[00:00:00] Speaker 03:
December 21, 1601, Ethicon LLC against Intuitive Surgical Incorporation.

[00:00:09] Speaker 03:
Mr. Bass.

[00:00:22] Speaker 00:
Good morning, Your Honors.

[00:00:23] Speaker 00:
May it please the Court?

[00:00:24] Speaker 00:
McGinnis' reference is not analogous art to the 287 patent.

[00:00:29] Speaker 00:
An inventor of the 287 patent, a minimally invasive surgical instrument, would not have looked to a motor intended to power an electric automobile in designing the invention.

[00:00:41] Speaker 00:
McGinnis?

[00:00:41] Speaker 01:
What about the factual finding that the problem that the reference was seeking to solve is the problem, one of the problems, that the inventor was focusing on?

[00:00:56] Speaker 00:
So the board found that the inventor was focusing on two problems, or two related problems.

[00:01:03] Speaker 00:
One, preventing a sudden jerking start of the motor, and preventing the gyroscopic effects of the motor from affecting the user's control of the handle of the device.

[00:01:12] Speaker 00:
McGinnis doesn't address either of those two problems.

[00:01:15] Speaker 00:
McGinnis is directed at a car motor, is directed at

[00:01:18] Speaker 00:
helping a motor achieve high torque at high speeds to allow the motor to overcome a car, to allow the car to overcome another while climbing a hill or passing a vehicle.

[00:01:28] Speaker 00:
Those aren't problems that an endocutter faces.

[00:01:30] Speaker 00:
Those aren't problems that the inventors of the 287 patent face.

[00:01:34] Speaker 00:
Those are not reasonably pertinent to the inquiry or to the path of the inventors of the 287 patent.

[00:01:42] Speaker 01:
Only because, not reasonably pertinent, only because you view the problems that are being confronted by

[00:01:48] Speaker 01:
McGinnis is being different from the problem confronted by the inventor.

[00:01:52] Speaker 00:
That's correct, Your Honor.

[00:01:53] Speaker 00:
And I think that's clear from the face of the McGinnis reference itself.

[00:01:57] Speaker 00:
McGinnis' reference at 1535 talks about the problem it was concerned about was achieving high torque at high speeds so a motor could, among other things, help a vehicle climb a hill or pass another car.

[00:02:10] Speaker 00:
The language that intuitive has pointed to, it's at 1537,

[00:02:15] Speaker 00:
about preventing a high inrush of current is not the problem that is discussed in the 287 patent.

[00:02:22] Speaker 00:
It's not discussed in any of the invention disclosures.

[00:02:25] Speaker 00:
That was not a problem that the 287 inventors were concerned about.

[00:02:29] Speaker 00:
So there's complete disconnect between

[00:02:31] Speaker 00:
the problems that the 287 patent was concerned about and the problems that McGinnis was concerned about and therefore it's not reasonably pertinent to what an inventor was trying to do.

[00:02:41] Speaker 00:
And it's important to focus on the reasons that would have motivated or that would have concerned the inventor because the purpose of the analogous art inquiry is to put yourself in the shoes of the inventor and what would have been, you know, approximating the reality of what they would have considered and turned to to solving their problem.

[00:02:56] Speaker 00:
Nothing in the 287 patent suggests that McGuinness would have been a logical place to turn to for answers to any of those questions, not to turn to the answer of how to overcome mechanical lockout, which is the primary concern that the 287 inventors tried to achieve, or to deal with the gyroscopic effects on the handle of the device that affected user control or user fatigue.

[00:03:19] Speaker 00:
McGuinness was not concerned with any of that.

[00:03:22] Speaker 00:
McGuinness was not concerned about driver fatigue or driver control.

[00:03:27] Speaker 01:
Why do you think McGuinness was concerned with preventing a high-end rush of current when the motor started?

[00:03:33] Speaker 01:
I said, why do you think McInnes was concerned with preventing a high unrest of current when the motor has started?

[00:03:42] Speaker 01:
What was their reason for it?

[00:03:44] Speaker 00:
Well, McInnes doesn't say what the reason is, but one reason that it might have been right is to prevent a current surge when the motor has started.

[00:03:53] Speaker 00:
The 287 patent wasn't concerned with preventing a current surge when the motor has started.

[00:03:59] Speaker 00:
That wasn't an issue

[00:04:00] Speaker 00:
that they confronted.

[00:04:01] Speaker 00:
It wasn't an issue that Endocunders confronted.

[00:04:03] Speaker 00:
It wasn't something that anything in the record supports as demonstrating that.

[00:04:07] Speaker 00:
Now intuitive on appeal is try to link in Russia current problem with those problems that were found by the board with respect to the gyroscopic effects and user control and fatigue.

