and this is on page 40 in note 5 of their appeal brief, the 496 patent requires that a plurality of sets of operational parameters be, quote, concurrently stored

[00:01:38] Speaker 01:
and selected from memory.

[00:01:40] Speaker 01:
But Knapp holds discloses only, quote, a complete set, one set

[00:01:46] Speaker 01:
of stored operational parameters, which are then accessed, reconfigured, modified to change the device's operation.

[00:01:54] Speaker 01:
As the PTAB recognized, that distinguishes NAP-HOLTS from the 496 patent selection from multiple predefined stored sets of operational parameters that require no further modification or reconfiguration.

[00:02:10] Speaker 01:
NEVRA's attempt on appeal to backfill the final written decision

[00:02:14] Speaker 01:
with what it deems substantial evidence, cannot fix the PTAB's legal error that the critical distinction as to how the parameter sets are stored and selected has, quote, no patentable significance.

[00:02:29] Speaker 03:
Did you argue below for this particular manner of how the sets of operational parameters are stored and selected is a necessary limitation in the claim?

[00:02:40] Speaker 03:
Yes your honor it's that was the core theory is that this this patent as I thought the core theory was always a debate over set of whether set of operational parameters means either one or more parameters or two or more parameters.

[00:02:55] Speaker 01:
That was the claim construction.

[00:02:57] Speaker 03:
Right and so that's what I'm really focused on.

[00:02:59] Speaker 03:
Oh okay.

[00:03:01] Speaker 03:
All your arguments against Naples today on appeal is premised on a certain

[00:03:07] Speaker 03:
conception of the claim as requiring a particular manner in how these sets of operational parameters are stored and selected.

[00:03:17] Speaker 03:
What I'm trying to figure out right now is where below, before the patent board, did you make that kind of a claim construction argument?

[00:03:24] Speaker 01:
Sure, Your Honor.

[00:03:25] Speaker 01:
So that was never in dispute that they have to be concurrently stored at the same time.

[00:03:31] Speaker 01:
So there was no claim construction on that.

[00:03:33] Speaker 01:
And I would point you to, as indication of that,

[00:03:37] Speaker 01:
Nevereau's appeal brief on page 40.

[00:03:40] Speaker 01:
And they agree with this in footnote five, because we made the argument they have to be concurrently stored.

[00:03:45] Speaker 01:
There's no dispute about it.

[00:03:46] Speaker 01:
Here's what Nevereau says.

[00:03:48] Speaker 01:
Nevereau does not dispute that the claims require the parameter sets to be concurrently stored.

[00:03:55] Speaker 01:
The reason they don't dispute that, and the reason why there is no claim construction about that particular point, is because that comes from the face of the claims.

[00:04:03] Speaker 01:
For example, claim eight is probably where you can see it most clearly, where step one is defining a set of individual parameters.

[00:04:12] Speaker 01:
Step two is storing the plurality of sets of operational parameters.

[00:04:18] Speaker 01:
And step three is selecting from one.

[00:04:20] Speaker 03:
I'm sorry, which claim are we looking at?

[00:04:22] Speaker 01:
Claim eight, Your Honor.

[00:04:23] Speaker 01:
Claim eight, OK.

[00:04:24] Speaker 01:
Yeah.

[00:04:26] Speaker 01:
Of the 496 patent.

[00:04:27] Speaker 01:
It's also, if it's easier to reproduce.

[00:04:29] Speaker 03:
Yeah, which stepper of this method claim are you referring to?

[00:04:33] Speaker 01:
So you were asking about the concurrent storage requirement, right?

[00:04:38] Speaker 03:
I'm talking about any of these manner of selecting and storing limitations.

[00:04:42] Speaker 01:
Sure.

[00:04:42] Speaker 01:
I think the only one that's really material is the concurrent storage, that the plurality of operational sets have to be concurrently stored in memory, concurrent storage.

[00:04:55] Speaker 01:
And that was the

[00:04:57] Speaker 01:
part that I read you from Nebro's appeal brief where they concede that they agree with us that they have to be concurrent.

[00:05:03] Speaker 03:
But where in the claim are we?

[00:05:06] Speaker 01:
Oh, OK.

[00:05:06] Speaker 01:
So the reason why Nebro agrees with us on that, I think the easiest place is claim eight, the method claim.

[00:05:13] Speaker 03:
Yes.

[00:05:14] Speaker 03:
Which limitation?

[00:05:15] Speaker 01:
So, storing the plurality of sets of operational parameters.

[00:05:22] Speaker 01:
Everyone agrees that storing the plurality of sets of operational parameters means they have to be concurrently stored in memory.

[00:05:32] Speaker 03:
The board obviously didn't agree with that.

[00:05:34] Speaker 01:
No, the board did.

[00:05:35] Speaker 01:
It disagreed with us on the construction of set of operational parameters, which goes to Shelton, the other prior art.

[00:05:42] Speaker 01:
And it disagreed with us, and it adopted their construction.

[00:05:45] Speaker 03:
But I thought my understanding of the entire ground for finding that Naples teaches these various limitations is that

[00:05:55] Speaker 03:
there is no requirement to have separate defined blocks of operational parameters for each different mode of Naples's operation.

[00:06:06] Speaker 03:
All that matters for purposes of matching Naples to these claims and these claim limitations is the fact that

[00:06:13] Speaker 03:
Naples operates in different modes for different therapies and each of those modes slash therapies is associated with its own set of operational parameters and that's good enough.

[00:06:26] Speaker 03:
You don't need those

[00:06:29] Speaker 03:
particular associated sets of parameters to be completely separately blocked off from each of the other various sets of parameters that are associated with other modes of Naples's operation.

