[00:00:00] Speaker 00:
Okay, the next argued case is number 21, 1995, Ethicon LLC against intuitive surgical intuitive.

[00:00:11] Speaker 00:
Mr. Desai.

[00:00:14] Speaker 03:
May it please the court.

[00:00:16] Speaker 03:
For the reasonable expectation of success, the critical issue was whether the Solente's spring and pin mechanism could fit in the space of the jaws of the green device and be strong enough to withstand the user firing force.

[00:00:30] Speaker 03:
The board's decision on this issue was legally deficient and factually unsupported.

[00:00:35] Speaker 03:
The board's conclusory statements did not hold intuitive to its burden of proof and did not meet the board's obligations under personal web to provide logical and rational reasons for its decision.

[00:00:47] Speaker 03:
It is visually apparent that the green device does not have the space in the jaw frame for a spring and pin, and it was uncontested that the green device has to withstand higher forces

[00:00:58] Speaker 03:
than the Solintes device, because of the significant differences.

[00:01:02] Speaker 01:
But in combining, wouldn't the Posita account for those differences?

[00:01:06] Speaker 03:
That was the bare conclusion that the board made.

[00:01:09] Speaker 01:
Because here, the Posita, it appears that there was an agreement as to the level of skill of the Posita.

[00:01:16] Speaker 01:
And here, it's a pretty high level, isn't it?

[00:01:19] Speaker 03:
I think, well, relatively speaking, I think it's the same level of skill that we've had in numerous cases involving these staplers.

[00:01:25] Speaker 03:
I wouldn't say it's a high level.

[00:01:26] Speaker 03:
I think it's the ordinary level of skill.

[00:01:28] Speaker 01:
There's a requirement for a mechanical engineering degree.

[00:01:33] Speaker 01:
That's correct.

[00:01:34] Speaker 01:
Why couldn't a mechanical engineer make the room in the different devices in order to combine?

[00:01:41] Speaker 03:
well i think that is fundamentally the issue with the board's decision which is that they made a bare conclusion that posita would appreciate design modifications need to make it work but the board never said there was a little bit of a morning as to that right uh... well the board cited paragraphs one fifty four to one seventy one of dr no dell's declaration that was the only

[00:02:03] Speaker 03:
portion of the declaration and evidence that was cited.

[00:02:06] Speaker 03:
And those paragraphs do not explain any modifications that would be needed to make the spring and pin lockout fit in the green device and be able to withstand the firing force in the green device.

[00:02:17] Speaker 03:
And this is clear because of the testimony of Dr. Nodell.

[00:02:21] Speaker 03:
This key testimony is an appendix 4986, and Dr. Nodell admitted that he did not do an analysis of whether the spring and pin would be able to withstand firing force in the green device.

[00:02:36] Speaker 03:
If we take a look at that testimony, at page 39, lines 14 and 19, Dr. Nodell acknowledged that in order for the spring and pin

[00:02:45] Speaker 03:
To work as a lockout, meaning success, it would need to withstand the force of firing in the green device.

[00:02:51] Speaker 03:
But then at page 40, line 7 to 9, we asked, did you assess how much force the locking plate would need to withstand?

[00:02:57] Speaker 03:
And he said, quote, no, I did not.

[00:03:00] Speaker 03:
At page 41, lines 3 to 8, we asked, quote, did you do any analysis to determine whether the locking plate you proposed

[00:03:08] Speaker 03:
on pages 92 and 93 of your declaration would be able to withstand the force of a user firing in the green 695 device.

[00:03:16] Speaker 03:
And he said, quote, no, I did not do an analysis.

[00:03:20] Speaker 03:
Then at line 16 to 20, Dr. Nodell acknowledged, quote, there's not enough detail in these figures to fully define or analyze the strength of the concept.

[00:03:29] Speaker 03:
For example, we can't tell how long that is or if there is additional structure that supports or anchors it into the wall.