[00:04:18] Speaker 01:
Sudden jerking start by a high in Russia current.

[00:04:22] Speaker 00:
Well, Your Honor, I think the point is that the sudden jerking start

[00:04:26] Speaker 00:
being connected to an in-rush of current is not a link that McGinnis draws.

[00:04:30] Speaker 01:
McGinnis doesn't draw that link, and that's important because... So is there any evidence at all that links them, for example, expert testimony?

[00:04:39] Speaker 00:
I'm sorry, say that again.

[00:04:40] Speaker 01:
Is there any evidence at all in the record that links those two things, the in-rush of current and the jerking start, including, for example, is there any expert testimony?

[00:04:53] Speaker 00:
The expert testimony on that issue is solely from their expert.

[00:04:57] Speaker 01:
But there is testimony.

[00:05:00] Speaker 01:
Because remember, our standard of review is, is there evidence to support the fact finding by the board?

[00:05:08] Speaker 01:
Is there substantial evidence?

[00:05:10] Speaker 01:
It's a pretty low standard.

[00:05:12] Speaker 00:
Correct.

[00:05:12] Speaker 00:
Your Honor, I agree.

[00:05:13] Speaker 00:
But the inquiry here is, what does McGinnis say?

[00:05:17] Speaker 01:
No, but we've got an expert who's talking about how a person of ordinary skill in the yard

[00:05:23] Speaker 01:
would understand the references and what they would learn from those references, right?

[00:05:29] Speaker 01:
So if the board relied on that, that's part of the record evidence as well, right?

[00:05:35] Speaker 00:
Sure.

[00:05:36] Speaker 00:
So I would direct, Your Honor, to appendix page one moment, Your Honor.

[00:05:43] Speaker 00:
Because I think we're all talking about pages 35 to 36 of the board's decision.

[00:05:46] Speaker 00:
And if you look at appendix page 2567, that's the expert testimony that the board relied on.

[00:05:53] Speaker 00:
Now it's important to understand that this testimony was coming in the context of the motivation to combine analysis, which is a different inquiry from the analogous art inquiry.

[00:06:01] Speaker 00:
Because the analogous art inquiry is about what an inventor would have thought was pertinent to solving the problem.

[00:06:07] Speaker 00:
the motivation to combine inquiry presumes that the inventor already has access and already looked at the McGuinness reference.

[00:06:14] Speaker 00:
And the testimony there was that in an endocutter, a high in rush of current could cause various problems.

[00:06:21] Speaker 00:
But that's presuming that the pose is already aware of the McGuinness reference.

[00:06:27] Speaker 01:
Now, we say for many reasons that... Is it your view that when we look at that test of what is the problem that Mekinis is directed to, or what is the problem that it's seeking to solve, that we're not supposed to look at it from the point of view of Opposa, and how Opposa would understand the reference?

[00:06:43] Speaker 00:
The primary concern is what was motivating the advent of the 287 patent, and then what would Opposa look to trying to solve those particular problems.

[00:06:52] Speaker 00:
Now, the 287 patent isn't concerned with the in-rush of current problem.

[00:06:57] Speaker 00:
So that's number one.

[00:07:00] Speaker 00:
Number two, even if we were to assume that McGuinness is analogous and McGuinness would address the in-rush of current problems to the extent that was something motivating the inventors, it wouldn't have a reason to combine it with the Swayze reference.

[00:07:15] Speaker 00:
And the reason is Swayze already prevents the in-rush of current, a high in-rush of current.

[00:07:20] Speaker 00:
It has a resistor, it's element 110,

[00:07:22] Speaker 00:
in the specification, and it already prevents any high in rush of current.

[00:07:28] Speaker 00:
So there wouldn't have been a motivation to combine it anyway.

[00:07:31] Speaker 00:
And if you look, for example, at the reasons the board gave for putting it aside... This is where it has the trigger.

[00:07:37] Speaker 01:
You can, I guess, adjust how the trigger is working.

[00:07:41] Speaker 00:
That's something that our adversaries had argued.

[00:07:44] Speaker 00:
It's not something the board found.

[00:07:45] Speaker 00:
What the board found was that there were other benefits to a soft start.

[00:07:48] Speaker 00:
and the benefits it pointed to are the same things we've been talking about, user better control, preventing injury and fatigue.

[00:07:57] Speaker 00:
Intuitive in their brief, it's at page 35 of their brief, they can see that the underlying cause of those problems is the high in rush of current.

[00:08:05] Speaker 00:
So solving the high in rush of current problem, as Swazee's resistor already does, already takes care of all of those issues.

[00:08:12] Speaker 00:
So there would be no reason and no additional benefit and no additional motivation

[00:08:16] Speaker 00:
to have to combine that reference with McGinnis to achieve that result.