[00:06:42] Speaker 03:
So necessarily the board obviously did not accept your conception of these claims and what I'm trying to figure out is where below did you say hey this is how we understand these claims we understand these claims to necessarily require

[00:06:59] Speaker 03:
all of these very separately blocked off sets of parameters to be separately stored from each other for each different mode of operation.

[00:07:07] Speaker 01:
Yeah.

[00:07:07] Speaker 01:
So I think the clearest place I'll point you to is page 40 and 41 of the final written decision, which both describes our argument and then it describes why the final written decision rejected it.

[00:07:20] Speaker 01:
And so our argument, Your Honor, to the PTAB was this.

[00:07:25] Speaker 03:
Context switching.

[00:07:27] Speaker 01:
Exactly, that NAPHOLTS doesn't perform that context switch, that it doesn't swap out one concurrently stored set of operational parameters with another concurrently stored set of operational parameters.

[00:07:42] Speaker 01:
Rather, what NAPHOLTS did was have a master set of operational parameters, and then it would reconfigure, if it was going to switch therapies, it would then go in and reconfigure and pull out

[00:07:55] Speaker 01:
different operational parameters to create a new second set.

[00:08:00] Speaker 01:
And what we said is those are two different things.

[00:08:04] Speaker 01:
Those are two different things.

[00:08:05] Speaker 01:
They may get to the same result, but they get there in different ways.

[00:08:09] Speaker 01:
We get there through two concurrently stored sets that you just swap.

[00:08:13] Speaker 01:
They get there through one master set, and then there's an algorithm that pulls them out.

[00:08:17] Speaker 03:
I completely understand this, but as I understand the board, when the board says,

[00:08:21] Speaker 03:
This context switching principle in A41, we do not read this as a requirement of the challenge claims.

[00:08:27] Speaker 03:
And so therefore, it's not a necessary part of the analysis of whether the reference discloses the limitations.

[00:08:36] Speaker 03:
My understanding, what the board is saying to you, is that this was never raised in terms of claim construction, in terms of understanding how these claims

[00:08:45] Speaker 03:
are limited in how they operate.

[00:08:48] Speaker 03:
And so what we have here is a fact-finding question now on substantial evidence of whether or not Naples actually discloses its limitations.

[00:08:56] Speaker 01:
So Your Honor, I guess I would push back on the characterization of the fact-finding question because we actually don't

[00:09:01] Speaker 01:
Quibble on the facts with the board's reading of how the two Sources work.

[00:09:06] Speaker 01:
We actually agree with the board that it's right nap volts does have one master set and then it creates as it says it creates a second set by going in and pulling it out right and and we and we agree with their characterization of our patent that it has a concurrent

[00:09:23] Speaker 01:
concurrently stored sets, where we disagree it's illegal.

[00:09:27] Speaker 03:
That's your specification, though, not the claim.

[00:09:29] Speaker 03:
Well, I think claim eight is- But when the board is describing the specification, your patent specification, you don't dispute that description of your patent specification.

[00:09:40] Speaker 01:
Correct.

[00:09:40] Speaker 01:
And where we think the disconnect, then, is saying that that's not also part of the claims.

[00:09:47] Speaker 01:
Because again, as Nevereau, on page 40 and note five of their brief,

[00:09:51] Speaker 01:
they can see that the claims, the claims, the 496 patent claims, require concurrent storage of the parameter sets.

[00:10:00] Speaker 01:
And that, we think, also comes off of the face of ClaimAid.

[00:10:04] Speaker 01:
And so if that is common ground, that the claims here require concurrent storage of the separate operational parameter sets, then even under the board's description of the two sources,

[00:10:18] Speaker 01:
it's all correct until its conclusion that that's not a patentable significance.

[00:10:23] Speaker 01:
Because that is, it is two different things.

[00:10:25] Speaker 01:
It is two patentably different things to say that you swap between two concurrently stored sets, or as the board describes it, that you disclose modifying a set of operational parameters to create

[00:10:40] Speaker 01:
a second set of operational parameters irrespective of whether the modification is replacing a single parameter or the entirety of the original set and irrespective of how that process occurs.

[00:10:53] Speaker 01:
So I think the key portion

[00:10:55] Speaker 01:
I think we're all in agreement.

[00:10:56] Speaker 01:
The key portion is 40 to 41 of the final written decision.

[00:11:00] Speaker 01:
I think we're all in agreement as to how the two references differ.

[00:11:04] Speaker 01:
I think the dispute is over the legal conclusion that that is not patentably significant.

[00:11:09] Speaker 01:
Because Nevereaux agrees, and I think it has to based on the face of Claims 8, that the 496 patent claims require concurrent storage,

[00:11:20] Speaker 01:
of the distinct operational sets, then I think the final written decision's legal conclusion has to be wrong.

[00:11:28] Speaker 03:
This is not part of the appeal, but is there some patentable significance in having your operational plan separately stored as opposed to some broader set that you're kind of picking and choosing from?

[00:11:42] Speaker 03:
There is, Your Honor.

[00:11:43] Speaker 03:
From the perspective of a patient or a physician, it would seem like it's pretty identical.

[00:11:50] Speaker 01:
But yeah, so the reason it matters after talking to the people, and you're right, it's outside the record and it's outside the scope of appeal, but I ask the same question to the technical people that do this.

[00:11:59] Speaker 01:
And the answer is this.

[00:12:00] Speaker 01:
This, you have to remember, is like over 20 years ago.

[00:12:04] Speaker 01:
And one of the problems with these implant devices was battery power.