[00:03:35] Speaker 03:
Dr. Nodell also admitted at 4987 that he never considered how the locking plate would be retained within the recess.

[00:03:43] Speaker 03:
Your Honor, it was intuitive's burden to provide those details.

[00:03:48] Speaker 03:
And by Dr. Nodell's own testimony, he failed to analyze the critical issue, which is the space and strength of the pin and lockout in the green device, not in the sole intent device.

[00:04:00] Speaker 01:
So that's my point.

[00:04:02] Speaker 01:
Wouldn't a posita modify in order to provide the structure that would lend strength?

[00:04:09] Speaker 01:
The question here is to combine.

[00:04:12] Speaker 01:
Is there any reason why a posita would look at the two separate priority references and combine them?

[00:04:20] Speaker 01:
And the board decided yes, because one has a safety mechanism and the other one doesn't.

[00:04:27] Speaker 03:
I think, Your Honor, we're conflating the issue of motivation to combine with reasonable expectation of success.

[00:04:32] Speaker 03:
The Board did say in its decision that there would be benefits to a lockout and a lockout would be desirable.

[00:04:39] Speaker 03:
But that doesn't account for whether you would expect success in this green device, which is a substantially different device.

[00:04:47] Speaker 03:
And at Appendix 23, when the Board was comparing the two devices, by its own admission, it gave a casual review.

[00:04:56] Speaker 03:
Quote.

[00:04:56] Speaker 03:
Both Solentes and Green are staplers, they have anvils, and they have jaws that move from open to close.

[00:05:03] Speaker 03:
But those similarities have nothing to do with the issue of withstanding firing force in the Green device and the space and strength issue.

[00:05:12] Speaker 03:
The board never addressed the differences that were pertinent to the space and strength issue, which we identified at appendix 3213 in the patent owner response.

[00:05:22] Speaker 03:
And the figures of the devices very clearly show this issue.

[00:05:26] Speaker 03:
If you look at page 24 to 25 of the blue brief, you can see the Solintez device uses a spring and pin lockout, but it's a right angle tool where the staples are deployed all at one time.

[00:05:37] Speaker 03:
The jaws are perpendicular to the shaft of the tool, and because of this orientation, there's a deep frame with substantial space for spring and pin lockout.

[00:05:46] Speaker 03:
But if you look at pages 18 and 19 of the blue brief,

[00:05:49] Speaker 03:
You can see the green device.

[00:05:51] Speaker 03:
It's a linear device that both staples and cuts tissue.

[00:05:54] Speaker 03:
The staples are ejected sequentially as the user pushes forward and the firing member is advanced by the user.

[00:06:02] Speaker 03:
The jaws are long and thin, and there is visibly no space for a spring and pin in those jaw frames.

[00:06:08] Speaker 03:
And this lack of space is clearly apparent on page 12 of the Gray Brief.

[00:06:13] Speaker 03:
On the left is the drawing from Dr. Nodell, where he drew a yellow pin in the side of the frame of the green stapler in the schematic drawing.

[00:06:22] Speaker 03:
But on the right of page 12 of the Gray Brief, you see a linear device that corresponds to the green stapler.

[00:06:27] Speaker 03:
And this shows very clearly, there is literally no space in those jaws in the frame for a spring and pin lockout.

[00:06:35] Speaker 03:
And I think critically, it was incumbent on the board to explain what modifications could be made, how you could do this, not simply to say, well, the necessary design modifications would be known by a posita without actually telling us what those would be and how they would work.

[00:06:54] Speaker 03:
The very important part of going back to Dr. Nodell's testimony is that he was very clear, as his intuitive expert, that he did not assess this issue.

[00:07:05] Speaker 03:
In other words, he drew the yellow pin there, but never addressed whether it could actually fit and whether it could be strong enough to actually fit and withstand the user firing force in the green stapler.

[00:07:17] Speaker 03:
And critically, that was intuitive's burden.