[00:08:21] Speaker 00:
And so I think from a substantial evidence point of view, there's nothing else that the board found that would have supported the combination other than things that... How does Swayze take care of the problem?

[00:08:31] Speaker 00:
So Swayze has a resistor that eliminates the height and rest of current when the circuit is connected.

[00:08:39] Speaker 02:
Isn't the amount of current that's coming through correspond to the amount that the trigger's been pulled?

[00:08:46] Speaker 00:
It can, Your Honor.

[00:08:49] Speaker 02:
Isn't that so?

[00:08:50] Speaker 02:
When the current is initiated by pulling the trigger.

[00:08:55] Speaker 00:
Correct.

[00:08:56] Speaker 02:
And so if you pull the trigger back all the way, all the current would go through.

[00:09:00] Speaker 00:
Well, there's no evidence that that's the case, Your Honor, and that's important.

[00:09:05] Speaker 02:
Well, that's what I'm asking you.

[00:09:06] Speaker 02:
Basically, the problem is we don't know, in this respect, what Swayze teaches.

[00:09:13] Speaker 02:
Because the board didn't tell us, right?

[00:09:15] Speaker 00:
Well, the board didn't answer this question, Your Honor.

[00:09:17] Speaker 00:
And there's no evidence that pulling the trigger all the way would remove all the resistance.

[00:09:21] Speaker 00:
In fact, there's a bias spring in the structure that we think would prevent that.

[00:09:26] Speaker 00:
The board didn't reach that issue.

[00:09:27] Speaker 00:
The board didn't decide that.

[00:09:28] Speaker 00:
That wasn't something the board went off on.

[00:09:30] Speaker 00:
Instead, the board said that there are other benefits to the soft start.

[00:09:32] Speaker 00:
But again, the ones that the board actually found are ones that the resister already saw.

[00:09:38] Speaker 02:
Well, what we do know is that the board

[00:09:42] Speaker 02:
The power is ramped up in one way in Swayze and ramped up another way in Kastner.

[00:09:51] Speaker 00:
Correct.

[00:09:51] Speaker 02:
And the board relies on Kastner.

[00:09:54] Speaker 02:
It's being different because Kastner ramps up at a known rate.

[00:09:57] Speaker 02:
So there isn't any variation depending on how much the trigger is pulled.

[00:10:03] Speaker 00:
I assume that's correct, Your Honor.

[00:10:05] Speaker 00:
The basis for the obviousness here is McGinnis.

[00:10:08] Speaker 00:
And McGinnis does it differently with a soft start mechanism.

[00:10:13] Speaker 00:
And the showing that we made was that the benefits of that soft start that the board found and the board was talking about, again, is the user control, fatigue, and injury.

[00:10:24] Speaker 00:
Those are all things that the resistor already solves.

[00:10:27] Speaker 00:
So the board didn't identify.

[00:10:29] Speaker 02:
And isn't the board relying on and the testimony relying on Casner for a reason why you would

[00:10:36] Speaker 02:
combine McDonough's and Swasey?

[00:10:39] Speaker 00:
I believe the board relied on Kastner.

[00:10:41] Speaker 00:
And this is at 38 of the opinion, just for the point that we were discussing earlier, that endocutters can experience a high in rush of current.

[00:10:51] Speaker 00:
Now, we think that's not important.

[00:10:53] Speaker 01:
Don't they rely on Kastner as disclosing a soft starting can be useful and handheld power tools to minimize fatigue, potential injury,

[00:11:02] Speaker 01:
and allow greater control of the tool?

[00:11:05] Speaker 00:
You do, Your Honor, but again, like we said, the resistor in Swayze solves those problems already.

[00:11:10] Speaker 01:
So there would have been no reason... If you said Casner doesn't matter, because Swayze already solves those problems that Casner's talking about.

[00:11:18] Speaker 00:
That's correct, Your Honor.

[00:11:19] Speaker 02:
What does it mean when Casner says they ramp the motor up at a known rate?

[00:11:26] Speaker 00:
Well, I don't think there's testimony about what that refers to, Your Honor.

[00:11:29] Speaker 00:
I think I would just say that that's what the reference says.

[00:11:34] Speaker 00:
But I think that the important point, again, is that the benefits that even Kastner identifies, which is the same that the report found.

[00:11:40] Speaker 02:
Well, you keep telling us that the benefits are already solved by Swayze, but I don't have any fact-finding to that effect.

[00:11:49] Speaker 02:
I mean, the same argument that you're making against Kastner

[00:11:53] Speaker 00:
Take away, doesn't it?

[00:11:54] Speaker 02:
Take away what you're saying about Swayze.

[00:11:57] Speaker 00:
So I'll quote, Your Honor, to two things.

[00:11:58] Speaker 00:
Number one is what the board found, which was the benefits.