[00:12:09] Speaker 01:
And anything back then that you could do, the microprocessors were much less powerful and had a bigger battery drain.

[00:12:17] Speaker 01:
Anything you could do to simplify the process from an electronic standpoint would help save battery life and help make things more seamless.

[00:12:28] Speaker 01:
And so this parameter context switching requires no algorithm, nothing.

[00:12:33] Speaker 01:
It's just stored.

[00:12:34] Speaker 01:
in two discrete sets and they swap.

[00:12:36] Speaker 01:
Whereas, in order to make it work, as the final written decision describes at page 41 of the appendix, under nap folds, it has to run an algorithm to create those further sets.

[00:12:51] Speaker 01:
And that is an extra programming step or battery power drain.

[00:12:55] Speaker 01:
And so that is the reason why this was an innovation.

[00:13:00] Speaker 01:
And again, the board agrees with us that these are two different things.

[00:13:05] Speaker 01:
At appendix page 39, it acknowledges explicitly both systems comprise a defined number of operational parameters, albeit accessed in different manners.

[00:13:17] Speaker 01:
Again, I think we don't have any substantial evidence dispute here with the board.

[00:13:22] Speaker 01:
We agree that our disagreement comes that they boxed the last step in saying that it's not of patentable significance, because both sides agree.

[00:13:32] Speaker 01:
Both sides agree.

[00:13:33] Speaker 01:
Quoting from Nevereau's brief at footnote 5, Nevereau does not dispute that the claims require the parameter sets to be concurrently stored.

[00:13:43] Speaker 01:
There is only one patent in this case.

[00:13:45] Speaker 01:
that has concurrent storage of multiple parameter sets, and that's the 496 patent, not napholz.

[00:13:54] Speaker 00:
Just to be clear, it's only claim eight, right?

[00:13:58] Speaker 00:
It requires the concurrent storage?

[00:14:00] Speaker 01:
No, Your Honor.

[00:14:01] Speaker 01:
The parties have treated all the claims except for claim 14.

[00:14:06] Speaker 01:
the same and so never a statement that I just read from Would would apply to all of the claims except for I?

[00:14:15] Speaker 00:
Don't see a limitation in crime one for example of story.

[00:14:19] Speaker 00:
I don't see any storage limitation

[00:14:21] Speaker 01:
Right.

[00:14:22] Speaker 00:
So why in the world would I read a storage limitation in claim one?

[00:14:26] Speaker 01:
So Your Honor, I think the way that this has been understood.

[00:14:30] Speaker 00:
It's irrelevant.

[00:14:30] Speaker 00:
This is a question of law.

[00:14:31] Speaker 00:
You can't stipulate your question of law, can you?

[00:14:34] Speaker 01:
No, Your Honor.

[00:14:35] Speaker 01:
So I think the way you would get there in claim one is there is a selection means in claim one.

[00:14:45] Speaker 01:
Selection means for selecting one of the plurality of sets of operational parameters.

[00:14:50] Speaker 01:
That selection means as never wrote never just never agreed that that would be a means-plus-function claim and this is a This is claim one the apparatus that would satisfy that selection means and I your honor I know this is convoluted but just to finish the structure would be

[00:15:15] Speaker 01:
The microcontroller that's described at JA 74, which is column 17, lines 32 to 43, of that patent, which corresponds to figures 6 through 8 of the patent, which have that memory table, which show the concurrent storage.

[00:15:34] Speaker 01:
But, Your Honor, if you can't get there on claim 1, then claim 8.

[00:15:39] Speaker 01:
We're happy for this court to simply reverse on claim eight, where I agree it's most explicit, the concurrent storage requirement that never concedes.

[00:15:50] Speaker 01:
And I know I'm out of time.

[00:15:53] Speaker 03:
Where did you argue claim eight separately from the other claims in this manner?

[00:15:59] Speaker 01:
Your honor, we didn't argue them separately.

[00:16:02] Speaker 03:
We made the same arguments with respect to- And we see there's a big fight over the meaning of set of operational parameters, which is claim one.

[00:16:10] Speaker 03:
And that's where you made the argument on appeal to infuse into that claim element a lot of limitations as to how

[00:16:23] Speaker 03:
and the manner of selecting, but I just don't remember this claim eight discussion at all.

[00:16:29] Speaker 01:
So your honor, just to be clear, we're not trying to read that into a set of operational parameters.

[00:16:35] Speaker 01:
That was the only claim construction dispute below.

[00:16:38] Speaker 01:
I must have misread your blue brief then.

[00:16:41] Speaker 01:
We are reading it in...

[00:16:42] Speaker 01:
We're reading it based on the claims, which again, NEBRO agrees with us that you have to have this concurrent storage.

[00:16:48] Speaker 01:
Whether you want to locate that instead of operational parameters, I don't think it goes in there.

[00:16:53] Speaker 01:
I think it comes from these other elements of the claims.

[00:16:56] Speaker 01:
But the point is that there isn't a dispute.

[00:16:59] Speaker 01:
There has never been a dispute in this case that it requires that at least some of these claims, and maybe it's just claim made is the easiest place to see it, but at least some of these claims require concurrent storage

[00:17:12] Speaker 01:
of the plurality of sets of operational parameters.

[00:17:16] Speaker 01:
That's why there was no claim construction on this element.

[00:17:19] Speaker 01:
There's never been a dispute about it.

[00:17:21] Speaker 00:
Here's the problem.

[00:17:22] Speaker 00:
Your problem with me, Mr. Shaw, is that I think Napholz discloses multiple sets of operational parameters.