[00:07:19] Speaker 03:
And if we look at the board's

[00:07:21] Speaker 01:
In the case of Brown and Williamson tobacco we said that evidence of a motivation to combine may flow from the prior art references themselves.

[00:07:32] Speaker 01:
The knowledge of one of ordinary skill in the art or in some cases the nature of the problem to be solved.

[00:07:39] Speaker 01:
seems to me that this case fits exactly that quotation right there.

[00:07:44] Speaker 01:
Am I wrong?

[00:07:45] Speaker 03:
I respectfully disagree, Your Honor, because I think, again, you're referring to the motivation to combine.

[00:07:49] Speaker 03:
And we look at it.

[00:07:50] Speaker 03:
Yes, I am.

[00:07:51] Speaker 03:
That's exactly what I'm referring to.

[00:07:53] Speaker 03:
Right.

[00:07:53] Speaker 03:
But I think we're talking about the issue of reasonable expectation of success, what this Court has specifically said.

[00:07:57] Speaker 01:
Well, that's another issue.

[00:07:59] Speaker 01:
I'm trying to keep you back with the motivation to combine issue.

[00:08:03] Speaker 03:
And I understand, Your Honor, but the- But you don't answer the question.

[00:08:08] Speaker 03:
The board did identify motivations to put a lockout.

[00:08:13] Speaker 03:
You agree that they would correct with that?

[00:08:16] Speaker 03:
I agree with that point, that they identified that it would be desirable and it would be beneficial.

[00:08:22] Speaker 03:
That is the core issue here, that the board's findings on reasonable expectation of success, they did not explain, they did not have rational reasons for what they said, and they don't have the testimony from intuitive expert because he explicitly admitted he did not analyze this issue.

[00:08:37] Speaker 03:
And I think if we talk about the burden issue here, it's very clear when we look at the criticism of Ethicon's expert.

[00:08:48] Speaker 03:
The board critiqued Dr. Franczak's opinions at Appendix 25 and 26.

[00:08:52] Speaker 03:
And here the board contended that Dr. Franczak's opinions were speculation.

[00:08:57] Speaker 03:
But again, this was intuitive burden and the board never provided its reasons why Dr. Nodell's testimony had the details on the issue of

[00:09:06] Speaker 03:
withstanding user firing force and being able to fit in the space of the green device.

[00:09:11] Speaker 03:
And we can also see from the board's explanation of its critique of Dr. Fransak at appendix 25 and 26, that it confused the issue of motivation combined with reasonable expectations of success.

[00:09:24] Speaker 03:
On Appendix 26, after criticizing Dr. Frantzek, the board said, well, there were clear benefits to using a lockout, and a posita would have appreciated those benefits would be desirable.

[00:09:35] Speaker 03:
But again, that has nothing to do with whether you would expect a spring and pin lockout to be able to withstand the firing force in a substantially different device that has no space in the jaws.

[00:09:46] Speaker 03:
That's simply an issue of whether you would desire a lockout.

[00:09:50] Speaker 03:
Again, the board never explained why Dr. Fransak's reasoning was wrong.

[00:09:56] Speaker 03:
He provided significant testimony and explanation for why there was a lack of space in the green jaws and why the forces would be higher in the green jaws.

[00:10:06] Speaker 03:
That's an appendix 5556 to 60.

[00:10:09] Speaker 03:
Again, why was it okay for intuitive expert where they had the burden and he didn't address this issue at all?

[00:10:16] Speaker 03:
I see, Your Honor, as I'm running into my rebuttal time, so I'll reserve my time, unless there are further questions.

[00:10:23] Speaker 00:
At the moment, thank you, counsel.

[00:10:26] Speaker 00:
Mr. Katz.

[00:10:28] Speaker 02:
Your Honors, may it please the Court.

[00:10:32] Speaker 02:
This is a straightforward, substantial evidence case.

[00:10:36] Speaker 02:
The board's decision relies on substantial evidence, and it should therefore be affirmed.