[00:12:01] Speaker 00:
And number two, to intuit us.

[00:12:02] Speaker 02:
What did the board find?

[00:12:03] Speaker 02:
What?

[00:12:04] Speaker 02:
What did you say the board found?

[00:12:05] Speaker 00:
The board finding that the benefits of the soft start are the use of fatigue, the same things that Kastner talks about.

[00:12:11] Speaker 00:
But then I'll point you to the red brief, where intuitive concedes that the underlying problem of each of those issues is the high in rush of current.

[00:12:19] Speaker 00:
And that's solved by the resistor in Swayze.

[00:12:22] Speaker 00:
There's no real debate about that.

[00:12:23] Speaker 00:
There's an argument that, well, there's another embodiment with an on-off switch that would take care of that.

[00:12:29] Speaker 00:
But that's not the embodiment they propose as part of the combination.

[00:12:33] Speaker 00:
So Your Honor, I see that I'm reaching into my rebuttal time.

[00:12:36] Speaker 00:
I just wanted to briefly mention there's an alternative ground for affirmance that intuitive has raised.

[00:12:44] Speaker 00:
We think in our papers, we explain why we don't think either of that's appropriate here for the court to reach it, or even that the question is presented.

[00:12:53] Speaker 00:
I'm happy to address questions Your Honors have about that, or I can address it again on rebuttal.

[00:13:01] Speaker 03:
Okay.

[00:13:01] Speaker 03:
We'll save you rebuttal time and let's hear from the other side.

[00:13:04] Speaker 03:
Thank you, Your Honor.

[00:13:30] Speaker 04:
May I please report?

[00:13:31] Speaker 04:
Substantial evidence clearly supports the findings that McGuinness solves a motor control problem.

[00:13:39] Speaker 04:
Substantial evidence clearly supports the board's finding that there will be a motivation to combine Swayze and McGuinness.

[00:13:47] Speaker 04:
And the board's analysis is well-reasoned, and therefore, this case should be affirmed.

[00:13:53] Speaker 04:
Now, if we look at McGuinness, it describes solving a high inrush current

[00:14:01] Speaker 04:
which is conventional in the art.

[00:14:03] Speaker 04:
And as our expert testified, the 287 patent is addressed to the same problem.

[00:14:10] Speaker 04:
Now, the 287 patent uses slightly different words.

[00:14:14] Speaker 04:
The 287 patent says that the sudden jerking start is caused by allowing the motor to exert full load immediately.

[00:14:24] Speaker 04:
A motor exerts full load immediately when you have a high-end rush of current.

[00:14:28] Speaker 04:
They are the same thing.

[00:14:30] Speaker 04:
And that is why, of course, as the board found, McGuinness is addressed to the same problem.

[00:14:37] Speaker 01:
And that's also supported by expert testimony.

[00:14:39] Speaker 04:
It is supported, Your Honor.

[00:14:40] Speaker 04:
The board, in its decision, I think on page 36, says, starting at the bottom of 35,

[00:14:50] Speaker 04:
Evidence of the record suggests that limiting the motor's ability to exert full load immediately is, after all, as petitioner asserts, a problem faced by the inventors of the 287 patent.

[00:15:03] Speaker 04:
And then it points to Petition 22.

[00:15:05] Speaker 04:
The Petition 22 makes statements that are fully supported by Dr. Fisher at paragraph 71.

[00:15:14] Speaker 04:
So I'll direct you to

[00:15:17] Speaker 04:
Dr. Fisher, paragraph 71, which is at appendix 1319, Your Honor.

[00:15:23] Speaker 04:
Appendix 1319.

[00:15:25] Speaker 04:
And there, so there's the evidence on which the analogous argument largely turns.

[00:15:31] Speaker 04:
I mean, there's additional Kastner in the other evidence.

[00:15:33] Speaker 04:
But I submit, appendix page 1319 is enough to sustain and affirm this case.

[00:15:41] Speaker 04:
There, Dr. Fisher says that,

[00:15:47] Speaker 04:
of posita having considered, or excuse me, back up.

[00:15:50] Speaker 04:
The doctor says, indeed, faced with the problem of limiting the motor's ability to exert full load immediately, which is the quote from the 287 patent, a posita would have considered the solutions of others facing the same problem, such as McGinnis, which describes the solution as conventional in the art of controlling DC electric motors.

[00:16:13] Speaker 04:
So that's

[00:16:15] Speaker 04:
of substantial evidence on which to support this finding.

[00:16:20] Speaker 04:
Our expert is clearly saying the high-end rush of current is what causes a motor to spin at maximum load immediately, which is what causes the sudden jerking start.

[00:16:32] Speaker 04:
One thing council said is that for Patoner is that McGinnis doesn't have a sudden jerking start problem.