[00:17:35] Speaker 00:
I don't agree with you that when they say a set, that's it.

[00:17:38] Speaker 00:
I think that when they modify or reconfigure that set to create a second set, that is, in fact, a plurality of sets.

[00:17:46] Speaker 00:
Okay?

[00:17:46] Speaker 00:
So that's where I am.

[00:17:47] Speaker 00:
That's my plain and ordinary understanding of what the word plurality of sets means and reading Naples in the same manner that the board did in this case.

[00:18:01] Speaker 00:
So now you're saying to me, but that can't be right, Judge, because

[00:18:06] Speaker 00:
There is a separate requirement that the plurality of sets have to both be concurrently stored.

[00:18:13] Speaker 00:
So it can't be that you take one set, modify it, and replace it in storage and create a plurality of sets.

[00:18:22] Speaker 00:
Problem is, I don't see that as having been the argument in this case.

[00:18:26] Speaker 00:
What am I missing?

[00:18:27] Speaker 01:
Your Honor, that was our argument below it.

[00:18:30] Speaker 01:
As you can see from final written decision, page 40, where the P tab itself describes our argument.

[00:18:37] Speaker 01:
that critical to performing the context switch is that you have the two sets in memory so that you can just swap them.

[00:18:47] Speaker 01:
That's been the whole theory.

[00:18:49] Speaker 01:
That's the foundation of our patent is that you have multiple sets stored in memory and that parameter context switching is just swapping the two sets.

[00:18:59] Speaker 01:
And so that has always been our theory.

[00:19:01] Speaker 01:
And it's right.

[00:19:02] Speaker 03:
The board said that wasn't part of the claims.

[00:19:05] Speaker 03:
And so now you're appealing that.

[00:19:08] Speaker 03:
And they don't disagree with us.

[00:19:10] Speaker 03:
For now, I'm trying to understand.

[00:19:12] Speaker 03:
I know you've got a characterization of their footnote 5.

[00:19:15] Speaker 03:
But right now, I just need to know, where in your blue brief do you call out claim 8?

[00:19:21] Speaker 01:
aware in our blue brief.

[00:19:22] Speaker 01:
What, Your Honor?

[00:19:23] Speaker 03:
I'm sorry.

[00:19:24] Speaker 03:
Do you call out claim eight?

[00:19:26] Speaker 01:
Oh, it's represented on the front cover.

[00:19:29] Speaker 01:
Oh, sure.

[00:19:30] Speaker 03:
But I'm talking about in the argument section of your brief.

[00:19:33] Speaker 03:
Sure.

[00:19:33] Speaker 03:
I feel right now that I must have overlooked something when I read your blue brief, because I don't recall any argumentation as to claim eight.

[00:19:46] Speaker 01:
We do, Your Honor, in terms of we do rely on claim eight.

[00:19:51] Speaker 01:
Again, it's reproduced as a representative claim.

[00:19:54] Speaker 01:
It's there in the background on page seven.

[00:19:56] Speaker 01:
And then in the argument section, if you'll just bear with me, I'll have to find it.

[00:20:02] Speaker 00:
You want to do it on rebuttal?

[00:20:03] Speaker 00:
Yeah.

[00:20:05] Speaker 00:
Let's allow Mr. Cordo, please.

[00:20:07] Speaker 00:
OK.

[00:20:07] Speaker 01:
Yep.

[00:20:08] Speaker 01:
Fair enough.

[00:20:15] Speaker 01:
Thank you, Your Honors.

[00:20:25] Speaker 04:
Good morning.

[00:20:28] Speaker 04:
May it please the court?

[00:20:30] Speaker 04:
Boston Scientific has framed the dispute here as whether the word set requires two or more parameters.

[00:20:36] Speaker 04:
But what it's really arguing is that parameters within a set must be physically grouped together in memory and separated from parameters belonging to other sets.

[00:20:46] Speaker 04:
So what it's doing here is trying to read the memory table of figure six into the claims.

[00:20:51] Speaker 04:
Now, the board addressed this argument and rejected it, because while the claims do require the sets to be stored somewhere, which is what we noted in our brief, and as our expert acknowledged, the claims are agnostic as to the precise manner in which the sets are stored and selected from memory.

[00:21:10] Speaker 04:
And that's consistent with the plain meaning of the word set, which merely conveys a conceptual or functional relationship between its members.

[00:21:18] Speaker 04:
That is, if there are multiple parameters,

[00:21:21] Speaker 04:
the parameters must be associated in some way with a predefined grouping.

[00:21:26] Speaker 00:
But that grouping doesn't... Your problem is claim eight requires storing the plurality of sets of operational parameters.

[00:21:35] Speaker 00:
And what Napholz discloses is modifying or reconfiguring parameters.

[00:21:40] Speaker 00:
So you might be able to get me to the point where I agree that that is a

[00:21:46] Speaker 00:
does create a plurality of sets of operational parameters because you've got one and you modify them until you've got a new one.

[00:21:53] Speaker 00:
So now you've got a plurality.

[00:21:55] Speaker 00:
But where is the plurality being stored?

[00:21:58] Speaker 00:
I mean, Claim 8 seems to require simultaneous storing of the plurality, not overwriting of the plurality.

[00:22:05] Speaker 04:
Yes, your honor, as an initial matter, Boston Scientific has never argued a claim eight independently.

[00:22:11] Speaker 04:
And so claim eight falls with claim one.

[00:22:13] Speaker 04:
And in fact, the board noted at appendix page 45 that Boston Scientific's arguments with respect to claim eight were identical with respect to claim one.