[00:10:44] Speaker 02:
The primary argument I heard on the other side is that the board has allegedly shifted the burden.

[00:10:50] Speaker 02:
There was no burden shifting here.

[00:10:52] Speaker 02:
And the board made directly the findings on both motivation to combine and reasonable expectation of success, as I'll discuss.

[00:10:59] Speaker 02:
Interestingly, I know a large portion of our brief addresses motivation to combine, because that was an issue argued in the briefing.

[00:11:05] Speaker 02:
I just heard counsel concede that there was

[00:11:09] Speaker 02:
They're no longer disputing motivational bias.

[00:11:11] Speaker 02:
The only remaining issue is reasonable aspect.

[00:11:14] Speaker 02:
That's what I understood also.

[00:11:16] Speaker 02:
So let's turn right to it.

[00:11:18] Speaker 02:
And if we go to appendix 20 or appendix 53, depending on which copy of the final written decision you're looking at, that's where the board actually begins this discussion.

[00:11:30] Speaker 02:
And what the board states is,

[00:11:33] Speaker 02:
The petitioner contends that an ordinary skill in the art, a person of ordinary skill in the art, would have had multiple reasons to implement Solyentye's lockout mechanism in green surgical stapling device as one of ordinary skill in the art, and here's a key language, would have recognized that such a locking mechanism would advantageously prevent inadvertent severing of tissue.

[00:11:54] Speaker 02:
So right there, the board is stating motivation to bind and establishing the reasonable explication of success.

[00:12:01] Speaker 02:
Now what does the board say next?

[00:12:03] Speaker 02:
This is the top of the board's decision at 21.

[00:12:06] Speaker 02:
Petitioner also reason the skilled artisan would have recognized Green's stapling instrument as being ready for improvement to yield predictable results.

[00:12:16] Speaker 02:
Again, quoting our petition, which is unsighted to KSR.

[00:12:21] Speaker 02:
So again, that is a reasonable expectation of success issue.

[00:12:26] Speaker 02:
Now, they keep saying that the board didn't put us to our proof.

[00:12:30] Speaker 02:
Well, that statement is followed by the sentence, petitioner supports his position, and now this is about both motivation combined and reasonable expectation of success, in his proposed combination of Green and Solinchez with a citation to the testimony of Dr. Nodell, citing Nodell at paragraphs 157 to 172.

[00:12:53] Speaker 02:
So right there, we have established the prima facie case of obviousness.

[00:12:57] Speaker 02:
The board did not shift any burden.

[00:13:00] Speaker 02:
The board didn't jump to ethicons, rebuttal arguments.

[00:13:05] Speaker 02:
The board first laid out what evidence it was relying on.

[00:13:08] Speaker 02:
And in those paragraphs, which are in appendix 5.335 to 5.346, Dr. Nodell painstakingly shows the how.

[00:13:18] Speaker 02:
both the why and the how.

[00:13:21] Speaker 02:
And he specifically gives two different ways in which the two staplers could be combined.

[00:13:26] Speaker 02:
So it's very detailed, and he provides descriptions of how the locking pin and plate could be inserted, whether you might use a pin, whether you might use a plate.

[00:13:37] Speaker 02:
You can mount it on the bottom.

[00:13:39] Speaker 02:
You can mount it on the side.

[00:13:41] Speaker 02:
It's all in there.

[00:13:42] Speaker 02:
The how is there.

[00:13:44] Speaker 02:
And only after the board does that does then the board

[00:13:49] Speaker 02:
then go to Ethicon's arguments and then shows why it is not agreeing with them.

[00:13:56] Speaker 02:
Fundamentally, this is a case about credibility.

[00:14:00] Speaker 02:
The board found Dr. Nodell highly credible and highly persuasive.

[00:14:05] Speaker 02:
And the board rejected the testimony of their expert.

[00:14:09] Speaker 02:
That's a credibility determination that cannot and should not be disturbed on appeal.