[00:16:39] Speaker 04:
I mean, there's no evidence in the record and it's almost it's contrary to common sense.

[00:16:45] Speaker 04:
You have a soft start circuit, so the motor doesn't start hard.

[00:16:49] Speaker 04:
I don't know if any of you have been on the older Amtrak trains.

[00:16:53] Speaker 04:
When they turn the motors on suddenly, the train jerks forward, as opposed to if they do a very slow gradual start, where it's nice and smooth for all the passengers.

[00:17:04] Speaker 04:
And so, of course, in McGuinness, if it didn't have its soft start circuit, it would have a sudden jerking start, because the motor would be driven at full load immediately.

[00:17:14] Speaker 01:
Do you want to address the motivation to combine the specific point that your adversary was making about how the problem that Swayze already solves the problem, that Kastner is purported to identify, and so there's no need to modify Swayze in view of McInnis?

[00:17:37] Speaker 04:
Absolutely, Your Honor.

[00:17:38] Speaker 04:
And as Judge Clevenger was discussing with my learning counsel on the other side,

[00:17:44] Speaker 04:
It is not a resistor in line with the circuit.

[00:17:49] Speaker 04:
It is a variable.

[00:17:50] Speaker 04:
First of all, there are two embodiments.

[00:17:52] Speaker 04:
So I want to be very clear.

[00:17:54] Speaker 04:
We can win simply on the embodiment that doesn't use the resistor.

[00:17:58] Speaker 04:
We win because 110 might not be a resistor at all.

[00:18:02] Speaker 04:
It may be a switch.

[00:18:04] Speaker 04:
And we win.

[00:18:05] Speaker 04:
But if we take even the resistor embodiment,

[00:18:09] Speaker 04:
We went under that too, because the resistor is a variable resistor that is controlled by the surgeon's hand pulling the handle.

[00:18:18] Speaker 04:
Now, there's a question, is there any evidence of the range of resistance of that resistor?

[00:18:24] Speaker 04:
And there is evidence in the record.

[00:18:26] Speaker 04:
It's in Swayze itself.

[00:18:28] Speaker 04:
So if you turn to Swayze,

[00:18:37] Speaker 04:
there with me.

[00:18:38] Speaker 04:
I had it here a second ago.

[00:18:42] Speaker 04:
Where it discusses... Okay.

[00:18:50] Speaker 04:
I'll have to find it.

[00:18:51] Speaker 04:
Maybe Ryan, you can help me out here.

[00:18:54] Speaker 04:
Swayze discusses how the handle works and how you pull it forward and it increases the

[00:19:01] Speaker 04:
or it decreases the resistance as you pull it forward.

[00:19:05] Speaker 04:
You're talking about pulling the trigger?

[00:19:06] Speaker 04:
Pulling the trigger.

[00:19:08] Speaker 04:
And what Swayze says is the trigger goes from something to maximum.

[00:19:14] Speaker 04:
And that's what I'm looking for, where it mentions maximum.

[00:19:16] Speaker 04:
At appendix 1522, Your Honors.

[00:19:19] Speaker 04:
It's 1523.

[00:19:20] Speaker 04:
Yes, at the top of the left-hand column.

[00:19:26] Speaker 04:
Right, and so because it goes to maximum, Your Honors,

[00:19:30] Speaker 04:
Maximum means no resistance.

[00:19:33] Speaker 04:
If the motor's at maximum, there's no resistance in the way.

[00:19:37] Speaker 04:
That's how you get to maximum.

[00:19:38] Speaker 04:
And so the idea here is, and as Dr. Fisher testifies, if the surgeon were to pull the handle completely and very quickly, there is no resistance.

[00:19:48] Speaker 04:
It's like mimicking an on-off switch.

[00:19:50] Speaker 01:
How do you respond to the argument that this is not the rationale that the board relied on?

[00:19:55] Speaker 04:
OK.

[00:19:56] Speaker 04:
The answer is that, Your Honor, what the board recognized is that Swayze does not have a soft start circuit.

[00:20:05] Speaker 04:
We said Swayze does not have a soft start circuit.

[00:20:09] Speaker 04:
But that's taught all over the prior art.

[00:20:12] Speaker 04:
We're going to rely on McGuinness.

[00:20:14] Speaker 02:
OK.

[00:20:14] Speaker 02:
So why doesn't Swayze have a soft start mechanism?

[00:20:18] Speaker 04:
OK, so well, the answer is because it's not there.

[00:20:22] Speaker 04:
I mean, just there is none.

[00:20:23] Speaker 02:
Well, they have one in the form of a user who can be very, very careful, like the engineer who fires the engine up on the train.

[00:20:32] Speaker 02:
Because if you pull the trigger very, very gently, you will have a soft start.