[00:22:24] Speaker 00:
Well, I think that at least Mr. Shaw is arguing today

[00:22:28] Speaker 00:
that the same storing argument applies to claim one.

[00:22:30] Speaker 00:
Now I surely don't see that limitation in claim one, no matter how creative he may get, but he also suggests that you all agreed throughout to the concurrent storage requirement.

[00:22:44] Speaker 04:
Well, Your Honor, I think he's placing too much weight on the agreement at issue.

[00:22:48] Speaker 04:
That is, the parties agree that the sets are stored somewhere in memory.

[00:22:54] Speaker 04:
They disagree as to whether Figure 6's requirement as to how those sets were stored is a requirement of the claims.

[00:23:02] Speaker 04:
Now, in Napvolz, the physician defines therapies comprising a combination of parameters that have been chosen by the physician to treat a particular patient

[00:23:13] Speaker 04:
in the patient's conditions.

[00:23:16] Speaker 04:
And those parameters and allowable ranges for parameters and programmable options are all stored in the device.

[00:23:23] Speaker 04:
And as the board noted on appendix page 38, relying on the bottom of column 6 of NAP-HOLDS, once the therapies are stored, the device contains all possible sets of operational parameters available to a patient.

[00:23:38] Speaker 04:
Now, the board also turned to column nine in figure seven, which may... Can I ask you?

[00:23:43] Speaker 02:
I'm having a hard time conceptually understanding the difference here.

[00:23:46] Speaker 02:
And let me see if this is it.

[00:23:49] Speaker 02:
Suppose there are ten different parameters, and you have to combine more than one of them for each set.

[00:24:00] Speaker 02:
a set of 1, 2, and 3, and you have a set of 1, 2, and 4.

[00:24:04] Speaker 02:
Is there a view that in order to come under their patent, those have to be grouped together, and you just select between the two, and assume this is the way Knapp holds argues, it doesn't

[00:24:18] Speaker 02:
It has 1 through 10 also.

[00:24:19] Speaker 02:
It doesn't specifically group them together, but you can program and say therapy 1 equals 1, 2, and 3, and therapy 2 equals 1, 2, and 4.

[00:24:29] Speaker 02:
And so it switches between the two.

[00:24:31] Speaker 02:
And even though 1 through 10 are all stored together, there's still two different sets there.

[00:24:37] Speaker 02:
Is that the difference here?

[00:24:39] Speaker 04:
That's exactly right, Your Honor.

[00:24:40] Speaker 04:
Boston Scientific is reading this data structure

[00:24:43] Speaker 04:
requirement into the claims.

[00:24:45] Speaker 04:
NAPALT's pre-defines therapies and associates specific parameters with those therapies, and then selects a therapy based on the patient's heart rate and an activity level.

[00:24:57] Speaker 04:
So there is some programming with it.

[00:25:00] Speaker 02:
So if we, and your friend did give somewhat

[00:25:04] Speaker 02:
maybe somewhat convincing you, I'm not really sure, I just heard it today, that the reason to do it their way versus your way is it might lessen battery power because you're just switching between one and the other and it doesn't require any kind of further processing or pointing.

[00:25:19] Speaker 02:
I'm not sure that there's much more processing or pointing if it's choosing between therapy one and therapy two that already have predefined values.

[00:25:28] Speaker 02:
But if there is some kind of difference there, and their patent does require that concurrent storage in the database the way they said, does NAP-HOLT show that?

[00:25:39] Speaker 04:
Well, I'll answer the first part of your question, Your Honor.

[00:25:42] Speaker 04:
That is, what is the purpose of storing sets separately?

[00:25:46] Speaker 04:
Boston Scientific didn't point to anything in the claims or the patent specification that would support that purpose.

[00:25:52] Speaker 04:
And indeed, the claims culminate with the limitation

[00:25:56] Speaker 04:
whereby the operation of the implant device may be changed through selection of a different set.

[00:26:01] Speaker 04:
So these claims are really about the ability for a patient to change the operation of the device, irrespective of how the set is stored.

[00:26:09] Speaker 04:
In fact, the preamble of claim eight makes that clear.

[00:26:12] Speaker 04:
It refers to a method of changing the operating parameters.

[00:26:16] Speaker 04:
And that is consistent with the background of the invention in column two, which states that the invention solves the need

[00:26:24] Speaker 04:
for patients to readily make appropriate changes to the operating parameters.

[00:26:28] Speaker 04:
It says nothing about conserving memory or battery requirements.

[00:26:34] Speaker 04:
With regard to nap volts, the parameters are all predefined in programming.

[00:26:41] Speaker 04:
And that programming is uploaded to the device.

[00:26:43] Speaker 04:
And the system can swiftly switch between modes, as the board found at appendix page

[00:26:49] Speaker 04:
So even if that were the purpose of the patent, I think Napalm fulfills that purpose by efficiently switching through therapies and changing modes of operation, Your Honor.

[00:27:05] Speaker 04:
I would like to look again at claim eight, Your Honor.

[00:27:11] Speaker 04:
Boston Scientific alleges for the first time today that

[00:27:15] Speaker 04:
that claim eight requires discrete storage in separate sets.

[00:27:21] Speaker 04:
It has never made that argument below.

[00:27:23] Speaker 04:
But even still, I don't think that is correct based on the claim reading of the claim.

[00:27:27] Speaker 00:
It refers to- When you say it didn't make it below, I mean, I thought the concurrent storage idea was made.

[00:27:33] Speaker 00:
Is that not right?

[00:27:37] Speaker 04:
The parties agreed that the sets must be stored in memory.

[00:27:40] Speaker 04:
But there was no agreement and no argument as to how the sets were stored.