[00:14:16] Speaker 02:
And the board specifically says that

[00:14:18] Speaker 02:
It considered all of their arguments, and it found Dr. Nodell more persuasive than their expert.

[00:14:26] Speaker 02:
In fact, that's at the appendix 27.

[00:14:28] Speaker 02:
It says, we therefore credit Dr. Nodell's testimony over that of Dr. Franszak, who is their expert.

[00:14:36] Speaker 02:
And that really should end the matter.

[00:14:38] Speaker 02:
But they do say in the very next sentence, we have considered all of patent owners' arguments challenging grounds for unpatentability, and we find them unavailable.

[00:14:47] Speaker 02:
So any argument that

[00:14:48] Speaker 02:
the board overlooked, disregarded arguments isn't true.

[00:14:52] Speaker 02:
The board is saying we looked at it all and pretty much is a battle of the experts, and we just find Dr. Modell to be much more credible.

[00:14:59] Speaker 02:
In fact, on the reasonable expectation of success point, let me note that the board states on Appendix 26, in our view, Dr. Modell's testimony is logical and credible and appropriately reflects the types of design assessments that such skilled artisan would have employed in seeking to improve Green's

[00:15:17] Speaker 02:
based on Solientiae's teachings.

[00:15:20] Speaker 02:
So right there, the board is stating that this block of paragraphs, which painstakingly go through two different ways of making the combination, reflects the type of design assessments a person or a skill in the art would make.

[00:15:36] Speaker 02:
So that is certainly establishing substantial evidence.

[00:15:45] Speaker 02:
Dr. O'Dell

[00:15:48] Speaker 02:
did testify at the deposition that he did not do any kind of materials analysis.

[00:15:56] Speaker 02:
And that's true.

[00:15:56] Speaker 02:
He didn't, nor did he have to.

[00:15:58] Speaker 02:
In fact, the patent issue here, which discloses a lockout, doesn't do a materials analysis.

[00:16:04] Speaker 02:
The prior art doesn't do a materials analysis.

[00:16:07] Speaker 02:
This level of skill in the art, as Judge Raina noted, is high, as the board found.

[00:16:12] Speaker 02:
And one of skill in the art can take the patent, can take the prior art,

[00:16:16] Speaker 02:
Soyentia itself doesn't do a materials analysis.

[00:16:19] Speaker 02:
You adjust mechanical components to fit their purpose.

[00:16:26] Speaker 02:
They showed a picture of an actual stapler.

[00:16:29] Speaker 02:
By the way, that stapler wasn't the prior stapler, but regardless, one can readily see even in their own picture

[00:16:35] Speaker 02:
that there is a plastic width to the device.

[00:16:39] Speaker 02:
And you could make that a little thicker if necessary to include the locking pin.

[00:16:44] Speaker 02:
So there's no issue there.

[00:16:46] Speaker 02:
There's just plenty of area to make room.

[00:16:50] Speaker 02:
I heard repeatedly that the device supposedly was substantially different.

[00:16:54] Speaker 02:
Well, the board found they were relatively the same.

[00:16:57] Speaker 02:
So the board already made a fact finding, which is based on Dr. Nodell's testimony.

[00:17:02] Speaker 02:
And so there's really no basis to disturb that.

[00:17:05] Speaker 02:
that finding either.

[00:17:07] Speaker 02:
Unless Your Honor has any questions, that's all I have.

[00:17:11] Speaker 00:
Well, just to be clear, then, your argument is that what they are claiming is being claimed so broadly that there's no room for any sort of protection for this particular device with its specific limitations?

[00:17:29] Speaker 02:
Well, Your Honor, I'd phrase it this way.

[00:17:31] Speaker 02:
The claim itself just requires that you

[00:17:35] Speaker 02:
have a lockout to stop the advancement of the firing bar, which can be caused and is caused in all the prior recite by making some sort of an obstruction go in the way of the firing bar.