[00:20:38] Speaker 02:
But that's dependent upon the person who's doing it.

[00:20:41] Speaker 04:
Exactly.

[00:20:42] Speaker 02:
Whereby Kastner talks about doing it

[00:20:44] Speaker 02:
where the software, if you will, is built into the circuitry.

[00:20:48] Speaker 02:
So it doesn't depend upon the trigger puller.

[00:20:51] Speaker 02:
It's dependent on just turning the machine on.

[00:20:54] Speaker 02:
Exactly, Your Honor.

[00:20:55] Speaker 02:
So to the extent that it is.

[00:20:57] Speaker 02:
Isn't Judge Cleveringer doing a little fact finding here?

[00:21:01] Speaker 04:
No, Your Honor.

[00:21:02] Speaker 04:
And I'll tell you why in a second.

[00:21:03] Speaker 04:
But let me hold that in suspense for a moment.

[00:21:07] Speaker 04:
You are exactly correct, Your Honor, that a surgeon, in theory, possibly with great training, could

[00:21:14] Speaker 04:
possibly make its trigger mimic a soft start, perhaps, possibly, maybe once in a while.

[00:21:22] Speaker 04:
Obviously, there's a benefit to actually sticking a soft start circuit in.

[00:21:25] Speaker 04:
That's the answer your judge told.

[00:21:27] Speaker 04:
But we don't need to make that fact finding, because they've already admitted that Swayze doesn't have a soft start circuit.

[00:21:34] Speaker 04:
And that's the key.

[00:21:35] Speaker 04:
What the board said is, patent owner, I hear you talking.

[00:21:39] Speaker 01:
Can you give us page numbers where you're pointing to for this part?

[00:21:42] Speaker 01:
It's really important.

[00:21:43] Speaker 01:
So if you have a page number in the board's decision that you're relying on for the fact finding, I would like to know where it is.

[00:21:51] Speaker 01:
Absolutely, Your Honor.

[00:21:52] Speaker 04:
So the board, in discussing this section, says that patent owner argues.

[00:22:04] Speaker 02:
What page are we talking about?

[00:22:05] Speaker 04:
I'm sorry.

[00:22:06] Speaker 04:
Appendix 37, Your Honor.

[00:22:08] Speaker 04:
Appendix 37, first full paragraph.

[00:22:14] Speaker 04:
and the board states the patent owner also argues, and Ursula Arson would not have combined it because Swayze circuit already prevents the high-in-rush current, the parties dispute this issue.

[00:22:25] Speaker 04:
Then the board says, it is undisputed, however, that Swayze's mechanism, the patent owner refers to, is not a soft-start mechanism.

[00:22:34] Speaker 04:
And so they've conceded the point.

[00:22:37] Speaker 04:
It's not a soft start mechanism.

[00:22:38] Speaker 04:
And the reason they conceded that point before the board is because if Swayze had a soft start and therefore did not need McGuinness, it would anticipate.

[00:22:48] Speaker 04:
We would have won on anticipation.

[00:22:50] Speaker 04:
We had to go to McGuinness specifically because Swayze did not have a soft start circuit.

[00:22:55] Speaker 02:
Well, let's move down on that page a little further, Mr. Katz.

[00:23:00] Speaker 02:
Yes, sir.

[00:23:00] Speaker 02:
And let's get to the final paragraph.

[00:23:03] Speaker 02:
where the board says, we don't need to resolve those issues.

[00:23:06] Speaker 02:
That is to say, we don't need to decide, right?

[00:23:10] Speaker 02:
Because they're persuaded that it would have still been beneficial.

[00:23:16] Speaker 02:
Right.

[00:23:17] Speaker 02:
So what the board is saying, Your Honor.

[00:23:19] Speaker 02:
So they're saying, even if the patent owner is correct, so assume the patent owner is correct, that Swayze already prevents the rush of current.

[00:23:31] Speaker 02:
What are the additional benefits?

[00:23:34] Speaker 04:
Well, first of all, Your Honor, the word additional is from my adversary.

[00:23:43] Speaker 04:
The board didn't say, oh, it solves some, but they're additional.

[00:23:46] Speaker 04:
What the board is saying here, Your Honor, is that there is a big dispute as to what this thing does, this variable resistor.

[00:23:57] Speaker 04:
I don't have to resolve it, because they've already admitted Swayze does not have a soft star circuit.

[00:24:02] Speaker 01:
Your point, I think, is that Swayze doesn't have a soft start.

[00:24:08] Speaker 01:
When they say, even if patent owners correct on these points, it's not including the point that Swayze doesn't have a soft start.

[00:24:14] Speaker 01:
Everybody says it doesn't.

[00:24:16] Speaker 01:
That they are.