[00:27:46] Speaker 00:
No, but the word concurrent has meaning.

[00:27:48] Speaker 00:
Did the parties agree that they had to be concurrently stored?

[00:27:53] Speaker 04:
Concurrently in the sense that all the parameters belonging to the set are stored, not that they are separately stored as discrete categories.

[00:28:02] Speaker 00:
the plurality of sets.

[00:28:04] Speaker 00:
A plurality of sets means more than one set.

[00:28:07] Speaker 00:
What exactly was agreed to?

[00:28:09] Speaker 00:
Where can I find this agreement about concurrent storage?

[00:28:14] Speaker 04:
Well, Your Honor, I don't think that is in the record below, because there was no express agreement.

[00:28:21] Speaker 04:
I think it's just that Boston Scientific was trying to read

[00:28:25] Speaker 04:
storage requirements into its obviousness analysis.

[00:28:29] Speaker 03:
Here's I think maybe what the entire panel is struggling with is trying to understand what you are apparently agreeing to at footnote five of your red brief where you say

[00:28:44] Speaker 03:
Never does not dispute that the claims require the parameter sets to be concurrently stored now there could be competing differing understandings of what concurrently stored means you might mean one thing and We might be thinking another and certainly the other side's thinking something

[00:29:03] Speaker 03:
So what is it that you are saying that you don't dispute when you say that yes, of course the claims require the parameter sets to be concurrently stored?

[00:29:15] Speaker 03:
Yes, you want us to believe that that doesn't require

[00:29:19] Speaker 03:
Separate storage of separate sets of operational parameters, then what are you saying?

[00:29:26] Speaker 04:
Yes, you're right.

[00:29:28] Speaker 04:
Yes, you're right.

[00:29:29] Speaker 04:
We are agreeing that the parameters within the sets have to be stored in memory somewhere, and that's all that our... But that's not what you say.

[00:29:39] Speaker 00:
Your footnote says the parameter sets

[00:29:42] Speaker 00:
concurrently stored, not parameters within each set are stored.

[00:29:47] Speaker 00:
The same sets have to be concurrently stored.

[00:29:50] Speaker 00:
That would, by the plain language of what you've agreed to, suggest that there are two sets of parameters that are stored at the same time.

[00:30:00] Speaker 04:
So I don't think that's the implication, Your Honor, and if I may, as an example... Well, it is the implication of what you wrote.

[00:30:07] Speaker 00:
It may not be what you mean or what you want, but, you know, that's what it says.

[00:30:13] Speaker 04:
Fair enough, Your Honor.

[00:30:14] Speaker 04:
As an example, my son plays with Lego sets, and he has various sets corresponding to various structures.

[00:30:20] Speaker 04:
the White House Empire State Building Eiffel Tower.

[00:30:24] Speaker 04:
Now he sometimes puts the Legos in their respective boxes such that they are separately delineated.

[00:30:30] Speaker 04:
And other times, oftentimes, he'll pour all the boxes into a single basket.

[00:30:34] Speaker 04:
When he does that, the basket contains

[00:30:38] Speaker 04:
separate sets concurrently stored.

[00:30:40] Speaker 04:
That is, each Lego piece is associated with a predefined set and all the sets are within a single structure.

[00:30:48] Speaker 04:
The mere fact that the Lego pieces are in a single structure doesn't somehow negate the fact that they are all part of sets.

[00:30:56] Speaker 00:
I'm not sure that's right because it's more like

[00:30:59] Speaker 00:
He started with the Washington Monument and took out the columns and replaced them, i.e.

[00:31:06] Speaker 00:
reconfigured or modified them, with the peak of the Eiffel Tower so the columns no longer exist.

[00:31:12] Speaker 00:
That's not two sets.

[00:31:14] Speaker 00:
concurrently stored.

[00:31:15] Speaker 00:
That's one new replacement set, isn't it?

[00:31:19] Speaker 04:
In that specific example, yes, Your Honor, but that is not how... That's what happens in NAPLTS.

[00:31:24] Speaker 00:
In NAPLTS, they modify... The only way you get to two sets is they modify or reconfigure some of the parameters of the first set.

[00:31:31] Speaker 04:
No, Your Honor, that isn't correct.

[00:31:33] Speaker 04:
Respectfully, the board relies expressly on claim 27 of napholz.

[00:31:38] Speaker 02:
Is that the one that talks about the two separate therapies and switching between the two?

[00:31:43] Speaker 02:
Is that your view of where we can find evidence for concurrently stored sets of parameters in napholz?

[00:31:52] Speaker 02:
Yes, and I mean it's not super specific But maybe it's enough substantial evidence that therapy one includes one set of parameters in therapy to includes a separate set and then switches between the two That's right your honor.

[00:32:06] Speaker 03:
That's one case different therapies the the parameter the parameters that are associated with each therapy and

[00:32:14] Speaker 03:
Is that stored somewhere as information like word for therapy number one?

[00:32:19] Speaker 03:
We're talking about parameters a B C and D And is that list of a B C and D?

[00:32:28] Speaker 03:
Parameters associated with therapy one stored somewhere in Naples It is your honor we know this number one because of claim 27 which refers so in that sense.

[00:32:40] Speaker 03:
There's a

[00:32:41] Speaker 03:
set of operational parameters that is stored associated with therapy one.

[00:32:49] Speaker 03:
The parameters themselves, but the listing of the parameters.

[00:32:53] Speaker 03:
That's correct.

[00:32:54] Speaker 03:
Is that what you mean by concurrently stored?