[00:17:49] Speaker 02:
That's the key.

[00:17:51] Speaker 02:
All you need is some sort of an obstruction.

[00:17:53] Speaker 02:
The claims don't require anything specific on the structure or shape or size of that obstruction.

[00:18:01] Speaker 00:
Since it's obvious to have a lockout on a stapler,

[00:18:05] Speaker 00:
putting a lockout on a stapler for endoscopic surgery is no contribution.

[00:18:15] Speaker 00:
Exactly.

[00:18:16] Speaker 00:
Of course that's going to work.

[00:18:18] Speaker 02:
Don't bother me.

[00:18:20] Speaker 02:
No, not the latter honor.

[00:18:22] Speaker 02:
First of all, the claims don't require endoscopic.

[00:18:26] Speaker 02:
And in fact, the two prior references we're combining are not endoscopic instruments.

[00:18:31] Speaker 02:
So Yenche and Green are both actually not endoscopic.

[00:18:35] Speaker 02:
But what we do is, when they made the arguments that, oh, these devices are very small, we actually then showed evidence in the prior art that, well, there are all sorts of lockouts in the prior art.

[00:18:47] Speaker 02:
Now they lock out in slightly different ways and different manners, and so they don't necessarily meet the claim limitations.

[00:18:54] Speaker 02:
But we showed, and Dr. Nodell testified, that it's

[00:18:59] Speaker 02:
definitely possible and happens all the time.

[00:19:01] Speaker 02:
You create little tiny obstructions using metal, little mechanical parts that can stop a firing bar.

[00:19:08] Speaker 02:
So, no, we're not just relying on Ipsodixis say so.

[00:19:12] Speaker 02:
Dr. Nodell explains how one would go about it in those paragraphs.

[00:19:17] Speaker 02:
And in fact, Dr. Nodell also testified in his declaration that he had developed prior lockouts for small staplers

[00:19:27] Speaker 02:
at Ethicon in the prior art.

[00:19:29] Speaker 02:
So there's no question prior art lockouts in surgical staplers existed.

[00:19:35] Speaker 02:
Does that answer your question?

[00:19:36] Speaker 00:
Yes.

[00:19:36] Speaker 00:
Well, I'm having trouble with the public interest here.

[00:19:41] Speaker 00:
You're saying the public interest is not to have such devices because they can't be patented because they're a small change from what's come before.

[00:19:52] Speaker 00:
Is that right?

[00:19:52] Speaker 00:
That's where we are.

[00:19:54] Speaker 02:
No.

[00:19:56] Speaker 02:
Pretty much every stapler on the market, surgical stapler market that I'm aware of has a lockout today.

[00:20:03] Speaker 02:
So the public interest is served, the lockouts are there.

[00:20:07] Speaker 00:
The public interest is not to have such devices.

[00:20:10] Speaker 02:
No, no, the public interest is to have devices with lockouts.

[00:20:13] Speaker 00:
The public interest is to create it and give it away to your competitors so that you can't make any money out of it.

[00:20:21] Speaker 02:
No, you don't make your money on the lockout, your honor.

[00:20:24] Speaker 02:
The surgical staplers are sold for other features.

[00:20:27] Speaker 02:
The lockout is a safety device that is in every surgical stapler today, as far as I know.

[00:20:34] Speaker 02:
But the features that you are selling a stapler for have nothing to do with the lockout.

[00:20:39] Speaker 02:
It's kind of like you don't sell a car for its airbag.

[00:20:42] Speaker 02:
All cars have airbags, right?

[00:20:44] Speaker 02:
You can't stop people from putting airbags in cars.

[00:20:47] Speaker 02:
The lockout is like an airbag.

[00:20:48] Speaker 02:
It's a standard element.

[00:20:50] Speaker 02:
Everyone has it.

[00:20:51] Speaker 02:
It's not patently distinct anymore.

[00:20:53] Speaker 02:
It's already in the prior art.