[00:24:17] Speaker 01:
The point is, even if Swayze solves the problem of the high-end Russia current, it's doing it in a different way, not with a soft start, and there's benefits to having a soft start.

[00:24:27] Speaker 01:
Is that it?

[00:24:28] Speaker 04:
Yeah.

[00:24:29] Speaker 04:
I would say it this way, that even if

[00:24:33] Speaker 04:
a surgeon might perhaps stop the inrush current occasionally.

[00:24:39] Speaker 04:
But as Judge Clever said, it's manually controlled.

[00:24:42] Speaker 04:
There's no question about that.

[00:24:43] Speaker 04:
That's not fact-finding, by your honor.

[00:24:45] Speaker 04:
That's what Swayze says.

[00:24:46] Speaker 04:
There's no dispute on how Swayze's variable resistor works.

[00:24:50] Speaker 02:
A court of reference teaches a question of fact, not a question of law.

[00:24:53] Speaker 04:
Yeah, it's a question of fact.

[00:24:54] Speaker 04:
Swayze says what it says.

[00:24:56] Speaker 04:
There's no dispute about how Swayze's variable resistor operates.

[00:25:00] Speaker 04:
And so the board was basically saying, OK, I hear all your arguments.

[00:25:06] Speaker 04:
But I don't have to resolve those because, A, you've admitted it's not a soft start circuit.

[00:25:10] Speaker 04:
Right?

[00:25:11] Speaker 04:
If it was a soft start circuit, again, there would be anticipation.

[00:25:14] Speaker 04:
So you've admitted there's no soft start circuit.

[00:25:16] Speaker 02:
So it's a difference between an automatic control of the surge as opposed to a manual.

[00:25:22] Speaker 04:
Exactly.

[00:25:23] Speaker 04:
So they're not saying, oh, we're finding some benefit in addition to stopping current surge.

[00:25:28] Speaker 02:
Well, that's why I was emphasizing the word known in Casper.

[00:25:33] Speaker 02:
Right, exactly.

[00:25:34] Speaker 04:
So soft start circuits were obviously well known.

[00:25:38] Speaker 04:
There are benefits to doing it if you do it properly.

[00:25:41] Speaker 04:
Now, a key to a soft start, we're kind of using the shorthand.

[00:25:46] Speaker 04:
The soft start circuit, what it does is it stops the sudden inrush at the start and then releases it.

[00:25:52] Speaker 04:
It's critical you do both.

[00:25:53] Speaker 04:
You can build a circuit that just stops an inrush by having a high resistance, and then the motors doesn't work well.

[00:26:00] Speaker 04:
It's terrible, right?

[00:26:01] Speaker 04:
The whole point of a soft start is you have the resistance put in briefly, and then you pull it out.

[00:26:08] Speaker 04:
That's what the soft start does.

[00:26:09] Speaker 02:
That's why it's a... So when you pull it out, does full juice come through?

[00:26:14] Speaker 02:
When you pull it out, does the full power come through as opposed to a moderated power?

[00:26:20] Speaker 04:
No, it's a short circuit at that point.

[00:26:22] Speaker 04:
In the McGuinness circuit and the circuit in the 287 patent, you have a resistor that's put in line briefly to kind of slow everything down, and then you pull it out.

[00:26:36] Speaker 04:
You bypass it with a switch.

[00:26:38] Speaker 04:
So it's as though you yanked the resistor out shortly after you start the motor.

[00:26:42] Speaker 04:
That's what's called a soft start.

[00:26:45] Speaker 04:
It's not soft all the time.

[00:26:47] Speaker 04:
It's not a hard start.

[00:26:48] Speaker 04:
You start soft, you pull it out.

[00:26:50] Speaker 04:
And so there's a benefit to doing that.

[00:26:52] Speaker 04:
And as they've admitted, the variable resistor, which has nothing to do with soft start, your honor, the variable resistor on the trigger is so I can control, do I want to staple at full power or do I want to staple at half power?

[00:27:08] Speaker 01:
That's the part that's admitted, right?

[00:27:10] Speaker 01:
I mean, it's not admitted that it's not a soft start.

[00:27:16] Speaker 01:
I'm sorry, I'm not explaining this well, but I think they admit that it's not a soft start, but you're going into things that the board didn't address at this point, I think.

[00:27:24] Speaker 01:
When you're characterizing now how that resistor works and how it doesn't obtain some of the advantages in CASPER.

[00:27:32] Speaker 04:
Actually, Your Honor, no, I'm not.

[00:27:34] Speaker 04:
First of all, I'm explaining it's not a soft star circuit because it has another purpose, which I'm not characterizing.

[00:27:40] Speaker 04:
I can just read the 287 patent into the record.

[00:27:44] Speaker 04:
But we also don't have to do that because we can rely on the substantial evidence in the record, which is Dr. Fisher's testimony in his supplemental declaration.