[00:32:58] Speaker 03:
Do we agree that the claims require some kind of concurrent storage?

[00:33:03] Speaker 04:
We agree that there must be concurrent storage of associations of parameters.

[00:33:10] Speaker 04:
That's all that the word set requires.

[00:33:12] Speaker 04:
It doesn't require

[00:33:13] Speaker 04:
concurrent storage of delineated data structures comprising only those parameters that are separated from others.

[00:33:21] Speaker 04:
And I think NAPALT does disclose that not only in claim 27 but as well as in the bottom of column 6 on which the board relied that refers to customizing the device for a particular patient that is choosing parameters within the therapies.

[00:33:37] Speaker 03:
Were there any claim construction

[00:33:40] Speaker 03:
disputes below, like everybody's briefs are broken up.

[00:33:45] Speaker 03:
There's the claim construction section, then there's the reference discussion, then there's the patentability discussion.

[00:33:52] Speaker 03:
In the claim construction, was there any argument, debate between the sides as to

[00:33:59] Speaker 03:
whether any claim element in any claim necessarily requires this idea of having individual blocks of individual parameters separately stored from other

[00:34:15] Speaker 03:
blocks of parameters for other therapies?

[00:34:19] Speaker 04:
Not in the context of claim construction, Your Honor, which points to the odd way that Boston Scientific has litigated this issue, is they've argued all along that the only claim construction issue is whether the word set requires two or more parameters.

[00:34:33] Speaker 04:
But what they're trying to do is to read these other storage requirements into the word set through its obviousness analysis.

[00:34:42] Speaker 04:
And that is simply improper.

[00:34:44] Speaker 04:
I think the reason it didn't frame it.

[00:34:46] Speaker 00:
Wait, wait, wait.

[00:34:46] Speaker 00:
It's not whether the word set.

[00:34:48] Speaker 00:
It's whether the term a plurality of set's plural, right?

[00:34:53] Speaker 00:
That's what they say is two or more.

[00:34:55] Speaker 00:
Not the word set, which would actually suggest singular.

[00:34:57] Speaker 00:
That's not what the claim says.

[00:34:59] Speaker 04:
Sure, Your Honor.

[00:35:01] Speaker 04:
So the claim refers to a plurality of sets.

[00:35:03] Speaker 04:
Certainly there must be more than one set.

[00:35:05] Speaker 04:
But their claim construction argument is that a set must contain more, two or more parameters.

[00:35:12] Speaker 04:
Their claim construction argument, both below and on appeal, doesn't match with the obviousness arguments they're trying to make by reading Figure 6 into the claims.

[00:35:22] Speaker 00:
I don't understand how a set could be a singular thing.

[00:35:28] Speaker 04:
Well, Your Honor, in the colloquial sense, I think I could have a key chain, a key ring with multiple keys or a single key, and still fairly inaccurately describe that as a set.

[00:35:40] Speaker 04:
but more significant.

[00:35:42] Speaker 00:
How could you describe a single key as a set of keys?

[00:35:45] Speaker 04:
Well, because it's pre-associated with some function, for example, opening the doors to my house, for example.

[00:35:53] Speaker 04:
But I think even setting aside the colloquial definition, the board relied on- Which didn't resonate with me at all, so good.

[00:35:59] Speaker 00:
Set that one aside.

[00:36:00] Speaker 00:
What else you got?

[00:36:00] Speaker 04:
Sure, Your Honor.

[00:36:01] Speaker 04:
The board relied expressly on mathematical definitions, which acknowledged that the word set is broad enough to cover not only two or more members, but also a single member.

[00:36:13] Speaker 04:
And the board found that that is consistent with the claim language here.

[00:36:17] Speaker 04:
It refers to an implant device, not a device containing or operated using multiple parameters, but any device.

[00:36:25] Speaker 03:
I think what you want to get to is that Naples teaches under either party's construction.

[00:36:30] Speaker 03:
set of operational parameters, because of course NAPALS is dealing with multiple parameters for each of its associated therapies.

[00:36:39] Speaker 04:
Yes, Your Honor, that's exactly right, which is why the court doesn't even need to read to reach the claim construction issue as framed by Boston Scientific.

[00:36:49] Speaker 04:
No one disputes the NAPALTS discloses that its modes of operation contain multiple parameters.

[00:36:55] Speaker 04:
And that's shown in the Medtronic manual at appendix page 745 as well.

[00:37:00] Speaker 04:
The issue here is whether storage requirements are narrowed the scope of the claim as described.

[00:37:08] Speaker 00:
Okay, counsel, we are beyond your time.

[00:37:10] Speaker 00:
Yes, your honor.

[00:37:10] Speaker 00:
Thank you.

[00:37:11] Speaker 00:
Let's have Mr. Shaw use his rebuttal time, please.

[00:37:23] Speaker 00:
You don't necessarily just restore all his rebuttal time and give him what he has left.

[00:37:30] Speaker 00:
Pardon?

[00:37:32] Speaker 00:
Oh, he went over?

[00:37:33] Speaker 00:
Oh, yeah.

[00:37:34] Speaker 00:
Give him two minutes.

[00:37:35] Speaker 00:
I'll give him two minutes.

[00:37:39] Speaker 02:
Can you start by showing me where in the blue brief what the discussion today we've had about how they're stored versus

[00:37:49] Speaker 02:
one or two sets of parameters is because I tell you when I read this brief, the blue brief, I thought all we're talking about is does the claim construction require multiple parameters in each set and not anything about how those multiple parameters are stored.

[00:38:07] Speaker 02:
It certainly doesn't seem listed in your table of contents that way.