[00:20:56] Speaker 02:
And so the public interest is well served, just like having cars have airbags.

[00:21:01] Speaker 02:
You don't need to give improper patents to airbags.

[00:21:05] Speaker 02:
to encourage people to develop airbags.

[00:21:08] Speaker 02:
People can develop lockouts, Your Honor, and then patent their specific lockout.

[00:21:12] Speaker 02:
I guess going back to your earlier question, yes, the claim is very generic as to a lockout.

[00:21:17] Speaker 02:
There's nothing special about the lockout.

[00:21:19] Speaker 02:
In fact, it's worded functionally.

[00:21:22] Speaker 02:
So now I think I understand where Your Honor was going earlier.

[00:21:24] Speaker 02:
Yeah, this claim is very broad.

[00:21:27] Speaker 02:
It just pretty much says a lockout that stops advancement.

[00:21:29] Speaker 02:
There's nothing in the claim about how to stop the advancement.

[00:21:33] Speaker 02:
So if they had developed a new way to stop the advancement, they could have patented that.

[00:21:39] Speaker 02:
But they didn't develop a new way to stop the advancement.

[00:21:42] Speaker 02:
They're using the same.

[00:21:44] Speaker 02:
Actually, let me be very clear.

[00:21:46] Speaker 02:
In the patent, their way of stopping advancement is they have their firing bar device fall into a recess.

[00:21:54] Speaker 02:
So it falls in a recess and gets trapped.

[00:21:57] Speaker 02:
We don't do that.

[00:21:58] Speaker 02:
If they had claimed falling into a recess,

[00:22:01] Speaker 02:
Maybe they would have gotten a patent if they, in fact, invented it.

[00:22:04] Speaker 02:
I don't know.

[00:22:06] Speaker 02:
But they claimed it much broader than that.

[00:22:08] Speaker 02:
So they did not try to limit their claims to their one lockout design disclosed in the patent.

[00:22:15] Speaker 02:
Their claim pretty much says, if you stop advancement, any obstruction would work.

[00:22:21] Speaker 02:
So yes, Your Honor, going back to your first question, the claim is so broadly, it is not narrowly tailored to anything they might claim to have invented in this patent.

[00:22:31] Speaker 00:
Anything else?

[00:22:34] Speaker 00:
Any questions?

[00:22:34] Speaker 00:
Thank you.

[00:22:38] Speaker 00:
Thank you, Your Honor.

[00:22:40] Speaker 03:
Let me first start with Appendix 20 and 21, which is where my friend went first.

[00:22:45] Speaker 03:
And I think there you can very clearly see the points of that decision are about motivation to combine.

[00:22:52] Speaker 03:
that such a locking mechanism would advantageously prevent the inadvertent severing and would be beneficial.

[00:23:00] Speaker 03:
That is an issue of motivation to combine, not whether the spring and pin from the sol-intest device, which is a right angle stapler with a deep frame, could be made to work in the green device, which is a very different linear stapler with a thin jaw.

[00:23:16] Speaker 03:
That's simply not the issue of reasonable expectation of success.

[00:23:20] Speaker 03:
I think, Judge Newman, to your questions about the scope of the claim here, I think there were some elements that were not discussed.

[00:23:27] Speaker 03:
The patent claim is not to any lockout.

[00:23:30] Speaker 03:
It is to a stapler with an I-beam firing element that includes a lockout that will block advancement of that firing element.

[00:23:38] Speaker 03:
It is not to any lockout mechanism.

[00:23:41] Speaker 03:
And I think this is clear if we actually look at some of the reply evidence

[00:23:46] Speaker 03:
that intuitive submitted that the board didn't even discuss in its decision.

[00:23:51] Speaker 03:
There were some staplers that they had tried to add in the reply on the issue of reasonable expectation of success, say, look, here's how you would do a lockout, here's how you would do a lockout, you can make a lockout work.

[00:24:01] Speaker 03:
For example, Geist and Green 817.