[00:27:52] Speaker 04:
So let me address you to the actual evidence, because I certainly don't want anyone relying on attorney argument here.

[00:27:59] Speaker 04:
If you go to appendix at 2567,

[00:28:02] Speaker 04:
And this is a paragraph the board relies on.

[00:28:05] Speaker 04:
This is Dr. Fisher responding to their argument that the trigger somehow provides the equivalent, if you will, of a soft start.

[00:28:19] Speaker 04:
And what Dr. Fisher says in paragraph 58 in the reading front.

[00:28:23] Speaker 04:
Yes, Your Honor.

[00:28:24] Speaker 04:
And what he says is,

[00:28:27] Speaker 04:
The resistance is proportional to the trigger position, and there is nothing in Swayze to prevent the user from fully drawing and firing trigger 20 immediately and thus causing a high inrush of current.

[00:28:37] Speaker 04:
So it's not attorney argument.

[00:28:41] Speaker 04:
That is the evidence of record that the board properly relied on.

[00:28:46] Speaker 04:
I see my time is up.

[00:28:48] Speaker 04:
I can address any further questions the panel has.

[00:29:05] Speaker 03:
Okay.

[00:29:07] Speaker 03:
Thank you, Mr. Katz.

[00:29:13] Speaker 03:
Barus.

[00:29:15] Speaker 00:
So just a few points.

[00:29:16] Speaker 00:
To respond to the point that Council was just making, I direct your honors to Appendix page 5023.

[00:29:23] Speaker 00:
And that's Dr. Fisher's deposition testimony.

[00:29:25] Speaker 00:
Which page?

[00:29:26] Speaker 00:
5023.

[00:29:26] Speaker 00:
5023.

[00:29:27] Speaker 00:
And that's Dr. Fisher's deposition testimony where he says the bias spring disclosed in Swayze might provide some force and resistance in the user's hand as they squeeze it.

[00:29:38] Speaker 00:
I think the underlying point of all of this is this is a factual issue.

[00:29:40] Speaker 00:
The board just didn't decide.

[00:29:42] Speaker 00:
The board's decision doesn't rest on evaluating any of these things.

[00:29:46] Speaker 00:
The board's decision rests on the idea that there are additional benefits or other benefits besides preventing inrush current.

[00:29:53] Speaker 00:
that would have motivated the combination.

[00:29:55] Speaker 00:
And we have not here today, and as we said in our briefs, identified any other benefits other than those already solved by the resistor.

[00:30:04] Speaker 00:
So I think that that should deal with the motivation to combine issue as the board decided it.

[00:30:12] Speaker 00:
I would just quickly like to address two other issues.

[00:30:15] Speaker 02:
Sorry, Your Honor.

[00:30:17] Speaker 00:
Two other questions here.

[00:30:18] Speaker 00:
Your Honor, why Swayze doesn't have a soft start?

[00:30:21] Speaker 00:
It's got an electronic lockout, so there's no need.

[00:30:24] Speaker 00:
The 287 patent has a mechanical lockout, so Swayze has an electronic one.

[00:30:29] Speaker 00:
There's no need for a soft start mechanism to prevent overpowering the electric lockout.

[00:30:34] Speaker 00:
And finally, Your Honor's counsel addressed you to page 1319 as providing all the substantial evidence as necessary to show that the 287 patent was concerned about high inrush current.

[00:30:45] Speaker 00:
I would just note on that page, it's 1319 again, that there's no testimony here about a high inrush current

[00:30:54] Speaker 00:
problem.

[00:30:54] Speaker 00:
The problem that is identified here is limiting the motor's ability to exert full load immediately.

[00:31:02] Speaker 00:
That's a different problem than in-rush current.

[00:31:04] Speaker 00:
One can happen without the other.

[00:31:05] Speaker 00:
You can want to limit the motor's ability to exert its full load without an in-rush current issue.

[00:31:12] Speaker 00:
So this snippet that council is relying on here just simply isn't sufficient evidence to demonstrate that

[00:31:19] Speaker 00:
the 287 patent was concerned with an inrushed current problem.

[00:31:23] Speaker 00:
And the reason that's important is because that's the only thing in McGinnis that they've pointed to as pertinent to the problems the 287 patent was addressed to.

[00:31:32] Speaker 00:
Mr. Honors, I have some other questions.

[00:31:33] Speaker 00:
Thank you.

[00:31:36] Speaker 03:
Any more questions?

[00:31:38] Speaker ?:
No.

[00:31:39] Speaker 03:
Any more questions?

[00:31:39] Speaker 03:
Thank you.

[00:31:40] Speaker 03:
Thanks to both counsels.

[00:31:42] Speaker 03:
The case is submitted.