[00:38:12] Speaker 02:
Maybe there's some text in the body somewhere.

[00:38:15] Speaker 01:
Yes, your honor, it would be in the nap fold section because this this again doesn't apply to Shelton because everyone agrees Shelton Rises or falls on whether there is a set of operational parameters But this this discussion we're having about the concurrent storage of the sets like more than one set being concurrently stored applies to napple so that is under our discussion in napples, which is

[00:38:42] Speaker 01:
pages 33 through 36.

[00:38:44] Speaker 02:
Sure, but even that starts off with the subheading that NaPOLT discloses only a single set of operational parameters.

[00:38:53] Speaker 01:
Right, and the key there is, and it's if you read

[00:38:58] Speaker 01:
on that same page.

[00:38:59] Speaker 01:
Accordingly, Knapp-Holtz does not disclose multiple sets, i.e.

[00:39:03] Speaker 01:
a plurality of operational sets that are stored concurrently in memory as the 496 patent requires.

[00:39:12] Speaker 01:
That's what this appeal comes down to is does Knapp-Holtz actually store multiple sets

[00:39:19] Speaker 01:
concurrently as the patent requires.

[00:39:22] Speaker 00:
When you say, that's what this appeal comes down to, really?

[00:39:25] Speaker 00:
Page 36 of your brief, a single sentence, that's what the appeal comes down to?

[00:39:29] Speaker 00:
No, I mean... The appeal can be wrapped up in this one important sentence at the bottom of page 33 of your brief.

[00:39:34] Speaker 01:
No, you're right.

[00:39:34] Speaker 01:
I just meant the colloquy we've been having about concurrent storage.

[00:39:38] Speaker 01:
Obviously, there's a whole lot of briefing on multiple issues.

[00:39:41] Speaker 01:
I just meant that as a

[00:39:42] Speaker 02:
But that doesn't even explain the storage issue in the way we've been talking about it, because we've been talking about, NaPulse at least shows two different therapies, which can be read as showing two different sets.

[00:39:55] Speaker 02:
None of this addresses whether those two different therapies are confirmed storage or not.

[00:40:02] Speaker 01:
So Your Honor, they make the argument that their claim 27, the two different therapies,

[00:40:10] Speaker 01:
Well, it's not just them, it's the board.

[00:40:12] Speaker 01:
No, Your Honor.

[00:40:14] Speaker 01:
Respectfully, I disagree with that.

[00:40:15] Speaker 01:
When the board characterizes nap-holds, it characterizes it not as having two separately predefined score sets.

[00:40:25] Speaker 01:
Instead, here's how the board characterizes it.

[00:40:27] Speaker 01:
And I know counsel said that the board cites claim 27 and explains it as they do.

[00:40:34] Speaker 01:
That is not true.

[00:40:36] Speaker 01:
There is nowhere in this final written decision.

[00:40:38] Speaker 02:
OK, I think you're right about that.

[00:40:40] Speaker 02:
But let me get back to the problem is we're still struggling with or at least I'm still struggling with

[00:40:46] Speaker 02:
these very detailed arguments about does it require them to be stored in specific groupings or does it just require storage of pointers to those specific groupings, which is what I understand to be the issue.

[00:40:59] Speaker 02:
Where does it address that in this blueberry?

[00:41:01] Speaker 01:
So the concurrent storage requirement

[00:41:06] Speaker 01:
Is that the key to parameter context switching in the 496 patent and this is all over the specification of the patent and the claim is you're going you're way over time I answer my specific question that specific dispute we're having between

[00:41:21] Speaker 02:
Concurrent storage of the actual grouping versus a pointer to different groupings.

[00:41:25] Speaker 02:
Is that in the blue?

[00:41:26] Speaker 01:
Yes, your honor That is that's in our discussion of nap volts, which is the only issue.

[00:41:31] Speaker 01:
It's relevant to pages 33 to 30.

[00:41:33] Speaker 01:
I mean, there's only three pages here.

[00:41:36] Speaker 01:
Yes Okay

[00:41:43] Speaker 02:
And if that's the important part of this piece.

[00:41:45] Speaker 01:
OK, so here it is.

[00:41:46] Speaker 01:
It's in that same paragraph.

[00:41:48] Speaker 01:
Accordingly, Naples does not disclose multiple sets, i.e.

[00:41:52] Speaker 01:
a plurality of operational parameters that are stored concurrently in memory as the 496 patent requires.

[00:41:58] Speaker 01:
That is the only available conclusion under Boston Scientific's claim construction, which requires the existence of predefined combinations

[00:42:09] Speaker 02:
that may be selected map holds provides only one predefined combination of operational parameters that okay but if that's what you're relying on then this turns into a substantial evidence question because none of this makes a distinction between

[00:42:25] Speaker 02:
actual groupings versus pointers to actual groupings.

[00:42:29] Speaker 02:
And so all we have to look at and determine is whether or not pulks meets.

[00:42:33] Speaker 02:
What you're saying here is we can determine that the references to therapy one versus therapy two meet, can't we?

[00:42:40] Speaker 01:
No, your honor.

[00:42:41] Speaker 01:
I don't think it's a substantial evidence question because again the final written decision, you know under tenory and basic admin law principles this court can't write in reasoning that the PTAB didn't adopt.

[00:42:52] Speaker 01:
The PTAB adopted our factual characterization of these two patents.

[00:42:57] Speaker 01:
That is, Knapp-Holt does not have two predefined sets.

[00:43:00] Speaker 01:
It has one set and then as the PTAB describes it, it creates, it creates a second set.

[00:43:08] Speaker 00:
I think both counsels