[00:24:04] Speaker 03:
I think it's very important because the issue there is those devices do have lockouts.

[00:24:10] Speaker 03:
But they would not meet the claim elements of our patent.

[00:24:14] Speaker 03:
And that's because those devices have an architecture where the firing member is in the removable staple cartridge.

[00:24:21] Speaker 03:
Okay.

[00:24:22] Speaker 03:
And that means when there is no staple cartridge present, there is no firing member to block.

[00:24:27] Speaker 03:
And that is very different from the claims that we have in our patent.

[00:24:32] Speaker 03:
And I heard counsel say that, well, they don't do that.

[00:24:36] Speaker 03:
Well, intuitive device is like what's in our patent.

[00:24:39] Speaker 03:
They use an I-beam firing element with a lockout that blocks advancement of that I-beam firing element when there is no staple cartridge present.

[00:24:47] Speaker 03:
So they don't use these alternative prior mechanisms where the firing element is actually in the stapling cartridge.

[00:24:55] Speaker 03:
So you don't have this issue.

[00:24:57] Speaker 03:
of the firing element when there's no staple cartridge present.

[00:25:01] Speaker 03:
That's a significant difference.

[00:25:02] Speaker 03:
And so the idea that the claims are too broad and they cover any kind of lockout, simply not true.

[00:25:09] Speaker 03:
I think if we go back to Dr. Nodell's deposition testimony, 4986 appendix, it was not simply an issue of him that he did not analyze materials.

[00:25:18] Speaker 03:
He simply did not analyze the issue of whether the spring and pin

[00:25:23] Speaker 03:
would be able to withstand the force of firing in the green device.

[00:25:28] Speaker 03:
He was categorically clear about that.

[00:25:30] Speaker 03:
If you look at the testimony, it wasn't that I didn't look at the materials.

[00:25:33] Speaker 03:
He said, I didn't examine the force, and I didn't analyze that issue at all.

[00:25:38] Speaker 01:
Do you agree with the statement that your friend made that on the issue of reasonable expectation of success, that it was essentially a battle of the experts?

[00:25:50] Speaker 03:
I disagree with that because when it comes down to it, it was intuitive's burden.

[00:25:57] Speaker 03:
And on this particular issue of whether you could make that spring and pin lockout work in the green device, which has those thin jaws, their expert was silent.

[00:26:09] Speaker 03:
So I understand that the board informed, said, well, we're going to credit this expert over that expert.

[00:26:15] Speaker 03:
But the substance of actually putting intuitive to its burden, they did not identify what it is intuitive experts said on that issue, because he didn't say anything.

[00:26:24] Speaker 03:
And they also didn't address his deposition testimony that I pointed you to at 4986.

[00:26:29] Speaker 03:
So while they said the right words, in form, in substance, our position is they did not actually put intuitive to its burden of proof because their expert admitted that he didn't analyze this issue.

[00:26:40] Speaker 03:
And then I think that would go to my last point about the Magnum case, which she cited, which is obviously that case involved a situation where the bird expressly put the bird in the wrong place.

[00:26:49] Speaker 03:
And we're not saying that's what happened here.

[00:26:51] Speaker 03:
The board said the right words, but if you look at the substance of the decision, they did not place the burden on intuitive because intuitive expert never actually analyzed this issue.

[00:27:00] Speaker 03:
And if you compare the details where intuitive expert at paragraphs 154 to 171 doesn't talk about the space and strength issue,

[00:27:08] Speaker 03:
and then you look at Dr. Franczak's opinions at appendix 5556-60, you can see that there was the detail in Dr. Franczak's opinions on this issue, and it wasn't in intuitive experts.

[00:27:24] Speaker 03:
Unless Your Honor has any other questions, I rest.

[00:27:29] Speaker 00:
Thank you.

[00:27:30] Speaker 00:
Thanks to both counsels.

[00:27:31] Speaker 00:
The case is taken under submission.